The Federal Circuit remanded Intel’s Inter Partes Review (IPR) challenges against two Qualcomm patents back to the USPTO for further analysis.
In each decision, the Federal Circuit found that Intel had standing to appeal the decisions because, although Qualcomm had not sued Intel, Qualcomm had filed suit against other parties and mapped features of Intel’s products to the claims during those proceedings.
On the merits, the Federal Circuit remanded the IPR on one patent because the USPTO’s analysis did not give it the information it needed to review the meaning of the term “hardware buffer” as used in a set of claims of the patent. Accordingly, it decided to allow the USPTO to arrive at a construction of “hardware buffer” in the first instance after providing guidance on how the term should be construed.
Regarding other claims in the patent, which were expressed as “means-plus-function” format, the Federal Circuit criticized the USPTO for not issuing a decision of patentability based on the Intel’s prior art because of an alleged lack of structure to support the means-plus-function recitations. It instructed the USPTO to decide “whether it can resolve the prior-art challenge to the patentability” “despite the potential indefiniteness of the means-plus-function terms” or “whether those terms are actually indefinite” “and that such indefiniteness renders it impossible to adjudicate the prior-art challenge on its merits.”
Regarding the other patent, the Federal Circuit affirmed the USPTO’s holding that the original patent claims were invalid but reversed the USPTO’s holding that substitute claims were patentable. Regarding the substitute claims, the Federal Circuit applied the logic in the Supreme Court’s KSR decision and instructed that Intel had provided sufficient reasoning to combine two references.