Home News & Events The Indefiniteness of a Limitation Precludes a Patentability Determination Only When Such Indefiniteness Renders the Patentability Determination Logically Impossible

The Indefiniteness of a Limitation Precludes a Patentability Determination Only When Such Indefiniteness Renders the Patentability Determination Logically Impossible

Summary: In Intel Corp. v. Qualcomm Inc., a panel of the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) held that the Patent Trial and Appeal Board (“Board”) was in error for failing to analyze the patentability of a claim containing indefinite means-plus-function limitations, stating that a patentability analysis is only precluded when the claim’s indefiniteness “renders it logically impossible for the Board to reach such a decision.” Nos. 2020-1828, 2020-1867, slip op. at 18-21, 20 (Fed. Cir. Dec. 28, 2021).

In 2017, Qualcomm Inc. (“Qualcomm”) brought patent infringement actions against Apple Inc. (“Apple”) “in district court and at the International Trade Commission (“ITC”), alleging that Apple infringed” U.S. Patent No. 8,838,949 (the ’949 patent), among others, “by making, selling, and using iPhone models that incorporated baseband processors” produced by Intel Corporation (“Intel”). Id. at 6.  The claims of the ‘949 patent are generally directed to “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. Id. at 2.  The patent infringement actions between Qualcomm and Apple eventually settled. Id. at 6.  Still, Intel, the manufacturer of the baseband processors for the iPhone Models at issue in the actions between Qualcomm and Apple, petitioned the Board for inter partes review (“IPR”) to determine the patentability of all 23 claims of the ‘949 patent. Id. at 6-7.  The Board granted the petition. Id.

Generally, in an IPR proceeding, the Board may only consider the patentability of challenged claims on a ground that could be raised under 35 U.S.C. §§ 102 or 103, “and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b).  Further, under 35 U.S.C. § 318, “the Board is obligated to ‘issue a final written decision with respect to the patentability of’ every claim challenged by the petitioner.” Id. at 19 (citing SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348, 1353 (2018)).  Accordingly, by granting Intel’s IPR petition, the Board was obligated to issue a final written decision on the patentability of every claim of the ‘949 patent on a ground raised under 35 U.S.C. §§ 102 or 103 based on patents or printed publications.

In its decision, the Board ruled that Intel had proved the unpatentability of claims 10, 11, 13-15, and 18-23, but had failed to prove the unpatentability of the remaining claims, including independent claim 16. Id. at 6-7.  Specifically, with respect to independent claim 16, the Board ruled that Intel had failed to show unpatentability because Intel had not met its burden of identifying sufficient structure in the specification corresponding to two means-plus-function terms recited in independent claim 16, including a “means for processing” term and a “means for scatter loading” term. Id. at 8.  Indeed, Intel conceded that the ’949 specification failed to disclose sufficient structure to perform the recited functions for the noted means plus function terms of claim 16. Id. at 20.  The “means for processing” and “means for scatter loading” terms were recited in claim 16 of the ‘949 patent as follows:

16. An apparatus comprising:

means for receiving at a secondary processor, from a primary processor via an inter-chip communication bus, an image header for an executable software image for the secondary processor that is stored in memory coupled to the primary processor, the executable software image comprising the image header and at least one data segment, the image header and each data segment being received separately;

means for processing, by the secondary processor, the image header to determine at least one location within system memory to which the secondary processor is coupled to store each data segment;

means for receiving at the secondary processor, from the primary processor via the inter-chip communication bus, each data segment; and

means for scatter loading, by the secondary processor, each data segment directly to the determined at least one location within the system memory, and each data segment being scatter loaded based at least in part on the processed image header.

The Board specifically held that Intel failed to prove the unpatentability of claim 16 “[b]ecause [Intel] has not met its burden under our Rules to show structure corresponding to the claimed function to which we can compare the prior art’s disclosure.” Id. at 9.  Thus, the Board ruled that Intel had not “shown, by a preponderance of the evidence, that [claim 16 and its dependent claim 17] are unpatentable under 35 U.S.C. § 103(a) as obvious.” Id.  Notably, the Board made its decision despite both Intel and Qualcomm agreeing that the Board should assess the patentability of claim 16 even if it concluded that there was insufficient corresponding structure for the “means for processing” function and the “means for scatter loading” function. Id.

Intel appealed the Board’s ruling to the Federal Circuit, arguing, among other things, that the Board erred by not properly analyzing the patentability of claim 16. Id. at 6-7.  The Federal Circuit began its analysis by remarking that the Board must “‘issue a final written decision with respect to the patentability of’ every claim challenged by the petitioner.” Id. at 19.  Despite this obligation, the Federal Circuit noted that “that obligation does not mean that the Board must reach a determination of the patentability of a claim on the presented prior-art grounds if such a determination is rendered impossible because of the indefiniteness of an essential claim limitation.” Id. (referencing Samsung Electronics America, Inc. v. Prisua Eng’g Corp., 948 F.3d 1342, 1353 (Fed. Cir. 2020); cf. Anniston Mfg. Co. v. Davis, 301 U.S. 337, 355 (1937)).  In the means plus function context, when supporting structure for performing a claimed function is absent or not linked to a claimed function in the specification, a means plus function claim is considered indefinite under 35 U.S.C. §112(b). B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997).

Contrary to the conclusion reached by the Board, the Federal Circuit recognized that “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.” Intel Corp., slip op. at 19.  The Federal Circuit pointed out that “the indefiniteness of one limitation in a claim may not preclude” a patentability analysis of another limitation in the claim and the same for alternative limitations (e.g., a claim requiring “A or B”). Id.  With this in mind, The Federal Circuit held that the Board, instead of “simply accept[ing] Intel’s concession that the required structure for the means-plus-function claim was missing,” should itself have concluded (1) that the required structure for the means-plus-function limitation was not present in the specification, and (2) that the prior art analysis task was impossible to perform in light of the claim’s indefiniteness. Id. at 20.  In addition, the Federal Circuit held that the Board’s treatment of claims 16 and 17 “were contrary” to the principles of the IPR scheme, which was designed to protect not only the interests of the petitioner in securing a determination on the patentability of a claim, but also the patentee, the judicial system, and the agency “in diminishing duplication of adjudication burdens and risks”, as well as the public interest, as reflected in the Board’s answering of patentability questions in an IPR even after petitioners have withdrawn. Id.

In summary, the Federal Circuit held that the Board’s analysis of the patentability of independent claim 16, among others, was improper and remanded the case back to the Board for further proceedings. Id. at 21.  Specifically, the Federal Circuit held that, although there was no dispute between the parties that the “means for processing” and “means for scatter loading” phrases were means-plus-function phrases governed by 35 U.S.C. § 112(f), the decision by the Board was improper because the Board did not decide for itself whether required structure is present in the specification. Id. at 18.  Further, the Federal Circuit held that, even if the Board had determined that the required structure was not present in the specification, the Board should have thereafter determined whether the absence of such structure precluded resolution of Intel’s prior art challenges. Id. at 18-19.

Takeaway: Although a claim before the Patent Trial & Appeal Board may include a limitation that is adjudicated to be indefinite, an analysis of the patentability of the claim is only precluded by the Board when the claim’s indefiniteness “renders it logically impossible for the Board to reach such a decision.”