January 29, 2022

Proper Claim Construction is Essential to a Determination of Patentability

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 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, the Court said, and is better positioned 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 of 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.