A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.
Intel Corp. v. Qualcomm Inc., No. 2020-1664 (Fed. Cir. (PTAB) Dec. 28, 2021). Opinion by Prost, joined by Taranto and Hughes.
Qualcomm owns a patent related to radio frequency communication systems. Intel petitioned for IPR, challenging various claims as unpatentable. In response to a motion by Qualcomm, the Patent Trial and Appeal Board replaced three of the challenged claims with proposed substitute claims. In a Final Written Decision, the Board found some of the originally challenged claims and some of the substitute claims unpatentable. Intel appealed the Board's determinations regarding the surviving claims.
As an initial matter, the Federal Circuit considered Intel's standing to pursue the appeal. The Federal Circuit held that, because Qualcomm had already mapped the patent's claims to Intel's products in a prior suit against Apple, and because Intel continues to sell the relevant products, "Intel's risks transcend mere conjecture or hypothesis." Therefore, Intel had Article III standing.
Turning to the merits, the Federal Circuit first addressed the Board's construction of the claim term "radio frequency input signal." The Board limited the term to incoming carrier signals before down-conversion. The Federal Circuit affirmed the interpretation, concluding that it is supported both by "linguistic clues" within the surrounding claim language and by "the specification's repeated use of the disputed phrase to reference incoming carrier signals before down-conversion."
Next, the Federal Circuit addressed obviousness for both the originally challenged claims and the substitute claims. Regarding the originally challenged claims, Intel argued that the Board had applied an incorrect legal analysis of "weighing the putative disadvantage" of the prior art combination "against the combination's undisputed benefits." The Federal Circuit disagreed, ruling that the Board correctly weighed competing evidence regarding relevant tradeoffs. Therefore, the Federal Circuit affirmed as to the originally challenged claims.
Regarding the substitute claims, the Federal Circuit vacated and remanded because substantial evidence did not support the Board's finding that there was insufficient motivation to combine the prior art references. First, relying on testimony from Intel's expert explaining how and why a skilled artisan would have combined the references, the Federal Circuit rejected the Board's finding that Intel's proffered motivation to combine was impermissibly "generic." Second, relying on undisputed evidence that the proposed combination provided an "obvious solution" to a "known problem," the Federal Circuit rejected the Board's finding that Intel used "impermissible hindsight." Third, the Federal Circuit rejected the Board's finding that Intel's proposed combination would not be "suitable for its intended purpose."
Intel Corp. v. Qualcomm Inc., Nos. 2020-1828, -1867 (Fed. Cir. (PTAB) Dec. 28, 2021). Opinion by Taranto, joined by Prost and Hughes.
Qualcomm owns a patent directed to multi-processor systems in which software stored in non-volatile memory coupled to a first processor is to be used by a second processor. Intel petitioned for IPR, challenging all claims as unpatentable for obviousness. The Patent Trial and Appeal Board found some (but not all) of the claims unpatentable. Intel appealed as to the surviving claims.
The Federal Circuit first considered whether Intel has Article III standing to pursue the appeal. Qualcomm had already filed an infringement suit identifying an Intel product as the claimed "second processor." The Federal Circuit held that this was enough to confer standing because "Intel's risks transcend mere conjecture or hypothesis." The court recognized that "Intel has only shown that it manufactures the claimed 'second processor'" rather than all the components required by the claims. But the Federal Circuit pointed to "the centrality of [the second processor] to the claims, the possibility of direct infringement suits based on product testing, and the possibility of indirect infringement suits based on at least inducement." Thus, Intel had standing.
Turning to the merits, the Federal Circuit first considered the Board's construction of the claim term "hardware buffer." The court held that "the Board failed to tie its construction of the phrase 'hardware buffer' to the actual invention described in the specification." The term lacks "a clear, undisputed meaning in either ordinary English or in relevant technical parlance." Thus, as the Federal Circuit explained, an analysis of the specification is needed "to arrive at an understanding of what it teaches about what a 'hardware buffer' is, based on both how it uses relevant words and its substantive explanations." In that "crucial aspect, the Board fell short in its analysis." Therefore, the Federal Circuit vacated the Board's findings of nonobviousness that depended on the incorrect construction of "hardware buffer" and remanded for a new construction.
The Federal Circuit also vacated and remanded as to two claims written in means-plus-function format. During the IPR proceedings, Intel agreed with the Board's suggestion that two of the means-plus-function terms were indefinite for lack of supporting structure. The Board then concluded that, based on Intel's statement, Intel necessarily did not meet its burden to demonstrate unpatentability of the involved claims. The Federal Circuit disagreed with that approach, concluding that "the Board did not decide for itself whether required structure is present in the specification or whether, even if it is not, the absence of such structure precludes resolution of Intel's prior-art challenges." The Federal Circuit instructed that, whenever the Board's patentability determination "is rendered impossible because of the indefiniteness of an essential claim limitation," the Board must "clearly state that the final written decision does not include a determination of patentability of any claim that falls within the impossibility category."
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