“Although the Federal Circuit felt that ‘there is something to be said for each side’s view of how to read the claim phrase ‘hardware buffer,’ there was no need to decide which meaning is better [in this case].”
The U.S. Court of Appeals for the Federal Circuit (CAFC) on Friday, January 24, affirmed the Patent Trial and Appeal Board’s (PTAB’s) decisions for Intel in three inter partes reviews (IPRs), on appeal following previous remands back to the Board in December 2021. Judge Taranto authored the opinion.
In its 2021 decision, the CAFC found in part that Intel satisfied Article III standing requirements for appealing from the PTAB but remanded the case on a number of issues. The present appeal involves Qualcomm’s challenge to the PTAB’s new claim construction of the term “hardware buffer” in which it “changed its earlier construction, which excluded ‘a temporary buffer’ from the scope…to a broader construction, under which a ‘hardware buffer’ is ‘not limited to a ‘permanent’ buffer.’”
The parties generally disagreed about what is required for the buffer to be a “hardware buffer.” Intel said that a buffer is a “hardware buffer” if “the memory cells used by the buffer are ‘physically separate’ from the memory cells into which the software is loaded and from which the processor executes it (‘system memory’).”
Qualcomm proposed a narrower view, namely, that “a buffer is a hardware buffer only if its memory cells are never used for system memory, rather than assigned to be used for that function (allocated) upon the turning on of power (or runtime).”
The Federal Circuit, however, said that “neither party provides an illuminating or persuasive explanation of its position” regarding Qualcomm’s assertion that Intel’s view renders “hardware” superfluous, and thus the court turned to the specification and prosecution history for guidance. Upon analysis of the specification, the CAFC said none of the three uses of the phrase “hardware buffer” elucidated why either Qualcomm’s or Intel’s approach is the right one.
As to the prosecution history, though, the court said it was “illuminating.” In response to an examiner rejection, “Qualcomm did not even hint, let alone declare, that the Svensson [prior art] intermediate storage area—undisputedly allocated at runtime—was outside its claimed ‘hardware buffer.’” As a result, although the court felt that “there is something to be said for each side’s view of how to read the claim phrase ‘hardware buffer,’” there was no need to decide which meaning is better. The opinion explained:
“This case is governed by the broadest-reasonable-interpretation standard…which recognizes the distinctive duty of applicants or patentees to respond to uncertainty of scope by making clarifying changes… We conclude that Qualcomm has not persuasively shown the Board majority’s current claim construction to be unreasonable. We therefore affirm the Board’s claim construction and its resulting unpatentability determinations.”
The CAFC thus affirmed the PTAB’s decision to hold all challenged claims of Qualcomm’s U.S. Patent No. 8,838,949 unpatentable.
