source: Caselaw Access Project

author: REYNA, Circuit Judge.

license: Public Domain

text:
    IN RE: AT & T INTELLECTUAL PROPERTY II, L.P., Appellant
    2016-1830
    United States Court of Appeals, Federal Circuit.
    Decided: May 10, 2017

      Constantine L. Trela, Jr., Sidley Austin LLP, Chicago, IL, argued for appellant. Also represented by Christopher A. Eis-werth, Joshua John Fougere, Washington, -DC.
    Michael Sumner Forman, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for intervenor Michelle K. Lee. Also represented by Nathan K. Kelley, Benjamin T. Hickman, Scott Weidenfeller.
    Before DYK, MAYER, and REYNA, Circuit Judges.
   REYNA, Circuit Judge.

AT & T appeals a final decision of the Patent Trial and Appeal Board in an inter partes reexamination. AT & T argues that the Board improperly instituted the reexamination proceedings and erred in finding that the challenged claims are invalid as anticipated. The Board did not exceed its statutory authority when instituting the reexamination and substantial evidence supports the Board’s finding of anticipation. We therefore affirm.

Background

A. Patented Technology

This case concerns methods of compressing and transmitting digital video data. To increase the efficiency of digital video transmission, video images are subdivided into blocks, where each block consists of a discrete number of pixels. To compress and transmit the image, a process called transform coding is used to analyze and transform each block’s pixel data into a set of numerical representations, called transform coefficients. After transmittal of the transform coefficient data, the image is reconstructed by converting each block of transform coefficients back into a block of pixels.

Different methods of transform coding vary in efficiency, and some result in higher image quality than others. Prior art methods of transform coding taught a method of scanning the transform coefficients called “run-length encoding,” where the coefficients in each block are scanned in a zigzag pattern from top left to bottom right. This method had certain advantages, but the zig-zagging scan pattern could make it difficult to put the coefficients back in their correct order and reconstruct the pixel block.

1. Krause

To address the inefficiencies of run-length encoding, the Krause patent, U.S. Patent No. 5,295,203 (“Krause”), discloses “vector coding,” which eliminates the need for scanning the transform coefficients in any particular order or pattern. Vector coding involves assigning a code word to a subset of coefficients that are selected for transmission within a block of transform coefficients, or within portions of the block referred to as regions. In a preferred embodiment, Krause teaches dividing the block of coefficients into regions and applying vector coding to each region. As the written description explains, this is intended to avoid complexities that arise when coding an entire block of coefficients at once. Id. col. 7 11. 25-35, col. 7 11. 58-68.

Krause’s independent claim 1 describes vector coding, and dependent claim 2 describes the preferred embodiment of vector coding regions of coefficients:

1. A method for coding video transform coefficients for communication comprising the steps of:
providing a block of transform coefficients;
generating a vector to identify locations of a group of coefficients from said block that qualify for transmission according to pre-determined criteria;
encoding said vector to provide a vector code word for transmission; and
encoding the coefficients from said group to provide coefficient code words for transmission;
wherein said vector code word correlates the coefficient code words to coefficient locations in said block.
2. A coding method in accordance with claim 1 comprising the further step of:
dividing said block into a plurality of regions containing subsets of coefficients, said vector identifying a group of coefficients that qualify for transmission in a first one of said regions; and
generating additional vectors for encoding to identify locations of groups of coefficients that qualify for transmission in other regions of said block.

Id. col. 11 11. 36-58.

2. AT & T’s ’071 Patent

Like Krause, AT & T Intellectual Property II, L.P.’s U.S. Patent No. 7,454,071 (“’071 patent”) is directed to a method of compressing and transmitting transform coefficients in a manner that does not rely on scanning the coefficients in any particular order. It relies on a one-shot approach, where all of the coefficients in a block are transmitted at once. See ’071 patent col. 4 11. 43-48. It does not teach Krause’s preferred embodiment of subdividing the pixel blocks into regions.

Representative claim 1 of the ’071 patent follows, with bracketed language added that reflects amendments made during the inter partes reexamination proceedings discussed below:

1. A method for identifying non-zero coefficients in a [square] block of image data, the method comprising:
mapping a [square] block of transform coefficients into a one-dimensional list of transform coefficients in a fixed order;
generating a single entity that identifies which transform coefficients in the one-dimensional list are non-zero; and
coding the single entity.

Id. col. 6 11.15-21.

B. Prior Proceedings

1. Institution of inter partes reexamination

On Friday, September 14, 2012, two days before the inter partes review procedures went into effect, LG Electronics, Inc. filed a request for inter partes reexamination of the ’071 patent. LG’s request alleged that several claims of the ’071 patent were anticipated by an article it asserted as prior art, Yang.

In November 2012—before the PTO decided whether to initiate reexamination— LG sought to have its request for reexamination denied. Critically, LG did not withdraw from the reexamination proceedings, nor did it withdraw its request for reexamination. Instead, LG filed a petition asking the PTO to suspend its standard rule prohibiting a requester from filing any documents between the time of requesting inter partes reexamination and the PTO’s initial office action on the merits. 37 C.F.R. § 1.939. LG sought the suspension so that it could file a second request asking the PTO to deny LG’s initial request for initiation of inter partes reexamination. To justify suspending the PTO’s rules, LG stated that it “does not believe that there is a reasonable likelihood of prevailing with respect to any of the claims challenged in the Request.” J.A. 172 - 75.

Two weeks later, the PTO issued an Office Action granting LG’s initial request for inter partes reexamination based on anticipation by Yang. J.A. 200. AT & T filed a response seeking reconsideration of the Office Action. LG filed a comment in support of AT & T’s response, urging the PTO to withdraw its stated grounds for rejection because they were “based on a factual interpretation of Yang that [was] not consistent with Yang’s disclosure.” J.A. 1429-33.

The PTO denied LG’s petition to suspend the rules. The PTO recognized that the rules can be waived in extraordinary situations, but found that this did not present an extraordinary situation. Further, the PTO noted that LG’s concerns did not warrant any additional filing, because the examiner is already required to “make a thorough study of the patent and a thorough investigation of the available prior art relating to the subject matter of the claimed invention upon taking it up in a reexamination proceeding.” J.A. 1441-42 & n.4.

2. Finding of anticipation by Krause, LG’s withdrawal, and AT & T’s interview with the examiner

The examiner responded to the reexamination sub-missions in March 2013, agreeing that AT & T and LG’s arguments were sufficient to overcome Yang, but finding new grounds of rejection based on Krause. J.A. 1447. The examiner’s initial reasoning was that Krause’s disclosure of scanning a region of coefficients can be extrapolated to cover an entire block of coefficients. J.A. 1449-50. AT & T argued that the regional scanning in Krause does not correspond to the disclosed method in the ’071 patent where the entire pixel block is scanned at once. AT & T argued that the regions described in Krause had to be of irregular shape, whereas the block referenced in the ’071 patent was a perfect square.

In August 2013, while the discussions between AT & T and the examiner were ongoing, LG withdrew from the proceedings. With LG out of the proceedings, AT & T filed a petition asking the PTO to suspend the usual prohibition against interviews during inter partes reexamination proceedings. The PTO granted the petition.

The interview took place in January 2014 and focused on the issue of whether the regions described in Krause correspond with the block described in the ’071 patent. According to the examiner’s interview summary: “No agreement in respect to the patentability of the claims was reached.” J.A. 2033. AT & T’s interview summary differs in that it concludes there was a general agreement that AT & T’s proposed amendment changing the term “block” to “square block” would overcome the anticipation rejections. J.A. 2037-38.

3. Post-interview office action, amendment, and rejection

In February 2014, prior to any amendment, the examiner issued an Action Closing Prosecution that explained a different basis for finding the ’071 patent anticipated by Krause. Instead of asserting that the irregular-shaped regions described in Krause could be extended to correlate to the square block in AT & T’s claim, the examiner argued that Krause’s regions are only a preferred embodiment and that Krause’s written description and claims disclose coding an entire pixel block. J.A. 2020-21.

In March 2014, AT & T amended its claims to recite “a square block of transform coefficients.” J.A. 2047-77 (emphasis added). The examiner entered the amendments, but issued a Right of Appeal Notice maintaining rejections in view of Krause. J.A. 2088-2102. The examiner’s rejections were based on the same reasoning provided in the February 2014 pre-amendment Action Closing Prosecution—i. e., Krause’s division of a block into regions is only a preferred embodiment, and the written description discloses coding an entire pixel block. J.A. 2090.

4. The Board affirms

AT & T appealed, and the Board affirmed the examiner’s finding of anticipation by Krause. The Board reiterated the examiner’s reasoning that Krause’s division of a pixel block into regions is only a preferred embodiment. The Board agreed with the examiner that Krause’s written description discloses vector coding of an entire block, even though Krause also explains that doing so would not be easy. J.A. 5-7.

Discussion

AT & T appeals, raising three arguments. First, AT & T argues that it was improper to institute reexamination after LG requested that its request for reexamination be denied. Second, AT & T challenges the merits of the Board’s finding that the ’071 patent is anticipated by Krause. Third, AT & T asserts that the examiner improperly shifted its basis for finding anticipation by Krause. The PTO intervenes, arguing that this court lacks jurisdiction to entertain AT & T’s challenge to the institution decision and defending the Board’s finding of anticipation.

A. The Decision to Institute

Our authority to review the Board’s decision to institute inter partes reexamination is limited by 35 U.S.C. § 312(c) (effective Sept. 16, 2011). That statute provides that “[a] determination by the Director under subsection (a) shall be final and non-appealable.” let. (emphasis added). Subsection (a) concerns only whether “the information presented in the request shows that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request.” 35 U.S.C. § 312(a) (effective Sept. 16, 2011). Thus, § 312(c) of the inter partes reexamination statute only restricts our review of a determination made under § 312(a).

In Belkin International, Inc. v. Kappos, 696 F.3d 1379 (Fed. Cir. 2012), this court explained the § 312(c) non-ap-pealability bar (under slightly different earlier language) as follows: “[A]n inter partes reexamination is a two-step process. First, the Director must make a determination ‘whether a substantial new question of patentability affecting any claim of the patent is raised by the request.’ ... The statute is clear that that decision is ‘final and non-appealable.’ § 312(c).” Id. at 1382 (emphasis added). To the extent AT & T argues that, without a request or requester, the Board lacks statutory authority to institute a reexamination, we may review that issue because it does not pertain to whether “the information presented in the request shows that there is a reasonable likelihood that the requester would prevail.” The record does not support a finding that the Board instituted inter partes reexamination without the presence of a request and a requester. LG was the requester, and LG submitted a request. LG was still involved in the proceedings at the time the institution decision was made. While LG may have desired that its request to institute be denied, it was granted. Because a request and a requester were present, the Board acted within its statutory authority when it decided to institute reexamination in this case, and we lack authority to further consider the prudence or propriety of the Board’s institution decision.

B. Anticipation by Krause

We have jurisdiction to review the merits of the Board’s final decision finding that the ’071 patent is anticipated by Krause. 28 U.S.C. § 1295(a)(4)(A).

To anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either expressly or inherently. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1341 (Fed. Cir. 2016). Whether a claim is anticipated by prior art is a question of fact reviewed for substantial evidence. Id. Substantial evidence is more than a mere scintilla; it is evidence that a “reasonable mind might accept as adequate to support a conclusion.” Id. at 1337.

The only dispute before us is whether Krause discloses the element in representative claim 1 of the ’071 patent that requires: “mapping a square block of transform coefficients into a one-dimensional list.” ’071 patent col. 6 11. 17-18. Accordingly, the question before us is whether substantial evidence supports the Board’s factual determination that Krause discloses vector coding of an entire pixel block. We conclude that the Board’s finding of anticipation is supported by substantial evidence.

As the examiner and the Board have explained, Krause’s written description describes vector coding a subset of transform coefficients without limitation. Its disclosure of dividing a block of coefficients into regions is only a preferred embodiment, not a limitation on the scope of the patent’s disclosure. Anticipation occurs when a pri- or art reference discloses each element of the claimed invention, not only where a particular embodiment within a reference discloses each element of the claimed invention. See Blue Calypso, 815 F.3d at 1341. In addition, the written description’s acknowledgement that vector coding an entire block at once is difficult does not limit the scope of the reference, but only demonstrates the advantage of the preferred embodiment. This distinction between Krause’s disclosure of the general ability to vector code a subset of transform coefficients and the need to divide a block of coefficients into regions is further demonstrated by comparing Krause’s independent claim 1, which claims vector coding a “group of coefficients,” with dependent claim 2, which requires the additional limitation of dividing a block into regions. ’203 patent col. 11 11. 36-58. Based on that evidence, a reasonable mind could accept the conclusion that Krause discloses vector coding an entire block of transform coefficients, and the Board’s decision is supported by substantial evidence.

C. Changing Basis for Anticipation

AT & T seems to argue that the reexamination proceedings were flawed because the examiner changed its basis for finding anticipation by Krause. The record does not support AT & T’s objection. The examiner’s initial reason for finding anticipation by Krause was that the irregular-shaped regions described in Krause could be extended to correlate to the square block in AT & T’s claim. AT & T discussed that argument during its interview with the examiner and amended its claims to address the issue. Despite AT & T’s impressions, the examiner’s interview summary plainly states that the parties did not reach any agreement as to patentability of the ’071 patent claims. And as early as the examiner’s February 2014 Action Closing Prosecution—before any amendment to the claims—AT & T received notice of a second basis for finding anticipation, which was that Krause’s regions are only a preferred embodiment and that Krause’s written description and claims disclose coding an entire pixel block. Despite this notice, AT & T did not amend its claims to respond to the examiner’s second basis for finding anticipation. Ultimately, that was the same basis upon which the examiner found anticipation by Krause and upon which the Board affirmed. As explained above, the Board’s finding of anticipation is supported by substantial evidence. We therefore affirm.

AFFIRMED

Costs

Each party to bear its own costs.

      . In September 2011, Congress enacted the America Invents Act, which amended and altered the procedures for inter partes reexamination and created the procedures for inter partes review, effective September, 16, 2012. See Pub. L. No. 112-29, § 6, 125 Stat. 284, 299-305 (2011).

      . Wenye Yang & Jerry D. Gibson, "Coefficient Rate and Significance Maps in Transform Coding,” Conference Record of the Thirty-First Asilomar Conference on Signals, Systems & Computers, Vol. 2, pp. 1373-77 (November 2-5, 1997).


author: CHEN, Circuit Judge.

text:
    CISCO SYSTEMS, INC., Appellant v. CIRREX SYSTEMS, LLC, Cross-Appellant
    2016-1143, 2016-1144
    United States Court of Appeals, Federal Circuit.
    Decided: May 10, 2017

      David L. McCombs, Haynes & Boone, LLP, Dallas, TX, argued for appellant. Also represented by Debra Janece McCo-mas; Gregory P. Huh, Julie Marie Nickols, Richardson, TX.
    Tarek N. Fahmi, Ascenda Law Group, PC, San Jose, CA, argued for cross-appellant.
    Before PROST, Chief Judge, WALLACH and CHEN, Circuit Judges.
   CHEN, Circuit Judge.

This case arises from Cisco Systems, Inc.’s (Cisco) request for inter partes reexamination before the U.S. Patent and Trademark Office of all claims of U.S. Patent No. 6,415,082 ('082 patent), which is owned by Cirrex Systems, Inc. (Cirrex). The '082 patent originally issued with claims 1-34, and Cirrex added claims 35-124 during reexamination and subsequent-, ly amended and canceled several original claims. As relevant here, the Examiner found claims 56, 57, 76, 102, and 103 patentable and rejected claims 38-41, 43-47, 49-50, 58-61, 75, 84-87, 89-93, 95-96, 104-107, and 121 for lack of written description support. The Board affirmed. Cisco Sys., Inc. v. Graywire LLC, No. 2012-006121, 2013 WL 4782204 (P.T.A.B. Sept. 5, 2013).

Cisco appeals the Board’s patentability finding for claims 56, 57, 76, 102, and 103, and Cirrex cross-appeals the Board’s rejections. Because all the claims on appeal are unpatentable for lack of written description support, we affirm, in part, and reverse, in part.

Background

The '082 patent is directed to the field of fiber optic communication signals; '082 patent col. 1 11. 14-15. Fiber optic communication signals use light energy made up of multiple different wavelengths within one fiber optic cable, and it can be useful to separate an optical beam into its individual wavelength components to allow a logical operation to be performed selectively on a particular wavelength, such as adding or deleting, or changing the intensity of, the data signal carried on each specific wavelength. The “single optical beam” comprises several different wavelengths, which “can include separate information channels that are carried by a first optical beam” having one particular wavelength and “a second optical beam” having a second particular wavelength. Id. col. 111. 40-50. “In other words, multiple channels of information can propagate along an optical waveguide as a single beam of light energy.” Id. col. 111. 27-30.

To separate individual wavelengths from an optical beam, the '082 patent describes an optical network assembly that uses a planar lightguide circuit (PLC). Id. col. 1 11.14-17, 20-24, col. 2 1. 65-col. 3 1. 2, col. 4 11. 10-36. The PLC, together with a series of filtering devices, splits the single, composite optical beam into multiple channels based on individual wavelengths. Id. col. 4 11. 10-22. The combination PLC and filtering device “separate[s] the optical energy into at least two beams, where a first beam can contain a first information channel and a second beam can contain a second information channel.” Id. col. 2 11. 50-53. The PLC is also attached to external optical waveguides which direct the beams of individual wavelengths of light away from and back into the PLC. Id. col. 2 11. 45-65. These external optical waveguides can include amplifiers (which increase the intensity of the light beam) and attenuators (which decrease the intensity of the light beam) to create optical systems that can perform equalization or discrete attenuation, and diverting elements (which can divert or introduce a light beam of a specific wavelength). Id. col. 4 11. 10-60, col. 14 1. 58-col. 15 1. 40. The parties do not dispute the technical features of beam splitting, amplifying, or attenuating of light beams.

To modify an individual wavelength of light, the '082 patent describes using a “diverting element” (1000) outside the PLC to divert a light beam of wavelength lambda three (\3) and replace \3 with a different light beam of wavelength \3., then adding \3. back into the PLC. This “embodiment can function as an optical switch” using a “diverting element ... that diverts a channel signal out of an optical circuit while introducing a new signal content along the same channel into the optical circuit.” Id. col. 4 11. 48-53. The “PLC and filtering device combination can form a drop or add configuration where one channel of information propagating within a multichannel or multiplexed optical beam can be either dropped from or added to the multichannel or multiplexed beam.” Id. col. 4 11. 12-16. Figure 10 shows a cross-connect feedback loop that uses a diverting element 1000 that diverts X3 and introduces XS:

Id. fíg.10 (as annotated by Cisco). As shown in Figure 10, the diverting element 1000 is a double-sided mirror. Id. col. 14 11. 7-9. Figure 11 shows the diverting element in the “in” position, which diverts \3 and introduces \3.. Id. col. 14 11. 47-52. Figure 12 shows the diverting element in the “out” position, in which \3 is not diverted. Id. col. 1411. 53-57.

The use of the illustrated cross-connect feedback loop allows a fiber optic communication system to transmit multiple channels of information on one fiber optic cable, without sacrificing the ability to manipulate the information being transmitted along each individual wavelength of light. Id. col. 1 11. 25-30. This maximizes efficiency because multiple wavelengths of information can be sent simultaneously rather than having to be sent in seriatim. Id. col. 1 11. 25-30.

The PLC (210E) itself is disclosed in more detail in Figure 7 of the '082 patent:

'082 patent fig.7. Figure 7 shows an exemplary embodiment of PLC 210E containing a four-channel drop-add. The bottom left-hand corner shows an optical beam input with optical energy of wavelengths ½-⅛ introduced into PLC 210E. Id. col. 13 11; 22-23. Individual light wavelengths Xj-X4 are, in succession, “dropped” by filtering out (i.e., beam splitting) through the top of the PLC, and later “reintroduced” through the bottom of the PLC. Id. col. 13 11. 24-26. As the optical beam transits within the PLC, reflecting up and down in a zig-zag fashion, the individual wavelengths—X1( X2, X3, and X4—are successively filtered out of the optical beam, with each wavelength traveling through the top of the PLC and then within its own individual optical waveguide. Because PLC 210E is part of a feedback loop circuit, Figure 7 shows how those individual wavelengths Xj, X2, X3, and X4 are ultimately reintroduced through the bottom of PLC 210E.

In this way, PLC 210E demultiplexes incoming optical energy so that individual wavelengths of light are separated and redirected outside the PLC on a channel-by-channel basis before they are returned to the PLC and remultiplexed together, after which the remultiplexed optical energy exits PLC 210E through the top right-hand corner. Id. col. 13 11. 31-38. When Figure 7 is considered in combination with Figures 10-12 above, the data signals carried by the individual wavelengths of light that are returned to the bottom of PLC 210E can be different from the data signals carried by the individual wavelengths of light that originally exited the top of the PLC, through the use of diverting elements.

Another way to modify an individual wavelength of light is shown in Figure 13, which discloses using amplification or attenuation material (1300) to increase or decrease the intensity of an individual wavelength of light before it is returned to the PLC. As illustrated in Figure 13, and described in the specification, the amplification or attenuation material is located outside PLC 210E and is positioned within each individual optical waveguide path.

Id. fig.13. The '082 patent explains several ways in which light energy can be amplified (such as by using a pump laser light with an optical filtering device) or attenuated (such as by using absorbing material of a certain length), and the parties do not dispute the specifics of how the amplification or attenuation is accomplished. Id. col. 15 11. 9-43. One reason that light energy intensity for a specific wavelength should be turned up or down is to improve transmission of the beam, while reducing transmission losses, as the beam travels over long distances or between multiple destinations. Id. col. 3 11. 2-9. This ability to apply “selective” flattening or amplification to “each channel” outside the PLC can be used to (1) equalize the intensities of light across all channels, or (2) “discretely attenuate” individual channels outside the PLC, without attenuating all the channels at the same time. Id. col. 4 11. 56-60, col. 6 11. 31-35, col. 15 11. 8-10. The '082 specification does not disclose why equalization of light energy across all channels is useful, but it does disclose that amplification can vary dramatically with the wavelength of light being amplified, and discrete attenuation can counter this variation in amplification. Id. col. 141. 59-col. 15 1. 5.

The '082 specification further makes clear that “discrete attenuation” is distinct from “collective attenuation.”

In the assembly illustrated in FIG. 13, the channels operating at wavelengths lambda one (Xa) through lambda four (\4 ) are attenuated discretely by gain flattening elements 1300....
The assembly illustrated in FIG. 13 supports a discrete channel approach to signal amplification which is different from the common approach of collectively amplifying the channels. In the illustrated embodiment, the elements 1300 depicted can be amplifiers that apply selective gain to each spectral region. The spectral regions may contain one or numerous channels.

Id. col. 14 1. 64-col. 15 1. 40 (emphases added). As the '082 specification explains, the discrete approach to attenuation or amplification is distinct from the collective approach because each wavelength of light is separately amplified or attenuated, whereas in the collective approach, the same amplification or attenuation is applied to all wavelengths of light in the same way. The '082 specification also briefly mentions that the attenuation material can be positioned at various places in an optical architectural assembly, including inside the zig-zag path of PLC 210E, but it does not disclose how placing attenuation material inside PLC 210E would result in the equalizing of the intensities of different wavelengths of light or the discrete attenuation of different wavelengths of light inside the PLC. Id. col. 1511. 22-24.

Turning to the claims, the parties separated the claims into three, different groups: the equalization claims, the discrete attenuation claims, and the diverting element claims. All three groups contain claims that depend from claim 1, reproduced below:

1. A cross-connect waveguide system comprising:
a planar lightguide circuit having one or more optical paths;
a plurality of optical waveguides coupled to said planar lightguide circuit;
a plurality of filtering devices for feeding light energy into said optical paths of said planar lightguide circuit or receiving light energy from said optical paths of said planar lightguide circuit; and
a diverting element for feeding first light energy at a predetermined wavelength having first information content away from said planar lightguide circuit, and for feeding second light energy at said predetermined wavelength having second information content into said planar lightguide circuit, wherein said diverting element is remotely configurable and is controlled with optically encoded information.

Id. col. 18 1. 61-col. 19 1. 10 (emphases added). As noted, the optical waveguides are flexible fiber optic cables that can feed light signals away from or into a PLC. Id. col. 2 1. 53-63. The filtering devices pass through certain wavelengths of light while reflecting other wavelengths. Id. col. 10 11. 1-53.

Claims 56, 76, and 102 are the equalization claims. Claims 56 and 102 recite that “the [PLC] is operative to equalize the intensities of light energy traveling in the plurality of optical paths of the [PLC].” J.A. 2786, 2792. Claim 76 recites “equalizing the intensities of light energy while the light energy is traveling in the plurality of optical paths of the [PLC].” J.A. 2789.

Claims 57 and 103 are the discrete attenuation claims. They recite that “the [PLC] further comprises a gain flattening element to discretely attenuate light energy traveling in the [PLC].” J.A. 2786, 2792.

Claims 38-41, 43-47, 49-50, 58-61, 75, 84-87, 89-93, 95-96, 104-107, and 121 are the diverting element claims. These claims recite a diverting element inside a PLC. J.A. 26. Representative claim 46 recites that “the diverting element is disposed along an optical path section that spans from a first side of the [PLC] to a second side of the [PLC] and is operative to process light traveling on the optical path section.” J.A. 1558. Thus, claim 46 states that the diverting element is inside the PLC, but it does not recite how the diverting element would divert the light beam inside the PLC.

Relevant, for our purposes, all of the challenged claims recite that either equalization or discrete attenuation is performed inside the PLC, or that the diverting element is located inside the PLC.

During reexamination, the Examiner rejected claims 1-34, which originally issued with the '082 patent. J.A. 296, 299-306. Cirrex disputed those rejections and added new claims 35-124. J.A. 3, 341-59. In response, the Examiner initially rejected Cirrex’s newly presented equalization and discrete attenuation claims for lack of written description support, but he later withdrew those rejections. J.A. 948, 1172. He maintained his rejections of Cirrex’s new diverting element claims for lack of written description support. J.A. 20. The Board affirmed. J.A. 2-3, 42-43.

Cisco appeals the patentability finding for the equalization and discrete attenuation claims. Cirrex cross-appeals the rejection of the diverting element claims. We have jurisdiction under 28 U.S.C. § 1295(a)(4) (2012).

Discussion

I. Standard of Review

In construing the claims, the Board applies the broadest reasonable interpretation consistent with the specification. Cuozzo Speed Techs., LLC v. Lee, — U.S. -, 136 S.Ct. 2131, 2142-45, 195 L.Ed.2d 423 (2016). “We review intrinsic evidence and the ultimate construction of the claim de novo.” SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307, 1316 (Fed. Cir. 2015).

“Whether a patent claim is supported by an adequate written description is a question of fact.” AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1297 (Fed. Cir. 2014). “We review the Board’s conclusions of law de novo and its findings of fact for substantial evidence.” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1337 (Fed. Cir. 2016). Substantial evidence “means such relevant evidence as a reasonable mind might accept as adequate.” Id. (internal quotation marks omitted).

II. Claim Construction

We begin with claim construction. Cisco argues that even though the parties agreed before the Board that the claimed “equalization” and “discrete attenuation” functions must occur inside the PLC, the Board improperly altered the construction for these limitations when it applied the written description analysis.

Equalization is recited in claims 56 and 102 as “equaliz[ing] the intensities of light energy traveling in the plurality of optical paths of the [PLC].” J.A. 2786. Claim 76 similarly recites “equalizing the intensities of light energy while the light energy is traveling in the plurality of optical paths of the [PLC].” J.A. 2789. Consistent with this claim language, the parties agreed before the Board that the recited equalization must occur “while the light energy is within the PLC.” J.A. 3386, 3561.

Discrete attenuation is recited in claims 57 and 103, which explain that “the [PLC] further comprises a gain flattening element to discretely attenuate light energy traveling in the [PLC].” J.A. 2786, 2792. Given this claim language, the parties agreed before the Board that the recited discrete attenuation must also occur while the light energy is traveling inside the PLC. J.A. 3386, 3561.

The problem for Cirrex in this case is that the '082 specification lacks any disclosure or suggestion of how placing attenuation material inside the PLC—which would necessarily impact the collective wavelengths in the PLC in the same way— would result in equalizing the intensities of different wavelengths traveling in the PLC, or discretely attenuating a particular wavelength in the PLC. Cirrex, however, argued to the Board that the intensities of the wavelengths inside the PLC could be equalized with respect to the intensity of a wavelength outside the PLC rather than requiring that the equalization apply only to wavelengths inside the PLC. Cirrex’s rather creative theory is the following: first, attenuation material could be placed somewhere inside the PLC, and all the wavelengths inside the PLC would travel through the attenuation material and thus be attenuated in the same way; and second, when one wavelength X8 is filtered out and soon thereafter replaced with a substitute wavelength X3- coming from outside the PLC, under Cirrex’s theory, “equalization” can be achieved if the intensity of the collective wavelengths in the PLC had been attenuated to the same level of intensity as the intensity of the newly introduced wavelength X3. which had not been subject to the attenuation material. Even if this were possible (and nothing in the specification describes such an embodiment), Cirrex’s theory at best equalizes the intensities of the collective wavelengths inside the PLC with a wavelength that is outside the PLC; the equalization claims, however, require the PLC to equalize the intensities of different wavelengths as they are “traveling in the plurality of optical paths of the [PLC].” J.A. 2786 (emphasis added). Cirrex’s position also appears backwards because it changes the intensities of the other wavelengths X1( X2, and X4 to match a specific wavelength X3., without first equalizing the wavelengths X1( X2, and X4 inside the PLC. Cirrex’s position assumes that the intensities of the wavelengths X1; X2, and X4 inside the PLC are already equal instead of using the attenuation material to equalize those intensities while those wavelengths are inside the PLC.

We thus agree with Cisco that the correct construction for the equalization claims requires that the individual wavelengths of light energy be equalized as to the other wavelengths of light energy inside the PLC while those wavelengths are inside the PLC. When the Board concluded that these claims also encompassed an embodiment in which' light energy inside the PLC is equalized to light energy outside the PLC, the Board incorrectly altered the construction, contrary to the claims’ plain language, as well as the parties’ agreement that the equalization must occur while the light energy is inside the PLC.

Cirrex relies on the same out-of-the-box theory to support its proposed construction of the claimed “discrete attenuation” function. In Cirrex’s hypothetical, the collective wavelengths inside the PLC travel through the attenuation material, and the newly arriving wavelength X8. is added to the PLC without having undergone attenuation. Cirrex believes that this circumstance is “discrete attenuation” as recited in the claims because some (but not all) of the wavelengths X1; X2, and X4 are attenuated, leaving at least one wavelength X3. unattenuated.

We agree with Cisco, however, that when the attenuation applies to all the light wavelengths X!-X4 traveling inside the PLC, that attenuation cannot be discrete attenuation; it is best understood to be collective attenuation, even if an unattenuated light wavelength X3. is later introduced into the PLC. The '082 specification makes clear that the discrete approach to attenuation is distinct from the collective approach to attenuation. As the specification notes for an alternative embodiment using amplification material:

The assembly illustrated in FIG. 13 supports a discrete channel approach to signal amplification which is different from the common approach of collectively amplifying the channels. In the illustrated embodiment, the elements 1300 depicted can be amplifiers that apply selective gain to each spectral region. The spectral regions may contain one or numerous channels.

'082 patent col. 14 1. 64-col. 15 1. 40 (emphases added). Thus, discrete attenuation is distinct from collective attenuation because in the discrete approach, each wavelength of light is separately amplified or attenuated, whereas in the collective approach, the same amplification or attenuation is applied to all wavelengths of light in the same way.

To be sure, the '082 specification does' mention placing “attenuation material within the zigzag-depicted optical path within the PLC 210E,” along with other possible placement locations in the overall larger network assembly. Id. col. 15 11. 17-26. The '082 specification does not, however, disclose or even remotely suggest that placing attenuation material in the PLC results in discrete attenuation. To the contrary, placing attenuation material inside the PLC will not result in discrete attenuation because no one disputes that the attenuation material acts to attenuate all the wavelengths of light traveling inside the PLC. The fact that an additional wavelength \3. may be later introduced into the PLC to replace a filtered-out wavelength X.3 does not transform a collective attenuation into “discretely attenuating] light energy traveling in the [PLC],” as claimed. J.A. 2786 (emphasis added).

Thus, we correct the Board’s construction of equalization to clarify that the individual wavelengths of light energy inside the PLC must be equalized with respect to other wavelengths of light energy while those wavelengths are traveling inside the PLC. We also correct the Board’s construction of discrete attenuation to clarify that discrete attenuation does not encompass using the same attenuation element inside the PLC to attenuate all wavelengths of light in the same way.

III. No Written Description for the Equalization and Discrete Attenuation Claims

Turning next to the Board’s finding of patentability of the equalization and discrete attenuation claims over Cisco’s objection for lack of written description support, we note first that the '082 patent issued with original claims 1-34, and Cirrex later added claims 35-124 during reexamination, of which claims 56, 57, 76, 102, and 103 were found patentable. Because none of the added claims were part of the '082 patent’s original disclosure, Cirrex cannot rely on them for written description support. See Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1479 (Fed. Cir. 1998) (The patentee’s “original disclosure serves to limit the permissible breadth of his later-drafted claims.”).

The written description requirement provides that a patentee must “clearly allow persons of ordinary skill in the art to recognize that [he] invented what is claimed.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (quoting Vas-Cath Inc. v: Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991)). “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id. “[T]he level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id.

In Gentry Gallery, Inc. v. Berkline Corp., a patentee amended his claims to remove a limitation reciting the placement of controls for a set of two parallel recliners on a console between the two recliners. 134 F.3d 1473, 1479 (Fed. Cir. 1998). We reversed the district court’s conclusion upholding the claims’ validity because the specification specifically contemplated the central console as the only location for the controls. Id. Although Gentry Gallery “did not announce a new ‘essential element’ test mandating an inquiry into what an inventor considers to be essential to his invention and requiring that the claims incorporate those elements,” it “applied and merely expounded upon the unremarkable proposition that a broad claim is invalid when the entirety of the specification clearly indicates that the invention is of a much narrower scope.” Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1127 (Fed. Cir. 2008) (quoting Cooper Cameron Corp. v. Kvaerner Oilfield Prods., Inc., 291 F.3d 1317, 1323 (Fed. Cir. 2002)).

Similarly, in PIN/NIP, Inc. v. Platte Chemical Co., we explained that “[wjhile it is legitimate to amend claims or add claims to a patent application purposefully to encompass devices or processes of others, there must be support for such amendments or additions in the originally filed application.” 304 F.3d 1235, 1247 (Fed. Cir. 2002). On appeal, we reversed the district court’s validity finding. We held that the challenged claim reciting “the spaced, sequential application of the two separate chemicals” to certain tubers was invalid for lack of written description support because the “originally filed application, which is devoid of any mention or even implication that the two chemicals can be applied in a spaced, sequential manner, does not support the later-added claim.” Id. at 1247-48.

Here, in asserting written description support for its equalization and discrete attenuation claims, Cirrex argued a modified version of Figure 10, illustrating a possible location of the attenuation material inside the PLC to the Board as follows:

One simple example is illustrated below, using the PLC of Figure 10 of the '082 patent to illustrate. In this example, a gain flattening element has been added to the “zig-zag” path of the PLC. Even if this element is not wavelength-selective, the gain flattening element would affect the signal strength of wavelengths \i, X2, \s, and k4 of the original input, but not the signal strength of added wavelength k3'. For example, the gain flattening element may increase (or decrease) the signal strengths of wavelengths \i, X2, and X4 (that is, a discrete spectral region which contains one or more channels) to equal the signal strength of added wavelength \3., thus, equalizing the signal strength of each of the four wavelengths of light in the output signal (\3 has been dropped from the output signal).

J.A. 3375.

'082 patent fig.10 (as modified by Cirrex).

The Board agreed with Cirrex, finding that the claimed equalization function encompassed the equalization of X1; X2, and X4 against X3., even though X3. was not inside the PLC. J.A. 11. The Board also found that placing an attenuation element inside the PLC could support the discrete attenuation claims because even though all the wavelengths of light Xj-^ inside the PLC were collectively attenuated, the addition of an unattenuated wavelength of light X3. from outside the PLC meant that some wavelengths of light were attenuated and other wavelengths were not attenuated. J.A. 12.

We disagree. Under the correct claim construction, as explained earlier, the claimed functionality of equalization and discrete attenuation must occur inside the PLC with respect to the wavelengths “traveling in the [PLC],” not to wavelengths outside of the PLC. This construction does not encompass the equalization of wavelengths X1, X2, and X4 already inside the PLC with a wavelength X3. coming from outside the PLC. Similarly, placing an attenuation element inside the PLC will not result in discrete attenuation because the attenuation element attenuates all the wavelengths of light inside the PLC. The fact that an additional wavelength X3. may be later introduced into the PLC to replace an original wavelength X3 does not transform a collective attenuation into discrete attenuation.

We also agree with Cisco that the claims are directed to subject matter that is indisputably missing from the '082 specification, ie., the claims “cover a mechanism for acting on individual channels of light within the PLC to discretely attenuate one of several channels” or “a mechanism for acting on individual channels of light within the PLC to make their several intensities equal.” Cisco Opening Br. at 44 (emphases in original). The '082 specification does not meet the quid pro quo required by the written description requirement for the disputed claims because demultiplexing light to manipulate separately the intensities of individual wavelengths of light while the light is still inside the PLC is a technically difficult solution that the '082 specification does not solve, let alone contemplate or suggest as a goal or desired result. Nothing in the '082 specification explains how individual wavelengths of light are separately manipulated while those wavelengths are still inside the PLC. Nor is there anything in the specification that suggests that the inventor contemplated that approach. To the contrary, the '082 specification expressly describes using the PLC to separate wavelengths of light to allow the manipulation of each individual wavelength—outside the PLC—before it is rerouted back into the PLC for remulti-plexing.

Under the correct claim construction for the equalization and discrete attenuation claims, there is no substantial evidence in the record to support the Board’s finding that claims 56, 57, 76, 102, and 103 of the '082 patent have sufficient written description support. Thus, we reverse the Board’s findings of patentability for these claims.

IV. Cirrex’s Cross-Appeal of the Diverting Element Claims

Cirrex cross-appeals the Board’s rejections of the diverting element claims for lack of written description support, arguing that the Board cited Figures 10 and 13 of the '082 patent and their accompanying descriptions, but it did not consider Figure 11. Cirrex argues that Figure 11 provides sufficient support for a diverting element inside a PLC, as claimed.

The Board compared Figures 10 and 13 and found that both figures disclose a PLC and a separate element located outside the PLC. It found that the '082 specification does not provide for a separate embodiment with a diverting element inside the PLC, and therefore, the totality of the disclosure did not establish that the inventors possessed an embodiment with a diverting element inside the PLC.

'082 patent figs.10-12 (as annotated by Cisco).

Cirrex contends that Figure 11 fills in the perceived gap in disclosure because Figure 11 shows a diverting element in the optical path that diverts the existing optical channel content and replaces it with new content. Cirrex points to the '082 specification’s explanation that photolitho-graphic techniques can be used to cast the optical paths within a PLC into desired circuit patterns. Based on these two disclosures, Cirrex contends that the '082 patent necessarily discloses that the diverting element is inside the PLC. Cisco responds that Figure 11 shows an “element in an optical path” of an optical circuit, but it never states that this optical path is “within a PLC.” Cisco Reply Br. at 11.

We affirm because Figure 11 does not show a diverting element inside a PLC. The PLC is shown on the left-hand side of Figure 10, and the diverting element 1000 is shown on the right-hand side of Figure 10, outside the PLC. The diverting element 1000 can be set to a position that is either “in” or “out” of the optical path of light beams \3 and ½; these positions correspond to diverting or not diverting the light beams, in the form of a switch. The diverting element 1000 is clearly located outside the PLC in Figure 10, and nothing in Figure 11 suggests that the diverting element has been moved to inside the zigzag area within the PLC.

We agree that the Board reasonably read the written description and figures in the 082 patent to conclude that the specification does not show a diverting element inside a PLC. The Board properly compared Figures 10 and 13 and did not need to specifically refer to Figure 11 because Figures 11 and 12 are blow-ups of the diverting element of Figure 10. The Board necessarily considered Figure 11 based on its review of Figure 10 when it concluded that “[t]he diverting element is similarly illustrated in Fig. 10, and without an accompanying recitation that the diverting element can be within the PLC.” J.A. 27.

The fact that there are optical paths inside the PLC (e.g., 'the zig-zag pattern in Figure 10) does not by itself require Cir-rex’s reading of the specification, given that optical paths also exist outside the PLC, as shown by X3 and X3. in Figure 10. It is immaterial for resolving the written description issue in this case that photoli-thographic techniques can be used to cast optical paths within a PLC because Figure 10 shows that optical paths also exist outside the PLC, and nothing in Figure 10 or Figure 11 shows that the diverting element is inside the PLC. There is also no disclosure in the '082 specification of where inside the PLC the diverting element would be placed or how that diverting element would divert the light beams inside the PLC.

Substantial evidence supports the Board’s finding of lack of written description support for the diverting element claims. Because we affirm the Board’s finding of lack of written description support, we need not and do not reach the Board’s alternate grounds for unpatenta-bility of the diverting element claims.

Conclusion

We have considered Cirrex’s remaining arguments and find them unpersuasive. We reverse the Board’s finding of patenta-bility for the equalization and discrete attenuation claims because the '082 patent lacks written description support for those claims. We affirm the Board’s rejection of the diverting element claims for lack of written description support. We do not reach the Board’s alternate grounds for unpatentability of the diverting .element claims.

No costs.

AFFIRMED-IN-PART AND REVERSED-IN-PART

      . Of the original claims, claims 21-25 were amended and claim 32 was canceled. J.A. 3. Of the added claims, claims 42, 77, 79, 88, and 123 were canceled, claims 56, 57, 76, 102, and 103 were found patentable by the Examiner, and claims 1-31, 33-41, 43-55, 58-75, 78, 80-87, 89-101, 104-122, and 124 were rejected on various grounds by the Examiner. J.A. 3-4.

      . The filters located on top of PLC 210E contain special materials that allow certain wavelengths of light to pass through while other wavelengths of light reflect back into the PLC, thereby achieving the zig-zag pattern in the PLC. '082 patent col. 10 11. 1-53.


author: PROST, Chief Judge.

text:
    NOVA CHEMICALS CORPORATION (CANADA), Nova Chemicals Inc. (Delaware), Plaintiffs-Appellants v. DOW CHEMICAL COMPANY, Defendant-Appellee
    2016-1576
    United States Court of Appeals, Federal Circuit.
    Decided: May 11, 2017

      Donald Robert Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC, argued for plaintiffs-appellants. Also represented by Mark J. Feldstein, Darrell Christopher Karl.
    Raymond N. Nimrod, Quinn Emanuel Urquhart & Sullivan, LLP, New York, NY, argued for defendant-appellee. Also represented by William Adams, Cleland B. Welton, II; Harry J. Roper, Aaron A. Barlow, Paul David Margolis, Jenner & Block LLP, Chicago, IL.
    Before PROST, Chief Judge, DYK and HUGHES, Circuit Judges.
   PROST, Chief Judge.

NOVA Chemicals Corp. (Canada) and NOVA Chemicals Inc. (Delaware) (collectively, “NOVA”) appeal the district court’s award of approximately $2.5 million in attorney fees to Dow Chemical Co. (“Dow”) under 35 U.S.C. § 285. NOVA filed the underlying action in equity, seeking relief from a prior judgment that it had infringed certain Dow patents. The only issue in this appeal is whether the district court abused its discretion in finding this case exceptional for purposes of § 285. Because it did not abuse its discretion, we affirm.

I. Background

We provide only a brief summary of the background, which is recounted in more detail in our opinions addressing the merits of the underlying patent litigation. See Dow Chem. Co. v. Nova Chems. Corp. (Canada) (“Dow I”), 458 Fed.Appx. 910 (Fed. Cir. 2012); see also Dow Chem. Co. v. Nova Chems. Corp. (Canada) (“Dow II”), 803 F.3d 620, 635 (Fed. Cir. 2015), cert. denied, — U.S. -, 136 S.Ct. 2452, 195 L.Ed.2d 264 (2016).

A

In 2005, Dow filed an infringement action in the U.S. District Court for the District of Delaware, alleging that NOVA infringed U.S. Patent No. 5,847,053 and U.S. Patent No. 6,111,023 (“the asserted patents”). NOVA asserted numerous defenses, including arguments that the accused product did not infringe and that Dow lacked standing to sue because it had transferred ownership of the asserted patents. The court held a jury trial, followed by a bench trial on standing. The district court ultimately held that Dow had standing to sue and entered judgment against NOVA for over $61 million in damages (“the 2010 judgment”). J.A. 442; see also Dow Chem. Co. v. Nova Chems. Corp. (Canada), 726 F.Supp.2d 459 (D. Del. 2010); Dow Chem. Co. v. Nova Chems. Corp. (Canada), No. 05-737-JJF, 2010 WL 3070189 (D. Del. July 30, 2010); Dow Chem. Co. v. Nova Chems. Corp. (Canada), No. 05-737-JJF, 2010 WL 3056617 (D. Del. July 30, 2010). We affirmed that judgment on appeal. Dow I, 458 Fed.Appx. at 921.

In a separate appeal from the district court’s subsequent award of supplemental damages, we held the asserted patent claims to be invalid as indefinite under the Supreme Court’s intervening indefiniteness standard in Nautilus, Inc. v. Biosig Instruments, Inc., — U.S. -, 134 S.Ct. 2120, 189 L.Ed.2d 37 (2014). Dow II, 803 F.3d at 635. Our decision in Dow II did not disturb the 2010 judgment relating to pre-verdict infringement. The district court had entered final judgment pursuant to Federal Rule of Civil Procedure 54(b), which NOVA had already paid at the time of the second appeal.

During the supplemental-damages phase of the infringement action, NOVA became aware of evidence allegedly showing that Dow and its counsel had committed fraud on the court in the course of obtaining the 2010 judgment. By then, however, NOVA was time-barred from filing a motion under Federal Rule of Civil Procedure 60(b)(3) to set aside that judgment for fraud, misrepresentation, or misconduct. See Fed. R. Civ. P. 60(c)(1) (setting a one-year time bar). Accordingly, in September 2013, NOVA filed a separate action in equity against Dow (“the equity action”) for relief from the 2010 judgment.

In its amended complaint, NOVA alleged two frauds on the court. First, NOVA asserted with respect to standing that Dow and its counsel had misrepresented Dow’s ownership of the asserted patents. NOVA based this allegation on the testimony of a former Dow tax department employee, Edward Valenzuela, in an unrelated Louisiana tax case (“the Louisiana action”). Mr. Valenzuela testified in that case: “I think [around the end of 2001] all of Dow’s patents were contributed to an intangible holding company.” J.A. 22554.

Second, NOVA alleged that Dow’s counsel knew or should have known of a “scheme to mislead the jury” with respect to infringement. J.A- 21055, 21081, 21087, 21089 (capitalization omitted). In particular, NOVA contended that Dow’s expert, Dr. Joao Soares, had provided conflicting testimony about testing on the accused product during a separate litigation in Canada (the “Canadian action”).

Dow moved to dismiss the equity action. The court granted the motion and dismissed the complaint, holding that “[t]here [wa]s fundamentally no adequate allegation of the grave miscarriage of justice that is required under the extraordinary circumstances” for setting aside a prior judgment based on fraud. J.A. 21496. Specifically, the court noted that Mr. Valenzuela’s testimony in the Louisiana action was “immaterial and irrelevant” to Dow’s standing because the terms of the relevant patent transfer agreement were clear on their face, and Mr. Valenzuela’s testimony “ha[d] nothing to do with the authenticity of [the version of] Schedule A” that had been held to be the controlling portion of the agreement. J.A. 21497. With respect to noninfringement, the district court held that NOVA had merely identified “arguably inconsistent statements by ... Dr. Soares” that neither “plausibly alleged perjury” nor reached any fact that had been in material dispute at trial in the infringement action. J.A. 21498.

We affirmed the dismissal of the equity action. Nova Chems. Corp. (Canada) v. Dow Chem. Co. (“Dow III"), 607 Fed.Appx. 993 (Fed. Cir. 2015) (Mem.).

B

Dow subsequently moved in the district court for sanctions, attorney fees, and ■ costs under 35 U.S.C. § 285, 28 U.S.C. § 1927, and the district court’s inherent sanctioning authority. In opposing the motion, NOVA submitted declarations regarding its pre-suit diligence, which allegedly showed it had filed the equity action in good faith.

The district court denied Dow’s motion under 28 U.S.C. § 1927 and the court’s inherent sanctioning authority. It held that, as demonstrated by the extent of pre-suit diligence, NOVA did not file the equity action in bad faith. Nova Chems. Corp. v. Dow Chem. Co. (“Dow IV”), No. 13-1601, 2015 WL 5766257, at *4-5 (D. Del. Sept. 30, 2016). The court, however, granted Dow’s motion under § 285, which allows courts to award “reasonable attorney fees to the prevailing party” in “exceptional cases.” 35 U.S.C. § 285. The district court did so based on the weakness of NOVA’s litigating position and the manner in which NOVA pursued this case. Dow IV, 2015 WL 5766257, at *5-7. In particular, the court reiterated that NOVA’s claims for relief “just didn’t stand up” and were “not even plausible.” Id. at *6 (internal quotation marks omitted); see also id. at *2-3 (reiterating the insufficiency of NOVA’s allegations). It also stated that NOVA “could have dealt with the situation” in “less inflammatory ways.” Id. at *5. The court concluded that, despite the “high burden” applicable, NOVA “nonetheless moved forward with its theories, theories which the [cjourt ultimately found were hot even plausible.” Id. at *6.

The district court then awarded Dow nearly $2.5 million in § 285 attorney fees. J.A. 1. NOVA timely appealed. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

II. Discussion

On appeal, NOVA only challenges the district court’s exceptional-case determination under § 285. It does not dispute the amount of attorney fees awarded. Nor does it dispute that § 285 is applicable. See Dow IV, 2015 WL 5766257, at *5 n.2 (noting that NOVA did not dispute the applicability of § 285 before the district court).

An exceptional case under § 285 is “simply one that stands out from others with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated.” Octane Fitness, LLC v. Icon Health & Fitness, Inc., — U.S. -, 134 S.Ct. 1749, 1756, 188 L.Ed.2d 816 (2014). “District courts may determine whether a case is ‘exceptional’ in the case-by-case exercise of their discretion, considering the totality of the circumstances.” Id. We review “all aspects of a district court’s § 285 determination” for abuse of discretion. Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., — U.S. —, 134 S.Ct. 1744, 1749, 188 L.Ed.2d 829 (2014). “A district court would necessarily abuse its discretion if it based its ruling on an erroneous view of the law or on a clearly erroneous assessment of the evidence.” Id. at 1748 n.2 (quoting Cooter & Gell v. Hartmarx Corp., 496 U.S. 384, 405, 110 S.Ct. 2447, 110 L.Ed.2d 359 (1990)).

A

NOVA argues that the district court committed legal error, and thus abused its discretion, .by looking to NOVA’s pursuit of the equity action as “[t]he overriding factor,” rather than considering the totality of the circumstances, and also erred in finding that the filing of an equity action—regardless of its merit— could be subject to a fee award. Appellants’ Opening Br. 34. According to NOVA, the court improperly viewed NOVA’s pursuit of the equity action to be an “ex-tremen tactic” and incorrectly suggested that there were “other, less inflammatory ways [NOVA] could have dealt with the situation.” Dow IV, 2015 WL 5766257, at *5-6. NOVA acknowledges that it faced a “high burden” in the equity action but argues that the district court legally erred by relying on the extraordinary nature of relief sought to create a “Catch-22” situation wherein the mere filing of an independent action to set aside a prior judgment would render a case exceptional under § 285. Appellants’ Opening Br. 36-38 (internal quotation marks omitted). We agree with NOVA to the extent that the filing of an action to set aside a prior judgment, without more, does not render a case exceptional per se.

Due to the applicable Rule 60(b)(3) time-bar and other circumstances, NOVA is correct that the pursuit of a separate action in equity was “the only federal court option” available for it to set aside the 2010 judgment. Appellants’ Opening Br. 35. Dow submits that rather than file the equity action, NOVA could have requested additional discovery in the infringement action or filed a motion under Federal Rule of Civil Procedure 60(b)(4) on grounds that the 2010 judgment was void for lack of standing. But those suggestions are unhelpful. Dow conceded at oral argument that even armed with additional evidence from further discovery, NOVA would have still been required to file a separate action to set aside the 2010 judgment. Oral Argument 17:55-18:36, available at http:// oralarguments.cafc.uscourts.gov/mp3/2016-1576.mp3. And Dow’s suggestion of filing a Rule 60(b)(4) motion relates only to raising a lack of standing; it does not necessarily allow NOVA to also challenge how the infringement determination was previously procured.

A party whose only option for relief from a prior judgment is to file a separate action in equity should not be disincentiv-ized from doing so if that party has a plausible basis for relief. Therefore, despite the extraordinary nature of relief that NOVA sought, the district court erred to the extent it based its exceptional-case determination on NOVA’s filing of the equity action itself.

B

But that does not end our review of the district court’s exceptional-case determination. The district court did not base its analysis solely, or even primarily, on the fact that NOVA filed an equity action. Rather, it expressly relied on alternative grounds, holding the ease to be “exceptional, both in the substantive strength of NOVA’s litigating position and in the manner in which the case was litigated.” Dow IV, 2015 WL 5766257, at *5 (emphases added). At a minimum, the court did not abuse its discretion in concluding that the case was exceptional due to the substantive strength of NOVA’s litigating position.

The substantive strength of a party’s litigating position can—i.e., whether it is objectively baseless—independently support an exceptional-case determination. See Octane Fitness, 134 S.Ct. at 1756 (“[A]n ‘exceptional’ case is simply one that stands out irom others with respect to the substantive strength of a party’s litigating position ... or the unreasonable manner in which the case was litigated.” (emphasis added)). Thus, “a case presenting ... exceptionally meritless claims may sufficiently set itself apart from mine-run cases to warrant a fee award.” Id. at 1757. In this regard, “[i]t is the ‘substantive strength of the party’s litigating position’ that is relevant to an exceptional case determination, not the correctness or eventual success of that position.” SFA Sys., LLC v. Newegg Inc., 793 F.3d 1344, 1348 (Fed. Cir. 2015) (quoting Octane Fitness, 134 S.Ct. at 1756).

NOVA’s allegations of fraud in this case mainly rested on “purportedly conflicting testimony” from the Louisiana action and the Canadian action. Dow TV, 2015 WL 5766257, at *7. But as explained by the district court, the arguable inconsistencies in those other actions, even if proven, were immaterial to the 2010 judgment. We previously held with respect to standing that, as a legal matter, the relevant patent transfer agreement unambiguously provided that Schedule A defined the scope of the transfer. Dow I, 458 Fed. Appx. at 914. The district court did not abuse its discretion in holding that NOVA had failed to sufficiently challenge, based on a generic inconsistent statement, the authenticity of the document held to be the operative version of Schedule A. Dow IV, 2015 WL 5766257, at *2. NOVA’s allegations of fraud regarding the infringement determination are just as baseless, if not more. As the district court observed, Dr. Soares’s testimony in the Canadian action was not necessarily inconsistent with his prior infringement testimony and, in any event, did not directly relate to the limitation that had been the focus of the parties’ underlying infringement dispute. Id. The district court therefore did not abuse its discretion in holding that NOVA’s litigating position was objectively baseless,

NOVA contends that the district court “compound[ed] its error” by relying on the extensiveness of NOVA’s pre-suit investigation to support the exceptional-case determination. Appellants’ Opening Br. 38. The court pointed out that NOVA’s pre-suit diligence “confirm[ed] the extraordinary nature of this case.” Dow IV, 2015 WL 5766257, at *6. To the extent the district court relied on NOVA’s extensive pre-suit diligence to support an exceptional-case finding, doing so would appear counterintuitive. In context, though, we think the better reading is that the district court properly relied on the extensiveness of NOVA’s pre-suit diligence to confirm NOVA’s high burden and the gravity of its allegations. The court did not rely on the pre-suit diligence itself as an independent basis to find the case exceptional. It later clarified that even though NOVA’s pre-suit diligence “undercut!] Dow’s assertion” of bad faith, “it d[id] nothing to sway the [c]ourt to find that this case [wa]s not exceptional.” Id. We agree, as a general matter, that the extent of a party’s pre-suit investigation or how fervently it believed in its allegations does not affect the objective strength of that party’s litigating position.

At a minimum, the district court did not abuse its discretion in holding that NOVA’s litigating position was objectively baseless.

C

NOVA also argues that the district court legally erred by “considering] this case in comparison to the full panoply of patent cases.” Id. at *7. According to NOVA, the court should have considered whether the equity action stood out from other actions to set aside a prior judgment, rather than considering whether the equity action stood out from other patent cases more generally. Otherwise, it contends, an action to set aside a prior judgment would always be exceptional because, “[b]y necessity,” it would “stand out” from the traditional patent infringement case.” Appellants’ Opening Br. 40. NOVA’s argument is unavailing.

NOVA fails to cite any legal precedent to support its position that a district court’s baseline for comparison is so restricted in a § 285 analysis. Oral Argument 0:32-2:29. One could always search for more similar cases for comparison. Taken to its logical conclusion, continuing to narrow the universe of comparators to cases resolved on similar procedural postures, legal grounds, or facts would leave few or no comparators remaining. We decline to hold that the district court erred in comparing this case to other patent cases more generally.

Any concern regarding the district court’s comparison is tempered because, again, it did not hold that this case stood out merely because NOVA requested that a prior judgment be set aside for fraud whereas many other patent cases do not present such circumstances. The equity action was a direct extension of, and intertwined with, the prior infringement action. Requiring the district court in this circumstance to narrow its comparison to other independent actions requesting relief from judgment would run counter to the Supreme Court’s general instruction that “[district courts may determine whether a case is ‘exceptional’ in the case-by-case exercise of their discretion, considering the totality of the circumstances.” Octane Fitness, 134 S.Ct. at 1756. The district court therefore did not commit reversible error in comparing this case to patent cases more generally.

We have considered NOVA’s remaining arguments and find them unpersuasive.

III. Conclusion

For the foregoing reasons, the district court did not abuse its discretion in determining, under the totality of the circumstances, that this case was exceptional under § 285.

AFFIRMED.

Costs

Costs to Appellee.

      . Such an action is permitted under Federal Rules of Civil Procedure 60(d)(1) and 60(d)(l)(3). See Fed. R. Civ. P. 60(d)(1), (3) (stating that Rule 60 "does not limit a court’s power to: (1) entertain an independent action
        to relieve a party from a judgment[ ] ... or (3) set aside a judgment for fraud on the court”).

      . Dow states in its briefing that a Rule 60(b)(4) motion "would have failed.” Appel-lee's Br. 48. It is unclear if Dow means that such a motion would have been procedurally improper or failed on the merits.

      . But for the relevant time-bar, NOVA may have filed its request to set aside the 2010 judgment through a Rule 60(b)(3) motion, in which case its argument for excising patent infringement cases from the universe of § 285 comparators would lose considerable, if not all, force.