Latest Federal Court Cases, 1/3/22
Intel Corp. v. Qualcomm Inc., Appeal Nos. 2020-1828, -1867 (Fed. Cir. Dec. 28, 2021)
The Federal Circuit issued two precedential decisions this week—both arising from IPRs filed by Intel against patents owned by Qualcomm. In our Case of the Week, we focus on the first of those cases. In our Also This Week section below, we cover the second case.
In the first case, the Court again addressed issues of Constitutional standing to appeal an adverse PTAB opinion—an issue we have looked at several times recently. See our write-up of the recent decision in ModernaTx, Inc. v. Arbutus Biopharma Corp. here, and the decision in University of South Florida Research Foundation, Inc. v. FujiFilm Medical Systems U.S.A., Inc. here. The Court also considered issues of claim construction, concluding that the PTAB failed to tie its construction of the phrase “hardware buffer” to the actual invention described in the specification. The Court also provided important guidance to the PTAB of how to resolve claims that are alleged to be indefinite—an area that has never been fully resolved by the Court. See our write-up of a prior decision by the Court addressing that issue here.
The patent at issue concerns a technique for loading “boot code” for microchips, and specifically for storing the boot code on a “secondary” microchip for use on a “primary” microchip. Specifically, it claims a “scatter loading” approach in which code is distributed into scattered parts of the secondary processor’s memory as opposed to in a single, continuous block. The patent discloses a “direct” scatter loading process, through which the segments of the software image are transmitted “directly” from a “hardware buffer” to their final locations in the secondary processor’s “system memory.” Claim 1 recited a “hardware buffer,” and claim 2, depending from claim 1, recited loading “directly from the hardware buffer to the system memory of the secondary processor without copying data between system memory locations on the secondary processor.”
Claim 16 recited “means for processing” and “means for scatter loading” terms.
Procedurally, Qualcomm originally sued Apple at the ITC alleging infringement of the patent in suit. Qualcomm alleged that Intel’s processor in Apple’s iPhone acted as the “secondary processors.” Apple and Qualcomm settled. Intel later filed the instant IPRs. The PTAB found several claims unpatentable, but found that claims 1 and 2, along with additional claims involving the “hardware buffer” were not unpatentable, and that claim 16 and its dependent claim 17, with the means plus function terms identified above, were not unpatentable.
Concerning the “hardware buffer” claim terms, Qualcomm suggested that the term should be construed to be a “a permanent buffer within the hardware transport mechanism, in contrast to a temporary buffer in system memory that is allocated by the secondary processor at run time for this purpose.” The Board agreed. This construction was dispositive of Intel’s challenge to claims 1 and 2, among others. Intel had argued that a “hardware buffer” was taught by an “intermediate storage area” disclosed in its principal prior-art reference. But because that storage area was a temporary buffer, it was insufficient to match Qualcomm’s patent claim.
As to claims 16 and 17, the Board ruled that Intel had failed to meet its burden of identifying sufficient structure corresponding to the means plus function claim terms. The Board ultimately concluded that the patent failed to disclose sufficient structure to perform the recited functions for the two means-plus-function claim terms. But, since the Board could not assess indefiniteness under Section 102 in an IPR, the Board ultimately concluded that the terms were not invalid under Section 103 because Intel had failed to link up each of the elements to the prior art.
The Court provided an extensive analysis of the standing issue in the sister case, addressed below. In short, it found that Intel had standing to pursue the appeal. The Court found that Intel had engaged in activity that already gave rise to an infringement suit by Qualcomm. Based on this fact, the Court held that “Intel’s risks transcend mere conjecture or hypothesis.” The Court found that this was true even though its manufactured only the “second processor” described in the claims, particularly given the “centrality of that component to the claims, the possibility of direct infringement suits based on product testing, and the possibility of indirect infringement suits.”
The Court provided a lengthy articulation of the legal standards applicable to claim construction in IPRs before turning its analysis to the construction of “hardware buffer,” and finding that the Board’s construction was too narrow and “did not do enough to reach and articulate” its understanding of what the inventor “intended to envelop” in the scope of its claims.
First, the Court held that “hardware buffer” cannot merely mean a buffer that is implemented in hardware, because all buffers are implemented on a physical device (i.e., hardware). Second, because claim 1 includes both “system memory” and a “hardware buffer,” there must be some distinction between those two concepts. Third, claim 2 informed that data had to be able to move “directly” from the hardware buffer to the system memory of the secondary processor. But, the Court held, “[t]hose conclusions from the claim language advance the claim-construction inquiry only so far. The Court concluded that a more complete analysis of the specification was necessary to “arrive at an understanding of” what the specification teaches. But, while holding that the Board’s “narrow” construction was incorrect and there was insufficient basis for the Board’s negative “temporal” construction, the Court felt the Board was still in the best position to define the claim term, and remanded for further consideration, with guidance after making several observations about the specification.
With respect to claim 6, which had two terms drafted in means-plus-function format, the Court also reversed. The Board held that Intel, arguing that the terms had no corresponding structure, had failed to match those claims to the prior art. The Court held “that the Board’s conclusion was error and that a remand is required, because 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 Court held that, in cases going forward, where there is an issue concerning indefiniteness, “the Board should, in IPRs where that principle applies, clearly state that the final written decision does not include a determination of patentability of any claim that falls within the impossibility category.” Moreover, the Court noted, “it is not always impossible to adjudicate a prior-art challenge, one way or the other, just because some aspect of a claim renders the claim indefinite.” Rather, “[t]he indefiniteness of a limitation . . . precludes a patentability determination only when the indefiniteness renders it logically impossible for the Board to reach such a decision.”
The Court held that, “[o]n remand, the Board must decide one or both of two issues. One is whether it can resolve the prior-art challenge to the patentability of claims 16 and 17 despite the potential indefiniteness of the means-plus-function terms. The other is whether those terms are actually indefinite. . . . If the Board determines both that there is indefiniteness and that such indefiniteness renders it impossible to adjudicate the prior-art challenge on its merits, then the Board should conclude that it is impossible to reach a decision on the merits of the challenge and so state in its decision.”
The opinion can be found here.
ALSO THIS WEEK
Intel Corp. v. Qualcomm Inc., Appeal No. 2020-1664 (Fed. Cir. Dec. 28, 2021)
In this companion case, addressing a different patent that was also asserted against Apple, the Court provided a more extensive explication of it standing analysis. It also provided perhaps the Court’s lengthiest “motivation to combine” analysis since the Supreme Court’s 2007 opinion in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417–18 (2007). Ultimately, the Court concluded that the Board’s analysis was sufficient with respect to the originally challenged claims. However, the Court held that the Board’s findings concerning proposed substitute claims was not supported by substantial evidence. In reaching its conclusion that the Board failed to follow the teachings of KSR, the Court spent 10 pages carefully dismantling the Board’s approach to obviousness, rejecting three separate reasons why the Board held that there was an insufficient reason to combine two prior art references.
The opinion can be found here.