Federal Circuit Patent Watch: No Heightened Written Description Standard For Negative Claim Limitations

Precedential Federal Circuit Opinions

1. NOVARTIS PHARMACEUTICALS CORPORATION v. HEC PHARM CO., LTD. [OPINION](2021-1070, January 3, 2021) (MOORE, LINN and O'MALLEY)

O'Malley, J. Affirming district court decision that the asserted patent claims do not fail the written description requirement of 35 U.S.C. § 112(a). There was no clear error in the district court's holding that the relevant dosage limitation was adequately described. "Blaze marks" are not necessary where the claimed species is expressly described in the specification, which in this case, for example, included the claimed dosage range in a description of a prophetic human clinical trial. With respect to the challenged negative claim limitation, the Court noted that it previously had resisted imposition of heightened written description standards for negative limitations. A negative limitation must be accompanied by an original disclosure which conveys to a person of ordinary skill that the inventor was in possession of the claimed invention. The district court did not clearly err by crediting expert testimony and finding that defendant failed to show by clear and convincing evidence that the relevant negative limitation was not adequately described.

2. INTEL CORPORATION v. QUALCOMM INCORPORATED [OPINION](2020-1664, December 28, 2021) (PROST, TARANTO, and HUGHES)

Prost, J. Affirming decision of Patent Trial and Appeal Board as to originally challenged claims, but vacating as to substitute claims. On the threshold question of jurisdiction, the Court found that, although petitioner was not sued for infringement, petitioner had standing because patent holder had mapped the challenged claims to petitioner's products in a prior suit against a third party, patent holder was not offering a covenant not to sue, and petitioner continued to sell the relevant products. On the merits of the originally challenged claims, the Board was found to have not committed error in its claim construction of the term "radio frequency input signal," because the Board's claim construction was found to prevent the word "input" from being redundant in the claim, to comport with the claim's tripartite structure, and to reflect the specification's repeated use of the disputed phrase to reference incoming carrier signals before down-conversion. The Court found, with respect to the originally challenged claims, that the Board satisfactorily explained why a skilled artisan would not have combined the relevant prior art references. The Board was found to have concluded that negating a key benefit of one of the prior art references during the majority of operation would have outweighed any reason to combine. Finally, the Court found that a skilled artisan would have had reason to combine the prior art references relating to the substitute claims, because the Board's decision rejecting that rationale was not supported by substantial evidence.

WilmerHale represented the appellant, Intel Corporation.

3. INTEL CORPORATION v. QUALCOMM INCORPORATED [OPINION](2020-1828, 2020-1867, December 28, 2021) (PROST, TARANTO, and HUGHES)

Taranto, J. Vacating decision of Patent Trial and Appeal Board, finding that petitioner had not proved unpatentable certain claims of the challenged patent. On the threshold question of jurisdiction, the Court found that petitioner had standing to appeal, even though it had only shown that it manufactured one of the claimed processors (and not all the components required by the claims), given the centrality of that component to the claims, the possibility of direct infringement suits based on product testing, and the possibility of indirect infringement suits based on at least inducement. With respect to most of the challenged claims, the issue on appeal was the proper construction of the claim term "hardware buffer." The Court found that conclusions from the claim language advanced the claim-construction inquiry only so far, and that what was needed was a more substance-focused analysis than was present, in the Board's opinion or in the present record, of what the intrinsic evidence shows the asserted advance to be and how, concretely, the "hardware buffer" relates to that advance. With respect to the remaining two challenged claims, the Board erred in not deciding for itself whether required structure (corresponding to claim terms in means-plus-function format) was present in the specification or whether, even if it was not, the absence of such structure precluded resolution of petitioner's prior-art challenges. Indefiniteness of a limitation (here, a means-plus-function limitation) precludes a patentability determination only when the indefiniteness renders it logically impossible for the Board to reach such a determination. If the Board determines on remand 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.

WilmerHale represented the appellant, Intel Corporation.

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