NOTE: This disposition is nonprecedential.

 

United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE: NICIRA, INC.,

Appellant

______________________ 

2022-1297

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 14/815,950.

______________________ 

Decided: April 25, 2023

______________________ 

MANI ADELI, Adeli LLP, Pacific Palisades, CA, for appellant. Also represented by NATHANIEL F.N. ROSS. 

 BRIAN RACILLA, Office of the Solicitor, United States 

Patent and Trademark Office, Alexandria, VA, for appellee 

Katherine K. Vidal. Also represented by MICHAEL S.

FORMAN, THOMAS W. KRAUSE, AMY J. NELSON, FARHEENA 

YASMEEN RASHEED. 

______________________ 

Before DYK, LINN, and CHEN, Circuit Judges.

PER CURIAM. 

Nicira, Inc. appeals from the final decision of the Patent Trial and Appeal Board (“Board”), affirming the Examiner’s rejection of claims 1-20 of Nicira’s U.S. Patent 

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2 IN RE: NICIRA, INC. 

Application No. 2015/0381362 (“Application”). Nicira argues that the Board’s obviousness rejection of representative claim 1 based on Allen in view of Lin and Harjula is 

not supported by substantial evidence under a proper construction of claim 1. For the reasons that follow, we affirm.

DISCUSSION 

Nicira first argues that the claims require that a single 

program on a single device must receive the command from 

the controller and send the request for the new key to the 

key generator. It also argues that such single device must 

be the same entity that processes data messages using encryption keys. We agree with the Board that the broadest 

reasonable interpretation of the claims does not require 

such a limitation. The preamble of representative claim 1 

opens with the term “A non-transitory machine readable 

medium” and uses the open-ended “comprising” transition. 

J.A. 71 (emphasis added). It is well-settled that the use of 

“a” or “an” in a claim generally means “one or more.” See

01 Communique Lab., Inc. v. LogMeIn, Inc., 687 F.3d 1292, 

1297 (Fed. Cir. 2012). It is likewise well-settled that the 

term “comprising” is an open-ended transitional term. 

Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1368 

(Fed. Cir. 2003).

Moreover, claim 1 expressly recites that “program” 

comprises plural “sets of instructions” for performing the 

claimed tasks and contemplates that separate entities will 

perform those tasks. Claim 1 (“the program for execution 

by at least one processing unit, the program comprising sets 

of instructions for...”) (emphasis added). The claims do not 

limit the location of the instructions or restrict the program 

to a single discrete entity. As the Board recognized, under 

the broadest reasonable interpretation of claim 1, the actor 

that receives the command to fetch a new key need not be 

the same actor that sends a request for a new key to the 

key generator. 

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IN RE: NICIRA, INC. 3

Nicira argues that the claims, specification, and Figures 3 and 22 of the Application, require the “controller” 

that sends the command to the program to start the keyrequest process to be distinct from the device that processes messages, such as client device 202 in U.S. Pat. No.

8,584,216 (“Allen”). As the Board correctly explained, however, nothing in the claims limits the term “controller” in 

this way. The controller, as claimed, is simply the entity 

that sends the command to fetch a new key and remove a 

particular key. While the specification at ¶¶ 17, 30, 55, 140 

and Figures 3 and 22 provide a written description of “some 

embodiments,” there is nothing in the specification that expressly limits the scope of the claims to those embodiments. 

See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 

(Fed. Cir. 2004).

Nicira next contends that Allen does not meet the claim 

limitation of a “machine readable medium,” because Allen 

does not recite a single entity on a single machine readable 

medium that performs the recited steps. As the Board correctly held, however, the claims read on a single program 

with instructions acting across different entities. Nicira is 

thus incorrect that the claimed program cannot read on Allen’s system-management module 110 merely because the 

system-management module itself generates the keys rather than sends a request to a key generator; the Board 

correctly held that the subscription-management module 

106 in Allen sends the request to the system-management 

module 110, which satisfies the “key generator” limitation. 

First Board Op. 6. 

Nicira also argues that Allen’s “server-side” modules 

are incompatible with the client-side components of U.S. 

Pat. No. 8,340,300 (“Lin”) because Allen’s client-side components already handle encryption and message processing, and it would make no sense to modify Allen’s 

processing systems with Lin’s client-side components. We 

disagree. Allen expressly notes that the modules may “run 

on one or more computer devices, such as the devices 

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4 IN RE: NICIRA, INC. 

illustrated in FIG. 2 (e.g. computing devices 202(1)-(N) 

[(client devices)] and/or server 202.” Allen at 5:10-15 (emphasis added). See also id. at 6:13–19 (noting that “[e]xamples of server 206 include, without limitation, application 

servers and database servers”). The Board fully considered 

Nicira’s argument and was not persuaded; nor are we. The

interchangeability of the location of the entities performing 

the claimed tasks is also confirmed by Harjula, which discloses that the client and the server “may execute on the 

same physical or virtual machine,” and the systems “may 

operate as a server, as a client, or as both a server and a 

client at different times.” U.S. Pat. App. No. 2015/0242594 

(“Harjula”) at ¶ 62. Nicira incorrectly reads the references 

in isolation and attempts to require a wholesale incorporation of components from one reference into another to reach

a determination of obviousness. The legal question is 

whether the references in combination and as a whole render the claims obvious—not whether one reference may be 

wholly incorporated into the other. See In re Etter, 756 

F.2d 852, 859 (Fed. Cir. 1985) (en banc) (citing Orthopedic 

Equip. Co. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 

1983)).

Nicira finally argues that the combination of Allen, 

Lin, and Harjula fails to provide substantial evidentiary 

support for the Board’s conclusion. Nicira specifically 

points to Lin as disclosing only a single key and failing to 

disclose or teach the claimed limitation of “a second plurality of keys in the keyring.” We disagree. As the Board explained, obviousness was based on the combination of Lin 

with Allen and Harjula, and both Allen and Harjula disclose the use of multiple keys in a keyring. First Board Op. 

at 7; Final Rejection at 6–7, J.A. 81–82; Allen at 6:46–47; 

Harjula at ¶¶ 216, 255 (“Plural instances may be provided 

for components, operations, or structures described herein 

as a single instance.”). It is the combination of the references that renders the limitation and the claim obvious, not 

each reference read in isolation. See In re Merck & Co., 800 

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IN RE: NICIRA, INC. 5

F.2d 1091, 1097 (Fed. Cir. 1986). The Board adequately 

explained its reasoning, and we see no violation of Alacritech, Inc. v. Intel Corp. ̧ 966 F.3d 1367, 1379 (Fed. Cir. 

2020).

The Board also did not equate “a first plurality of keys” 

and “a second plurality of keys,” as Nicira argues. See 

Nicira Br. at 5. The Board explained that one plurality of 

keys included the particular key (i.e., the old key being removed) and one plurality did not, First Board Op. at 7, a 

proposition that Nicira appears to agree with. Nicira Br. 

at 15 (describing the sending and receiving of packets during the first and second time periods in Allen). 

Nicira cursorily challenges the reason to combine Allen 

with Lin and Harjula but does not provide any reason for 

its challenge.

Nicira did not contest the Board’s consideration of 

Claim 1 as representative and does not do so here. The 

obviousness of Claim 12 and the rest of the claims thus 

rests upon the same bases as the obviousness of Claim 1.

CONCLUSION

The Board correctly interpreted representative claim 

1 and properly affirmed Examiner’s rejections of claims 1-

20.

AFFIRMED

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