• Dec 28 2021
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  • Category: CAFC Updates

Qualcomm owns U.S. Patent No. 8,838,949, which claims systems for efficiently retrieving an executable software image from a first processor’s non-volatile memory and loading it for use by a second processor. Intel challenged all claims of the ’949 patent as unpatentable for obviousness in three inter partes reviews (IPRs). The Board consolidated the proceedings and issued a final written decision holding that Intel had proved only certain claims unpatentable. Intel appeals. The CAFC holds that the Board failed to tie its construction of the phrase “hardware buffer” (which relates to one of the key claimed advances of the invention—the elimination of extra memory copy operations) to the actual invention described in the specification. Noting that what is needed in this case is a more substance-focused analysis of what the intrinsic evidence shows the asserted advance to be and how, concretely, the “hardware buffer” relates to that advance, the CAFC does not exclude the possibility that the record should be expanded in order to arrive at an adequate understanding at the substantive level, and says the Board may benefit from expert explanation of technical operations that might bear on the merits of that construction and produce the needed understanding. The CAFC concludes that the Board’s claim construction is wanting because it did not do enough to reach and articulate an understanding of what the intrinsic evidence makes clear is the substance of the inventions. As to claims 16 and 17, which are in means-plus-function format, the CAFC concludes 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. On remand, 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. For these reasons, the CAFC vacates the Board’s decision and remands.

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