Case: 18-1154
`
`Document: 66
`
`Page: 1
`
`Filed: 01/10/2019
`
`@Hm'teh étateg QEnurt of gppeals
`
`for the jfeheral Qtirtuit
`
`REALTIME DATA, LLC, DBA IXO,
`
`Appellant
`
`V.
`
`ANDREI IANCU, UNDER SECRETARY OF
`COMMERCE FOR INTELLECTUAL PROPERTY
`
`AND DIRECTOR OF THE UNITED STATES
`
`PATENT AND TRADEMARK OFFICE,
`Intervenor
`
`18-1154
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2016-
`00783
`
`JUDGMENT
`
`THIS CAUSE having been considered, it is
`
`ORDERED AND ADJUDGED:
`
`AFFIRMED
`
`

`

`Case218-1154
`
`Document: 66
`
`Page:2
`
`Filed: 01/10/2019
`
`ENTERED BY ORDER OF THE COURT
`
`January 10, 2019
`
`/s/ Peter R. Marksteiner
`Peter R. Marksteiner
`
`Clerk of Court
`
`

`

`Case: 18-1154
`
`Document: 65
`
`Page: 1
`
`Filed: 01/10/2019
`
`@Hniteh $tate§ QEnurt of Qppeals’
`
`for the erheral (fllirwit
`
`REALTIME DATA, LLC, DBA IXO,
`Appellant
`
`V.
`
`ANDREI IAN CU, UNDER SECRETARY OF
`COMMERCE FOR INTELLECTUAL PROPERTY
`
`AND DIRECTOR OF THE UNITED STATES
`
`PATENT AND TRADEMARK OFFICE,
`Intervenor
`
`2018-1154
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2016-
`00783.
`
`Decided: January 10, 2019
`
`KAYVAN B. NOROOZI, Noroozi PC, Santa Monica, CA,
`argued for appellant.
`
`SARAH E. CRAVEN, Office of the Solicitor, United
`States Patent and Trademark Office, Alexandria, VA,
`argued for intervenor. Also represented by THOMAS W.
`KRAUSE, JOSEPH MATAL, FARHEENA YASMEEN RASHEED.
`
`

`

`Case:18-1154
`
`Document: 65
`
`Page:2
`
`Filed:01/10/2019
`
`2
`
`REALTIME DATA, LLC V. IANCU
`
`Before DYK, TARANTO, and STOLL, Circuit Judges.
`
`STOLL, Circuit Judge.
`
`Hewlett Packard Enterprise 00., HP Enterprise Ser-
`vices, LLC, and Teradata Operations, Inc. (collectively,
`“HP”) sought inter partes review of claims 1—4, 8, 14—17,
`21, and 28 of US. Patent No. 6,597,812 (the ’812 patent)
`before the US. Patent and Trademark Office’s Patent
`
`Trial and Appeal Board. The Board instituted review
`and,
`in its final written decision, found that all of the
`challenged claims would have been obvious over the prior
`art. Realtime Data, LLC, owner of the ’812 patent, ap-
`peals the Board’s decision. We affirm.
`
`BACKGROUND
`
`I
`
`The ’812 patent discloses “[s]ystems and methods for
`providing lossless data compression and decompres-
`sion .
`.
`. [that] exploit various characteristics of run-length
`encoding, parametric dictionary encoding, and bit pack-
`ing.” ’812 patent Abstract. Run-length encoding is a form
`of lossless data compression where a “run” of characters is
`replaced with an identifier for each individual character
`and the number of times it is repeated. For example,
`using
`run-length
`encoding,
`the
`input
`string
`AAABBBBBBCCCCAA
`could
`be
`represented
`as
`3A6B4C2A, which contains seven fewer characters.
`
`Dictionary encoding is a form of lossless data com-
`pression that assigns a code word to a particular data
`string, maps that code word to an index, and replaces
`every matching data string with the corresponding code
`word.
`For example,
`the same input string described
`above could be'assigned the code word “EASY123,” which
`contains eight fewer characters. This assignment would
`be mapped into an index, or dictionary, so that every time
`the input string AAABBBBBBCCCCAA appeared,
`it
`would be replaced with EASY123.
`
`

`

`Case: 18-1154
`
`Document: 65
`
`Page: 3
`
`Filed: 01/10/2019
`
`REALTIME DATA, LLC V. IANCU
`
`3
`
`.‘
`
`Claim 1, which combines run-length and dictionary
`encoding techniques,
`is illustrative of the challenged
`claims:
`
`1. A method for compressing input data compris-
`ing a plurality of data blocks, the method compris-
`ing the steps of:
`
`detecting if the input data comprises a
`run-length sequence of data blocks;
`
`outputting an encoded run-length se-
`quence, if a run-length sequence of data
`blocks is detected;
`
`maintaining a dictionary comprising a
`plurality of code words, wherein each code
`word in the dictionary is associated with a
`unique data block string;
`
`building a data block string from at least
`one data block in the input data that is
`not part of a run-length sequence;
`
`searching for a code word in the dictionary
`having a unique data block string associ-
`ated therewith that matches the built data
`
`block string; and
`
`outputting the code word representing the
`built data block string.
`
`Id. at col. 161. 53—col. 17 l. 2.
`
`Claim 4 is relevant to the claim construction dispute
`raised by Realtime on appeal. The claim further limits
`the “maintaining a dictionary” step and reads as follows:
`
`4. The method of claim 1, wherein the step of
`maintaining a dictionary comprises the steps of:
`
`dynamically generating a new code word
`corresponding to a built data block string,
`
`

`

`Case: 18-1154
`
`Document: 65
`
`Page: 4
`
`Filed: 01/10/2019
`
`4
`
`REALTIME DATA, LLC V. IANCU
`
`if the built data block string does not
`match a unique data block string in the
`dictionary; and
`
`adding the new code word in the diction-
`ary.
`
`Id. at col. 17 ll. 17—23.
`
`II
`
`In April 2016, HP petitioned for inter partes review of
`the ’812 patent, alleging that claims 1-4, 8, 14—17, 21,
`and
`28
`would
`have
`been
`obvious
`under
`35 U.S.C. § 103(a).1 In particular, HP argued that claims
`1—4, 8, and 28 would have been obvious over US. Patent
`No. 4,929,946 (“O’Brien”) in View of Nelson, a data com-
`pression textbook,2 and that claims 14—17 and 21 would
`have been obvious over O’Brien in view of Nelson and
`US. Patent No. 4,558,302 (“Welch”).
`‘
`
`With respect to independent claim 1, HP argued that
`O’Brien disclosed the preamble, the “detecting” step, and
`the first “outputting” step, and that O’Brien and Nelson
`both individually disclosed the “maintaining” step,
`the
`“building” step,
`the “searching” step, and the second
`“outputting” step. For the “maintaining” and “searching”
`steps, HP clarified that even though O’Brien did not use
`the specific claim term “dictionary,” a person of ordinary
`
`Because the issue date of the ’812 patent is Ju-
`1
`ly 22, 2003, and neither the ’812 patent nor the applica-
`tion from which it issued ever contained a claim with an
`effective filing date on or after March 16, 2013, the ver-
`sion of 35 U.S.C. § 103 that applies here is the one preced-
`ing the changes made by the America Invents Act. See
`Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`125 Stat. 284, 293, § 3(n) (2011).
`2 Mark Nelson, The Data Compression Book (1992).
`
`

`

`Case: 18-1154
`
`Document: 65
`
`Page: 5
`
`Filed: 01/10/2019
`
`REALTIME DATA, LLC V. IANCU
`
`5
`
`skill in the art “would have recognized this and known, as
`taught in Nelson, that O’Brien’s string compression is a
`dictionary algorithm.”
`Pet. Requesting Inter Partes
`Review, SAP Am.
`Inc. et al.
`v. Realtime Data LLC,
`IPR2016-00783, Paper 1 at 41 (P.T.A.B. Apr. 1, 2016).
`
`In its response, Realtime conceded that O’Brien’s
`string compression was, in fact, dictionary encoding as
`required by the claims.
`Instead of challenging O’Brien’s
`teaching of dictionary encoding, Realtime primarily
`focused its response on the “maintaining” step. Specifical-
`ly, Realtime argued that O’Brien did not disclose “main-
`taining a dictionary” because O’Brien generates a new
`dictionary for each data segment, while the ’812 patent
`processes an input data stream through a single diction-
`ary that resets to its initial state only when full. Realtime
`also argued that HP presented insufficient evidence of a
`motivation to combine O’Brien and Nelson, and that HP
`attempted instead to sidestep this requirement by argu-
`ing Nelson as an alternative to O’Brien. As Realtime
`noted,
`“[i]ndeed, Petitioner and its declarant allege
`O’Brien in fact discloses all of the limitations of all claims
`
`challenged in Ground 1.” Patent Owner Resp., Hewlett-
`Packard Enter. Co.
`v. Realtime Data LLC,
`IPR2016-
`00783, Paper 29 at 44 (P.T.A.B. Jan. 5, 2017) (emphasis in
`original).
`
`The Board agreed with Realtime’s statement, finding
`that O’Brien discloses the “maintaining a dictionary”
`limitation and every other limitation in independent
`claim 1. While recognizing that there was a dispute as to
`the construction of the phrase “maintaining a dictionary,”
`the Board determined that no construction was necessary
`as O’Brien taught every step for “maintaining a diction-
`ary” identified in dependent claim 4. The Board also
`determined that O’Brien teaches the limitations of claims
`
`1—4, 8, and 28.
`
`

`

`Case: 18-1154
`
`Document: 65
`
`Page: 6
`
`Filed: 01/10/2019
`
`6
`
`REALTIME DATA, LLC V. IANCU
`
`The Board next addressed why “a person having ordi-
`nary skill in the art would have had to turn to Nelson
`after reading O’Brien when O’Brien allegedly teaches all
`the limitations of all claims challenged in Ground 1.”
`Hewlett-Packard Enter. Co.
`v. Realtime Data LLC,
`IPR2016-00783, 2017 WL 4349409, at *9 (P.T.A.B.
`Sept. 28, 2017). The Board noted that HP’s primary
`obviousness argument established only that “Nelson
`makes clear that O’Brien’s string encoding .
`.
`. is diction-
`ary-based encoding” without using Nelson for the disclo-
`sure of a particular claim limitation.
`Id. at
`*,12.
`According to the Board, HP’s other argument—that it
`would have been obvious to a person of ordinary skill in
`the art
`to substitute Nelson’s dictionary compression
`techniques with O’Brien’s string compression—was an
`“argument[] in the alternative.” Id.
`
`Even though the Board agreed with HP’s primary ob-
`viousness argument—that O’Brien alone teaches every
`limitation in claims 1—4, 8, and 28—the Board neverthe-
`less addressed the question of motivation to combine
`O’Brien in View of Nelson. The Board compared the
`compression techniques in O’Brien and Nelson and found
`that they “share striking similarities.”
`Id. at *11. The
`Board also found that O’Brien “suggests that a wide
`variety of adaptive compression algorithms could be used
`and encourages a person having ordinary skill in the art
`to turn to_‘well known’ algorithms such as Nelson’s algo-
`rithms for techniques of performing string compression in
`O’Brien’s system, which would be a simple substitution
`yielding predictable results.” Id. Thus, the Board con-
`cluded, “Petitioner has established by a preponderance of
`the evidence that a person having ordinary skill in the art
`would have been motivated to turn to Nelson after read-
`ing O’Brien even though O’Brien teaches all the limita-
`tions of all claims challenged in ground 1.” Id. at *12.
`
`the Board found that
`As to claims 14—17 and 21,
`Welch taught the additional limitation that a software
`
`

`

`Case: 18-1154
`
`Document: 65
`
`Page: 7
`
`Filed: 01/10/2019
`
`REALTIME DATA, LLC V. IANCU
`
`7
`
`program be used to implement the claimed method. Id. at
`*21. Consequently, the Board held that claims 1—4, 8,
`and
`28 would
`have
`been
`unpatentable
`under
`35 U.S.C. § 103 in View of O’Brien alone, or alternatively,
`in further View of Nelson, and claims 14—17 and 21 would
`have been unpatentable under 35 U.S.C. § 103 in view of
`O’Brien, Nelson, and Welch. Realtime appeals. We have
`jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
`
`DISCUSSION
`
`Realtime makes two primary arguments on appeal:
`(1) that the Board erred in its determination that a person
`of ordinary skill in the art would have been motivated to
`combine the teachings of O’Brien and Nelson; and (2) that
`the Board erred by failing to construe the “maintaining a
`dictionary” limitation and in finding that O’Brien dis-
`closed the “maintaining a dictionary” limitation. We
`address these issues in turn.
`
`I
`
`An invention cannot be patented, “though the inven-
`tion is not identically disclosed or described as set forth in
`section 102,” if, at the time of the invention, the differ-
`ences between the claimed invention and the prior art
`would have rendered the claimed invention “obvious” to a
`
`person of ordinary skill in the art. 35 U.S.C. § 103(a). We
`have long held that when a party claims that a combina-
`tion of references renders a patented invention obvious,
`the “factfinder must further consider the factual questions
`of whether a person of ordinary skill in the art would be
`motivated to combine those references.” Dome Patent LP.
`
`1). Lee, 799 F.3d 1372, 1380 (Fed. Cir. 2015); see also KSR
`Int’l Co. v. Teleflex Inc, 550 US. 398, 418 (2007) (“[A]
`patent composed of several elements is not proved obvious
`merely by demonstrating that each of its elements was,
`independently, known in the prior art.”). This require-
`ment is necessary because “claimed discoveries almost of
`necessity will be combinations of what, in some sense, is
`
`

`

`Casez18-1154
`
`Document: 65
`
`Page:8
`
`Filed101/10/2019
`
`8
`
`REALTIME DATA, LLC V. IANCU
`
`I
`
`already known,” and the mere existence of independent
`elements in the prior art does not in itself foreclose the
`possibility
`of ~ an
`inventive
`combination.
`KSR,
`550 US. at 418—19.
`
`Here, HP’s primary argument to the Board was that
`all of the elements of claims 1—4, 8, and 28 were disclosed
`in O’Brien, a single reference. HP relied on Nelson simply
`to demonstrate that a person of ordinary skill in the art
`would have understood that the string compression dis-
`closed in O’Brien was, in fact, a type of dictionary encoder,
`the terminology used in the ’812 patent. As both the
`Board and Realtime recognized, HP also argued in the
`alternative that Nelson disclosed some of the elements in
`the claims at issue.
`i
`
`We conclude that, in this case, the Board was not re-
`quired to make any finding regarding a motivation to
`combine given its reliance on O’Brien alone. Certainly,
`had the Board relied on HP’s alternative argument, HP
`would have been required to demonstrate a sufficient
`motivation to combine the two references. In its primary
`argument, however, HP relied on Nelson merely to ex-
`plain that O’Brien’s encoder is a type of dictionary encod-
`er. In addition, Realtime conceded the point HP sought to
`use Nelson to prove: that O’Brien disclosed a dictionary
`encoder. See Hewlett-Packard, 2017 WL 4349409, at *5
`(“At the outset, we note that Petitioner, Patent Owner,
`and their respective declarants all agree that O’Brien’s
`encoder is a type of dictionary encoder”).
`
`the Board was free to
`Under these circumstances,
`come to the very conclusion it reached: that O’Brien alone
`disclosed every element of claims 1—4, 8, and 28. And
`because the Board did not rely on Nelson for the disclo-
`sure of a particular element or teaching, the Board had no
`obligation to find a motivation to combine O’Brien and
`Nelson. While Realtime argues that the use of O’Brien as
`a single anticipatory reference would have been more
`
`

`

`Case: 18-1154
`
`Document: 65
`
`Page: 9
`
`Filed: 01/10/2019
`
`REALTIME DATA, LLC V. IANCU
`
`9
`
`properly raised under §102, it is well settled that “a
`disclosure that anticipates under § 102 also renders the
`claim invalid under § 103, for ‘anticipation is the epitome
`of obviousness.” Connell v. Sears, Roebuck & Co., 722
`F.2d 1542, 1548 (Fed. Cir. 1983) (quoting In re Fracalossi,
`681 F.2d 792, 794 (CCPA 1982)); cf. Wasica Fin. GmbH v.
`Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1278 n.3 (Fed. Cir.
`2017)
`(noting the Board’s conclusion that a prior art
`reference rendered certain claims obvious “by virtue of its
`anticipation of them”). The Board therefore did not err"
`when it concluded that claim 1 was invalid under § 103
`based on O’Brien alone.
`
`this same reason, we are not persuaded by
`For
`Realtime’s argument that the Board violated 35 U.S.C.
`§312(a)(3) or other notice requirements by relying on
`O’Brien alone. Section 312(a)(3) requires a petition to
`identify “in writing and with particularity, each claim
`challenged, the grounds on which the challenge to each
`claim is based, and the evidence that supports the
`grounds for the challenge to each claim.” § 312(a)(3). And
`we have held that the Board may not rely on a basis for
`decision unless the party adversely affected by such
`reliance had notice of the basis and an adequate oppor-
`tunity to address it. See SAS Inst. Inc. v. Complemen-
`tSoft, LLC, 825 F.3d 1341, 1351—52 (Fed. Cir. 2016)
`(citing authorities), reu’d on other grounds, SAS Inst. Inc.
`v. Iancu, 138 S. Ct. 1348 (2018).
`
`HP’s petition identified O’Brien as disclosing every e1-
`ement of claim 1. The sole purpose for which HP relied on
`Nelson, to demonstrate that O’Brien disclosed a diction-
`ary encoder, was conceded by Realtime. Realtime cannot
`now argue that its own admissions, which obviated the
`need for any of Nelson’s teachings, deprived it of notice or
`otherwise foreclosed HP from arguing obviousness based
`on O’Brien’s disclosures without Nelson. The Board’s
`decision rested solely on the arguments and grounds
`proffered by HP in its petition, for which Realtime both
`
`

`

`Case: 18-1154
`
`Document: 65
`
`Page: 10
`
`Filed: 01/10/2019
`
`10
`
`REALTIME DATA, LLC v. IANCU
`
`had notice and the opportunity to respond. Accordingly,
`we conclude that the Board did not violate § 312(a)(3) or
`
`other notice requirements.
`
`In any event, even if the Board were required to make
`a finding regarding a motivation to combine O’Brien with
`Nelson, its finding in this case is supported by substantial
`evidence.3 A motivation to combine may be found “explic-
`itly or implicitly in market forces; design incentives; the
`‘interrelated teachings of multiple patents’; ‘any need or
`problem known in the, field of endeavor at the time of
`invention and addressed by the patent’; and the back-
`ground knowledge, creativity, and common sense of the
`person of ordinary skill.” Z UP, LLC v. Nash Mfg, Inc.,
`896 F.3d 1365, 1371 (Fed. Cir. 2018) (quoting Plantronics,
`Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013)).
`The Board specifically noted that HP “brings in Nelson to
`provide a more explicit teaching of ‘dictionary,”’ Hewlett-
`Packard, 2017 WL 4349409, at *13, and that the motiva-
`tion to combine was premised on “the rationale a person
`having ordinary skill in the art would have had to turn to
`Nelson after reading O’Brien when O’Brien allegedly
`teaches all the limitations of all claims challenged in
`Ground 1,” id. at *9. The Board found that a person of
`ordinary skill in the art would have looked to Nelson
`because Nelson is “well known,” the compression tech-
`niques taught in Nelson that were described as dictionary
`encoders “share striking similarities” to O’Brien’s com-
`pression techniques, and O’Brien itself “suggests that a
`wide variety of adaptive compression algorithms could be
`used and encourages a person having ordinary skill in the) ,7
`
`art to turn to ‘well known’ algorithms such as Nelsons.
`
`3 We limit our review to HP’s primary obviousness
`argument, which uses O’Brien to disclose every element of
`claims 1—4, 8, and 28 and Nelson to demonstrate that
`O’Brien teaches a dictionary encoder.
`
`

`

`Case: 18-1154
`
`Document: 65
`
`Page: 11
`
`Filed: 01/10/2019
`
`REALTIME DATA, LLC V. IANCU
`
`l 1
`
`Id. at *11. This is enough evidence to support a finding
`that a person of ordinary skill in the art would have
`turned to Nelson, a well-known data compression text-
`book, to better understand or interpret O’Brien’s compres-
`sion algorithms.
`
`II
`
`We now turn to whether the Board erred in finding
`that O’Brien disclosed the “maintaining a dictionary”
`limitation in independent claim 1. Realtime argues that
`the Board erroneously failed to construe the term “main-
`taining a dictionary” to include the requirement that the
`dictionary be retained during the entirety of the data
`compression unless and until the number of entries in the
`dictionary exceeds a predetermined threshold, in which
`case the dictionary is reset.
`
`We review the ultimate question of the proper con-
`struction of a patent de novo, with any underlying fact
`findings reviewed for substantial evidence. Teva Pharm.
`USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 838 (2015);
`Praxair Distrib., Inc. v. Mallinckrodt Hosp. Prods. IP Ltd.,
`890 F.3d 1024, 1031 (Fed. Cir. 2018) (citing HTC Corp. v.
`Cellular Commc’ns Equip, LLC, 877 F.3d 1361, 1367
`(Fed. Cir. 2017)). While the words of a claim “are general-
`ly given their ordinary and customary meaning,” a claim
`term is read “not only in the context of the particular
`claim in which the disputed term appears, but in the
`context of the entire patent, including the specification.”
`Phillips
`u. AWH Corp,
`415 F.3d
`1303,
`1312—13
`(Fed. Cir. 2005)
`(en bane).
`Those claim construction
`principles are important even in an inter partes review
`proceeding like this one, in which the claims were proper-
`ly given the “broadest reasonable interpretation” con-
`
`

`

`Case: 18—1154
`
`Document: 65
`
`Page: 12
`
`Filed: 01/10/2019
`
`12
`
`.
`
`REALTIME DATA, LLC V. IANCU
`
`sistent with the specification.4 In re Cuozzo Speed Techs,
`LLC, 793 F.3d 1268, 1279 (Fed. Cir. 2015), aff’d sub nom.
`Cuozzo Speed Techs, LLC v. Lee, 136 S. Ct. 2131 (2016).
`The Board is required to construe “only those terms .
`.
`.
`that are in controversy, and only to the extent necessary
`to resolve the controversy.” Vivid Techs., Inc. U. Am. Sci.
`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`The Board did not expressly construe the phrase
`“maintaining a dictionary,” but found that O’Brien satis-
`fied this limitation because it disclosed all of the steps in
`dependent claim 4. As noted above, claim 4 depends from
`claim 1 and recites:
`
`4. The method of claim 1, wherein the step of
`maintaining a dictionary comprises the steps of:
`
`dynamically generating a new code word
`corresponding to a built data block string,
`if the built data block string does not
`match a unique data block string in the
`dictionary; and
`
`adding the new code word in the diction-
`ary.
`
`In other words, the Board
`’812 patent col. 17 11. 17—23.
`found that the steps outlined in dependent claim 4 were
`sufficient to satisfy the “maintaining a dictionary” limita-
`tion in independent claim 1.
`
`This standard has recently changed. For petitions
`4
`filed on or after November 13, 2018, the Board will apply
`the Phillips claim construction standard. See Changes to
`the Claim Construction Standard for Interpreting Claims
`in Trial Proceedings Before the Patent Trial and Appeal
`Board, 83 Fed. Reg. 51340 (Oct. 11, 2018) (to be codified
`at 37 C.F.R. pt. 42).
`
`

`

`Casez18-1154
`
`Document: 65
`
`Page: 13
`
`Filed: 01/10/2019
`
`REALTIME DATA, LLC V. IANCU
`
`13
`
`The Board’s interpretation is supported by both the
`claim language itself and the specification. The term
`“maintaining a dictionary” is not defined in claim 1, and
`dependent claim 4 is the first of the claims to lend mean-
`ing to the phrase. More tellingly, the language of claim 4
`directly mimics the portion of the specification that teach-
`es that:
`
`the dictionary is dynamically maintained and up-
`dated during the encoding process by generating a
`new code word corresponding to a built data block
`string,
`if the built data block string does not
`match a unique data block string in the diction-
`ary; and then adding the new code word in the
`dictionary.
`
`Id. at col. 3 11. 31—36 (emphasis added). This passage,
`with its “by” language, strongly suggests that the steps
`outlined in claim 4 are one way of “maintaining a diction-
`ary,” as the Board concluded.
`
`Realtime does not contest that O’Brien discloses these
`
`steps, but instead argues that because the claim recites
`the word “comprising,” it does not foreclose the possibility
`of additional unstated limitations in the interpretation of
`“maintaining a
`dictionary.”
`Realtime
`notes
`that
`“‘[c]omprising’ is a term of art used in claim language
`which means that the named elements are essential, but
`other elements may be added and still form a construct
`within the scope of the claim.” Genentech, Inc. v. Chiron
`Corp., 112 F.3d 495, 501 (Fed. Cir. 1997). Thus, Realtime
`argues, the Board erred by failing to consider its proposed
`construction, which would add further requirements to
`satisfy the “maintaining a dictionary” limitation.
`
`The word “comprising” does not mean that the claim
`can be read to require additional unstated elements, only
`that adding other elements to the device or method is not
`incompatible with the claim.
`Id. Realtime points to no
`law undermining the Board’s View in this case that the
`
`

`

`Case: 18-1154
`
`Document: 65
`
`Page: 14
`
`Filed: 01/10/2019
`
`14
`
`REALTIME DATA, LLC V. IANCU
`
`claim elements introduced in dependent claim 4 with
`“comprising” language are properly understood as giving
`details sufficient to constitute a particular embodiment of
`the more general “maintaining a dictionary” term of
`independent claim 1. That View, as already noted above,
`is strongly supported by the specification.
`
`Realtime’s other arguments in support of its proposed
`construction do not alter our conclusion. Realtime points
`to the portion of the specification that teaches that “[i]n
`yet another aspect of the present invention, the dictionary
`is initialized during the encoding process if the number of
`code words (e.g., dictionary indices) in the dictionary
`exceeds a predetermined threshold.”
`’812 patent col. 3
`11.37—40. We note that the specification contemplates
`initializing (starting a new dictionary) only as a possible
`embodiment. Nowhere does the specification state or
`imply that this step is a mandatory part of the step of
`“maintaining a dictionary.” This is confirmed by depend-
`ent claim 5, which states:
`
`5. The method of claim 4, wherein the step of
`maintaining the dictionary further comprises the
`step of initializing the dictionary if the number of
`code words exceeds a predetermined threshold.
`
`Id. at col. 17 11. 24—27. The fact that claim 5 “further”
`
`adds this step indicates that this step was neither a
`necessary element of claim 4 nor required in the step of
`“maintaining a dictionary” in independent claim 1. See
`Phillips, 415 F.3d at 1315 (“[T]he presence of a dependent
`claim that adds a particular limitation gives rise to a
`presumption that the limitation in question is not present
`in the independent claim.”). Because the intrinsic evi-
`dence does not support Realtime’s proposed construction,
`Realtime has not demonstrated that the Board committed
`
`legal error by failing to adopt it.
`
`

`

`Case: 18-1154
`
`Document: 65
`
`Page: 15
`
`Filed: 01/10/2019
`
`REALTIME DATA, LLC V. IANCU
`
`15
`
`CONCLUSION
`
`We conclude that the Board did not err in concluding
`that the claims would have been obvious in View of a
`single reference. Additionally, the Board did not err in
`finding that O’Brien disclosed the “maintaining a diction-
`ary” limitation in independent claim 1. We therefore
`affirm.
`
`AFFIRMED
`
`