This morning the Federal Circuit issued two precedential opinions in patent cases appealed from the Patent Trial and Appeal Board. The first opinion vacates a board decision for failure to tie its construction of a claim term to the patent’s specification. The second opinion affirms in part and vacates in part board determinations of unpatentability. The court also released two nonprecedential opinions. The first comes in a patent case appealed from the Eastern District of Missouri. The second comes in veterans case appealed from the Court of Appeals for Veterans Claims. Here are the introductions to the opinions.
Intel Corp. v. Qualcomm Inc. (Precedential)
Qualcomm Inc. owns U.S. Patent No. 8,838,949, which addresses multi-processor systems in which software stored in non-volatile memory coupled to a first processor is to be used by a second processor. The patent describes and claims systems, methods, and apparatuses for efficiently retrieving an executable software image from the first processor’s non-volatile memory and loading it for use by the second processor. Intel Corp. challenged all claims of the ’949 patent as unpatentable for obviousness in three inter partes reviews (IPRs) before the Patent and Trademark Office. The Office’s Patent Trial and Appeal Board consolidated the proceedings and issued a final written decision holding that Intel had proved unpatentable claims 10, 11, 13–15, and 18–23, but not claims 1–9, 12, 16, and 17. Intel Corp. v. Qualcomm Inc., IPR2018-01334, 2020 WL 1286306, at *27 (P.T.A.B. Mar. 16, 2020) (Final Written Decision). Intel appeals.
We hold first that Intel has adequately demonstrated Article III standing to press this appeal. On the merits, we hold that in the decision before us, the Board failed to tie its construction of the phrase “hardware buffer” to the actual invention described in the specification. For that reason, we vacate the Board’s decision as to claims 1–9 and 12 and remand for a new construction. As to claims 16 and 17, which are in means-plus-function format, we also vacate and remand. We conclude that the Board failed to determine for itself whether there is sufficient corresponding structure in the specification to support those claims and whether it can resolve the patentability challenges despite the (potential) indefiniteness of those claims.
Intel Corp. v. Qualcomm Inc. (Precedential)
Intel Corporation (“Intel”) petitioned the Patent Trial and Appeal Board (“Board”) for inter partes review (“IPR”) of various claims of U.S. Patent No. 8,229,043 (“the ’043 patent”), owned by Qualcomm Incorporated (“Qualcomm”). Intel proved unpatentable some (but not all) of these claims and some (but not all) of Qualcomm’s proposed substitute claims. Now, Intel appeals the Board’s determinations regarding the surviving claims. We affirm as to the originally challenged claims, but we vacate as to the substitute claims. We remand for further proceedings.
Low Temp Industries, Inc. v. Duke Manufacturing Co. (Nonprecedential)
Duke Manufacturing Co. (Duke) appeals the entry of a preliminary injunction related to its products accused of patent infringement by Low Temp Industries, Inc. (LTI). The district court found that LTI is likely to show that Duke’s accused products infringe several claims of U.S. Patent Nos. 8,307,761 (’761 patent) and 8,661,970 (’970 patent), and that Duke had failed to raise a substantial question of validity as to those claims based on the Finegan reference. Because the district court relied on an erroneous claim construction and misread the Finegan reference, it failed to recognize that Duke raised a substantial question as to the validity of the relevant claims. We reverse.
Jones v. McDonough (Nonoprecedential)
Terry L. Jones appeals the decision of the Court of Appeals for Veterans Claims (“Veterans Court”) in Jones v. Wilkie, No. 19-2174, 2020 WL 356465 (Vet. App. Jan. 22, 2020). In its decision, the Veterans Court affirmed the December 6, 2018 decision of the Board of Veterans’ Appeals (“Board”) that denied Mr. Jones an effective date earlier than August 30, 2006, for the award of service connection for major depressive disorder (“MDD”). Appx. 74. For the reasons set forth below, we dismiss for lack of jurisdiction.