Proper Claim Construction is Essential to a Determination of Patentabilty

In Intel Corp. v. Qualcomm Inc., [2020-1828, 2020-1867] (December 28, 2021), the Federal Circuit vacated the Board’s decision that claims 1–9 and 12 of U.S. Patent No. 8,838,949 were not unpatentable, because the PTAB failed to tie its construction of the phrase “hardware buffer” to the actual invention described in the specification. The Federal Circuit also vacated the Board’s decision that claims 16 and 17 were not unpatentable, because the Board failed to determine for itself whether there is sufficient corresponding structure in the specification to support the means-plus-function limitations in those claims to determine whether they are sufficiently definite to consider their validity. The ‘949 patent addresses a system with multiple processors, each of which must execute its own “boot code” to play its operational role in the system.

The Federal Circuit said that it was clear from the claim language that “hardware buffer” has meaning, but it is unclear what that meaning was. The Federal Circuit said that there is no definition to be found in the intrinsic evidence, and the determination of that meaning depends on understanding what the intrinsic evidence makes clear is the substance of the invention—what the inventor “intended to envelop.” The Federal Circuit concluded that the Board did not do enough to reach and articulate that understanding, and its claim construction is therefore wanting. The Federal Circuit explained that what was needed, then, was an analysis of the specification 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 this crucial respect, the Board fell short in its analysis here, and we think the Board is better positioned
than we are to correct the deficiencies.

The Federal Circuit noted that the Board’s construction was entirely a negative one—excluding “temporary” buffers. The Federal Circuit said that although there is no per se rule against negative constructions, which in some cases can be enough to resolve the relevant dispute, the Board’s construction in the present case was inadequate. It was not clear what precisely constitutes a
“temporary buffer” as recited in the Board’s construction.

With respect to claims 16 and 17, there is no dispute that claim 16 (and hence dependent claim 17) contains terms that are in means-plus-function format governed by 35 U.S.C. § 112(f). Because Intel agreed with the Board’s suggestion in the institution decision that two of the means-plus-function terms
in claim 16 were indefinite for lack of supporting structure, the Board concluded that Intel’s statement necessarily meant that Intel, as the petitioner, had not met its burden to demonstrate the unpatentability of those claims.

The Federal Circuit held that this was error and that a remand was required, because the Board did not
decide for itself whether required structure is present in the specification or whether, even if it was not, the absence of such structure precludes resolution of Intel’s prior-art challenges. The Federal Circuit added that to avoid confusion going forward, the Board should, in IPRs where Impossibility because indefiniteness applies, clearly state that the final written decision does not include a determination of patentability of any claim that falls within the impossibility category.

Judgment of Non-Infringement Moots Appeal of PTAB Decision Sustaining Validity

In ABS Global, Inc. v. Cytonome/St, LLC, [2019-2051] (January 6, 2021), the Federal Circuit dismissed the appeal of a PTAB decision in an inter partes review sustaining the patentability of certain claims of U.S. Patent No. 8,529,161, finding that it was unlikely that the ‘161 patent would be asserted against the petitioner in the future.

Two weeks after the Board’s final written decision, the district court granted in part ABS’s motion for summary judgment, concluding that ABS’s accused products did not infringe any of the ’161 patent claims. In June 2019, nearly two months after the district court’s summary judgment decision, ABS appealed the Board’s final written decision. Cytonome’s response brief, filed about three months later, included an affidavit by Cytonome’s counsel stating that Cytonome “has elected not to pursue an appeal of the dis-trict court’s finding of non-infringement as to the ’161 pa-tent and hereby disclaims such an appeal.” Cytonome then argued that, because it disavowed its ability to challenge the district court’s summary judgment that ABS did not infringe the ‘161 patent claims, ABS lacked the requisite injury in fact required for Article III standing to appeal the Board’s final written decision regarding validity of the claims of the ’161 patent.

The Federal Circuit, applying the voluntary cessation doctrine, concluded that Cytonome’s disavowal of its right to appeal the district court’s noninfringement judgment mooted ABS’s appeal of the IPR. The Federal Circuit first observed that Cytonome’s assertion of the ’161 patent against ABS—cannot reasonably be expected to recur. Although Cytonome’s
affidavit disavowing its appeal is unquestionably narrower than a covenant not to sue, Cytonome’s disavowal was “coextensive with the asserted injury” in fact. The Federal Circuit said that Cytonome’s disavowal estops Cytonome from asserting liability against ABS for infringement of the ’161 patent claims in connection with the accused products, thereby allowing ABS to make, use, and sell those products freely.

The Federal Circuit found that Because Cytonome has demonstrated that its disavowal encompasses all of its allegedly unlawful conduct, it was incumbent on ABS to indicate that it engages in or has sufficiently concrete plans to engage in activities not covered by the disavowal. The Federal Circuit concluded that ABS’s IPR appeal is moot because there is no injury sufficient to support an ongoing case or controversy.

Posted in IPR

Even If Phrase Was In the Preamble, it is a Claim Limitation that was Not Met

In Simo Holdings Inc. v. Hong Kong Ucloudlink Network Technology Ltd., [2019-2411] (January 5, 2021) the Federal Circuit reversed the district court’s final judgment of $8,230,654 for infringement of claim 8 of U.S. Patent No. 9,736,689, on apparatuses and methods that allow individuals to reduce roaming charges on cellular networks, rejecting the district court’s claim construction.

At issue was whether claim 8 required a a “non-local calls database.” The Federal Circuit noted that the language at issue follows, rather than precedes, the word “comprising,” which is one of the transition words that typically mark the end of the preamble, with what follows constituting the body of the claim. The Federal Circuit said that the placement of the language suggests that it is part of the body of the claim, a characterization that, if accepted, would place its limiting character beyond dispute. However. the parties treated the language at issue as part of the preamble, treating only the succeeding six paragraphs as the body of the claim. But even under that characterization, the Federal Circuit concluded, the language at issue is limiting. By supplying the only structure for the claimed apparatus, the Federal Circuit said that the preamble language supplies “essential structure,” and the body does not define “a structurally complete invention”—which are two key reasons for preamble language to be deemed limiting. Further supporting its conclusion that the “preamble” was limiting, the Federal Circuit noted thatthe opening language of the preamble provided an antecedent basis for terms in the body of the claim.

Simo argued that even if some parts of the preamble are limiting, some components, including the disputed “non-local calls database”, should not be deemed limiting, because they are “unnecessary to perform the functions specified after the preamble. However, the Federal Circuit declined to parse the preamble in that way where the preamble supplies the only structure of the claimed device and the disputed language does not merely identify an intended use or functional property but is “intertwined with the rest of the preamble.”

The Federal Circuit rejected the district court’s conclusion that claim 8 does not require a “non-local calls database.” The determinative issue was the phrase “a plurality of memory, processors, programs, communication circuitry, authentication data stored on a subscribed identify module (SIM) card and/or in memory and non-local calls database.” The Federal Circuit said that the district court treated the word “and” near the end of the phrase as meaning “and/or,” incorrectly concluding that “a plurality of” requires only “at least two” members selected from the entire list of identified items (memory, processors, etc.). The Federal Circuit said instead. “a plurality of” requires at least two of each of the listed items in the phrase at issue in claim 8.

Having concluded that the a non-local calls database was a required element, the finding of infringement should be reversed, and summary judgment of non-infringement should be granted.