Oracle America, Inc. v. Google, Inc.

NOTE: This disposition is nonprecedential.

United States Court of Appeals

for the Federal Circuit

______________________

ORACLE AMERICA, INC.,

Appellant

v.

GOOGLE, INC.,

Appellee

______________________

2014-1351

______________________

Appeal from the United States Patent and Trademark

Office, Patent Trial and Appeal Board in Reexamination

No. 95/001,548.

______________________

Decided: March 20, 2015

______________________

MARC A. HEARRON, Morrison & Foerster LLP, Wash-

ington, DC, argued for appellant. Also represented by

MEHRAN ARJOMAND, Los Angeles, CA; DEANNE MAYNARD,

Washington, DC; CHRISTOPHER B. EIDE, Palo Alto, CA.

DARYL JOSEFFER, King & Spalding LLP, Washington,

DC, argued for appellee. Also represented by ROBERT T.

NEUFELD, Atlanta, GA; ADAM CONRAD, Charlotte, NC;

SCOTT THOMAS WEINGAERTNER, New York, NY; BRIAN C.

BANNER, Austin, TX .

2 ORACLE AMERICA, INC. v. GOOGLE, INC.

______________________

Before DYK, O’MALLEY, and TARANTO, Circuit Judges.

O’MALLEY, Circuit Judge.

Google, Inc. (“Google”) filed a request for an inter

partes reexamination of U.S. Patent No. 6,910,205 (“the

’205 patent”), arguing, inter alia, that the ’205 patent is

invalid under § 102 as anticipated by Partial Translation,

Swedish Institute of Computer Science Technical Report

(T93.5), October 1993 (“Magnusson”). The Patent Trial

and Appeal Board (“the Board”) affirmed the examiner’s

rejection of the ’205 patent as anticipated by Magnusson.

Oracle America, Inc. (“Oracle”), the owner of the ’205

patent, appeals the Board’s rejection. For the reasons

explained below, we affirm-in-part, reverse-in-part, va-

cate-in-part, and remand.

I. BACKGROUND

A. The ’205 Patent

The Java computer language allows software develop-

ers to create programs that are capable of running on any

device that has a Java virtual machine (“JVM”) installed.

This ensures that, once the program is created, it can run

on a multitude of different devices—e.g., Windows com-

puters, Apple computers, tablets, smartphones. When a

program is written in Java, it is compiled into a series of

virtual machine instructions, also referred to in the

patent as “bytecodes.” Those virtual machine instructions

can be distributed to any device that has a JVM installed.

The JVM installed on each device interprets those virtual

machine instructions to achieve the desired output.

Although this is an advantage for interoperability, the

JVM must interpret the virtual machine instructions

while the program is running. This typically causes the

execution to be slower than a program that is compiled

directly into native machine instructions.

ORACLE AMERICA, INC. v. GOOGLE, INC. 3

To help increase the execution speed of Java-like pro-

grams—programs that use a virtual machine to interpret

virtual machine instructions—the ’205 patent discloses a

method of replacing some virtual machine instructions

with native machine instructions. This allows the JVM to

skip the interpretation step for those instructions and

purports to speed up the execution of the program. Figure

5 is exemplary:

4 ORACLE AMERICA, INC. v. GOOGLE, INC.

’205 patent Fig. 5.

The virtual machine instructions 301 are modified

such that native instructions replace some virtual ma-

chine instructions in the hybrid instructions 309. In this

example, the virtual machine instruction BYTECODE 2 is

replaced by the virtual machine instruction “GO_NATIVE

#N” in the modified virtual machine instructions 303.

When the JVM reaches the new instruction, rather than

interpret BYTECODE 2, it will execute the new

GO_NATIVE instruction. This will cause the execution of

the corresponding native code in the snippet zone 305. In

this example, the snippet executes native machine in-

structions that perform the same function as

BYTECODES 2–5 (as if the JVM had interpreted those

virtual machine instructions). As a result, once the

snippet is executed, the program will continue by inter-

preting BYTECODE 6.

Claims 1 and 2 are indicative of the issues on appeal:

1. In a computer system, a method for increasing

the execution of virtual machine instructions at

runtime, the method comprising:

receiving a first virtual machine instruction;

generating, at runtime, a new virtual machine in-

struction that represents or references one or

more native instructions that can be executed in-

stead of said first virtual machine instruction; and

executing said new virtual machine instruction

instead of said first virtual machine instruction.

2. The method of claim 1, further comprising

overwriting a selected virtual machine instruction

with a new virtual machine instruction, the new

virtual machine instruction specifying execution

of the at least one native machine instructions.

’205 patent col. 13 ll. 44–58 (emphasis added).

ORACLE AMERICA, INC. v. GOOGLE, INC. 5

B. The Reexamination Proceedings

On February 17, 2011, Google requested this inter

partes reexamination, arguing, inter alia, that Magnusson

anticipated the claims of the ’205 patent. The examiner

decided that Magnusson presented a substantial new

question of patentability and granted the reexamination.

After amendment and briefing, the examiner rejected all

of the challenged claims as anticipated by Magnusson.

On November 27, 2013, the Board affirmed the examin-

er’s rejection. Although the examiner did not construe

any claims, the Board construed “overwriting” as “the act

of replacing some information in a computer file with new

information, rather than literally writing over an existing

information.” Google, Inc. v. Oracle Am., Inc., No. 2013-

010321, 2013 WL 6217845, at *3 (Patent Tr. & App. Bd.

Nov. 27, 2013) (“Board Decision”). Based on that con-

struction, the Board concluded that Magnusson anticipat-

ed the claims that contained the “overwriting”

limitation—claims 2–4, 15, 16, and 18–21. The Board

also affirmed the examiner’s determination that Magnus-

son was an enabling prior art references for all claims,

including the claims that do not have the “overwriting”

limitation—claims 1 and 8.

Oracle timely appealed. Because this is an appeal

from a final decision of the Board, we have jurisdiction

under 28 U.S.C. § 1295(a)(4)(A) (2012).

II. DISCUSSION

We review the Board’s legal conclusions, e.g., claim

construction, de novo. 1 In re NTP, Inc., 654 F.3d 1268,

1 After oral argument in this case, the Supreme

Court decided Teva Pharms. USA, Inc. v. Sandoz, Inc.,

135 S.Ct. 831 (Jan. 20, 2015), which changed our stand-

ard of review of a district court’s factual determinations in

construing a claim. Because the Board did not base its

6 ORACLE AMERICA, INC. v. GOOGLE, INC.

1273 (Fed. Cir. 2011). We review the Board’s factual

findings for “substantial evidence.” In re Morsa, 713 F.3d

104, 109 (Fed. Cir. 2013). Substantial evidence is “less

than the weight of the evidence but more than a mere

scintilla of evidence.” Id. “‘[W]here two different, incon-

sistent conclusions may reasonably be drawn from the

evidence in [the] record, an agency’s decision to favor one

conclusion over the other is the epitome of a decision that

must be sustained upon review for substantial evidence.’”

Id. (quoting In re Jolley, 308 F.3d 1317, 1329 (Fed. Cir.

2002)).

Whether or not a piece of prior art is enabled is a

question of law based on underlying factual findings. Id.

(citing In re Antor Media Corp., 689 F.3d 1282, 1287, 1292

(Fed. Cir. 2012)).

A. Claim Construction

On reexamination, claims are to be “given their

broadest reasonable interpretation consistent with the

specification.” In re Yamamoto, 740 F.2d 1569, 1571 (Fed.

Cir. 1984). Claims must be read in light of the specifica-

tion as it would be interpreted to a person having skill in

the art. In re Am. Academy of Sci. Tech. Ctr., 367 F.3d

1359, 1364 (Fed. Cir. 2004) (collecting cases).

Although the examiner did not construe any terms,

the Board construed “overwriting” to mean “the act of

replacing some information in a computer file with new

information, rather than literally writing over an existing

information.” Board Decision, 2013 WL 6217845, at *3.

The Board explained that its construction is warranted

because “only bytecode 2 has been ‘overwritten’ within the

construction in this case on any findings of fact, and

instead only considered intrinsic evidence, we need not

consider whether Teva also changes our standard of

review on appeals from the Board.

ORACLE AMERICA, INC. v. GOOGLE, INC. 7

modified [JVM] instructions 303, despite the fact that

bytecodes 3–5 are also being replaced by one or more

native machine instructions.” Id.

We conclude that the Board’s construction is errone-

ous. Although claims are given their “broadest reasonable

construction” on reexamination, that construction must be

“consistent with the specification.” Yamamoto, 740 F.2d

at 1571. Based on the clear language in the claims and

the specification, “overwriting” means “replacing infor-

mation in a particular memory location with new infor-

mation in that location.”

In the example from Figure 5—which the Board relies

upon for its construction—although the native machine

instructions execute instead of BYTECODES 2–5, only

BYTECODE 2 is overwritten or replaced by a new virtual

machine instruction—GO_NATIVE #N. The specification

explains that only “the initial virtual machine instruc-

tion”—in this example, BYTECODE 2—is overwritten.

The new virtual machine instruction—GO_NATIVE #N—

replaces the old virtual machine instruction in the same

memory location as the old virtual machine instruction.

’205 patent col. 8 ll. 2–5. This ensures that the virtual

machine will interpret GO_NATIVE #N instead of

BYTECODE 2 when it reaches that instruction. Id. col. 8

ll. 27–30 (“When the interpreter executes the go_native

bytecode, the interpreter will look up the snippet in the

snippet zone specified by the go_native bytecode and then

activate the native machine instructions in the snippet.”).

BYTECODES 3–5, on the other hand, remain in memory,

and are, therefore, not overwritten with new infor-

mation—i.e., a new virtual machine instruction. Indeed,

the specification refers to only BYTECODE 2 as being

overwritten, not BYTECODES 3–5. Id. col. 8 ll. 2–5 (“The

interpreter generates modified Java virtual machine

instructions 303 by overwriting bytecode 2 with a

go_native virtual machine instructions.” (emphasis add-

ed)).

8 ORACLE AMERICA, INC. v. GOOGLE, INC.

This example is consistent with the remainder of the

specification, which consistently discloses that only the

first bytecode in the sequence is actually overwritten or

replaced. Id. col. 7 ll. 27–28; see id. col. 7 ll. 36–40 (“At

step 209, the virtual machine instruction at the beginning

of the selected portion of the function is overwritten with a

new virtual machine instruction that specifies the execu-

tion of one or more native machine instructions of the

snippet.” (emphasis added)). The new go_native instruc-

tion replaces the old bytecode at the same location in

memory so that the virtual machine will interpret the

go_native instruction instead of the old bytecode. See id.

col. 8 ll. 27–30. While this replacement could occur either

by actually writing over the existing information with the

new information or by deleting the existing information

and inserting the new information, the existing and new

information must both appear in the same memory loca-

tion. Id.

Based on the language in the claims and specification,

accordingly, we reject the Board’s construction and con-

strue “overwriting” to mean “replacing information in a

particular memory location with new information in that

location.” 2 Because the Board’s finding of anticipation

was based on an erroneous claim construction, we vacate

the Board’s finding that Magnusson anticipates the

overwriting claims of the ’205 patent—claims 2–4, 15, 16,

2 Although we use the term “information” in our

construction, we note that the claims at issue discuss

“overwriting a selected virtual machine instruction with a

new virtual machine instruction.” ’205 patent col. 13 ll.

54–56. Because neither party addresses the additional

limitations in the claims at issue, we do not address them

here. The Board, however, will need to address these

limitations on remand.

ORACLE AMERICA, INC. v. GOOGLE, INC. 9

and 18–21—and remand for proceedings consistent with

this opinion.

B. Enablement of Magnusson

Because the Board considered enablement based on

an erroneous construction of overwriting, we vacate the

Board’s enablement determination with respect to the

overwriting claims—claims 2–4, 15, 16, and 18–21—and

remand for the Board to make the first determination of

enablement with respect to those claims. Oracle, howev-

er, also argues that Magnusson is not enabled for claims 1

and 8, which do not include the overwriting limitation. In

determining whether a prior art reference is enabled, we

ask “whether a person of ordinary skill in the art could

make or use the claimed invention without undue exper-

imentation based on the disclosure of that particular

document.” Morsa, 713 F.3d at 110 (emphasis in original)

(citing 35 U.S.C. § 112).

Oracle argues that, because Magnusson does not

explain how the “TRANSLATED” instruction is intro-

duced, it is not enabled with respect to the “generating”

and “representing” steps in claims 1 and 8, respectively.

See ’205 patent col. 13, ll. 48–51 (“[G]enerating, at

runtime, a new virtual machine instruction that repre-

sents or references one or more native instructions that

can be executed instead of said first virtual machine

instruction . . . .”); id. col. 14 ll. 23–25 (“[R]epresenting

said at least one native machine instruction with a new

virtual machine instruction that is executed after the

compiling of the function . . . .”). The examiner, 3 however,

3 The Board did not provide any analysis of this is-

sue in its opinion; it merely credited the examiner’s

analysis. Board Decision, 2013 WL 6217845, at *5 (“We

have similarly considered the record and we find that the

arguments and evidence submitted by [Oracle] are not

10 ORACLE AMERICA, INC. v. GOOGLE, INC.

extensively reviewed the record and found person of

ordinary skill would have known how to introduce

the “TRANSLATED” instruction to meet the generating

and representing steps. J.A. 31–32. Oracle fails to pro-

vide any explanation as to how these findings are not

supported by substantial evidence.

Oracle’s remaining arguments are also unpersuasive.

Contrary to Oracle’s assertions, the examiner did not base

his finding of enablement on a comparison between the

disclosure in Magnusson and the disclosure in the ’205

patent. Instead, the examiner merely noted that the

specification of the ’205 patent did not even have the level

of detail that Oracle was arguing was necessary in Mag-

nusson. See In re Epstein, 32 F.3d 1559, 1568 (Fed. Cir.

1994) (“Rather the Board’s observation that appellant did

not provide the type of detail in his specification that he

now argues is necessary in prior art references supports

the Board’s finding that one skilled in the art would have

known how to implement the features of the references

and would have concluded that the reference disclosures

would have been enabling.”). Furthermore, the mere fact

that the expert witnesses for both sides were persons of

extraordinary skill, does not preclude the examiner’s

finding that a person of ordinary skill would recognize the

errors in Magnusson. Even though Oracle’s expert may

have disagreed, we cannot say that the examiner’s deter-

mination of the knowledge of a person of ordinary skill is

not supported by substantial evidence.

We therefore conclude that Magnusson is an enabling

reference with respect to claims 1 and 8 and affirm the

Board’s holding that these claims are anticipated.

sufficient to overcome the presumption of enablement

relied upon by the Examiner.”).

ORACLE AMERICA, INC. v. GOOGLE, INC. 11

III. CONCLUSION

For the foregoing reasons, we reverse the Board’s

construction of “overwriting” and vacate its anticipation

and prior art enablement conclusions based on its incor-

rect construction—for claims 2–4, 15, 16, and 18–21. We

remand this case for proceedings consistent with this

opinion. With respect to claims 1 and 8, which do not

have the “overwriting” limitation, we agree with the

Board that Magnusson is an enabling prior art reference.

We therefore affirm the Board’s holding that these two

claims are anticipated.

AFFIRMED IN PART, REVERSED IN PART,

VACATED IN PART, REMANDED