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Federal Circuit Reminds PTAB That Short Cuts Are Not Allowed

Last month, in a precedential decision, the Federal Circuit vacated-in-part and remanded the Patent Trial and Appeal Board’s (“Board”) obviousness determination regarding Alacritech’s computer networking patent because the Board failed to adequately explain its findings for three of the challenged claims.

Alacritech, Inc. v. Intel Corp., et al. (Appeal Nos. 2019-1467 and 2019-1468) involved the appeal of inter partes review (“IPR”) proceedings initiated by Intel Corporation, Cavium, LLC and Dell Inc. (collectively, “Intel”) against certain claims of Alacritech U.S. Patent No. 8,131,880 (the “’880 Patent”).  The ’880 Patent concerns offloading certain network-related processing tasks from a host computer’s central processing unit (“CPU”) to an intelligent network interface card (“INIC”).  Relevant here, the Board issued a Final Wrqitten Decision determining that claims 41-43 of the ’880 Patent, all of which require offloading the task of reassembling data received by the host computer from the host computer’s CPU to the INIC (the “reassembly limitations”), were unpatentable as obvious over the cited prior art references.  To support its ruling, the Board merely “recit[ed] some of the parties’ arguments in two terse paragraphs” and concluded, without explanation, that the asserted prior art teaches the reassembly limitations.

On appeal, Alacritech argued that the Board’s analysis did not adequately support its obviousness finding as to the reassembly limitations.  The Federal Circuit panel of Judges Moore, Chen and Stoll agreed.  The Court explained that under the Administrative Procedure Act “the Board is obligated to provide an administrative record showing the evidence on which the findings are based, accompanied by the agency’s reasoning in reaching its conclusions.”  While “perfect explanations” are not required, the panel clarified that the Board’s “explanation [must] be sufficient for us to see that the agency has done its job.”  The Court reasoned that the Board failed to meet this obligation by stating that the prior art generally teaches data reassembly without addressing or even acknowledging the crux of the parties’ dispute—i.e., where data reassembly takes place in the prior art.  The Board’s failure to explain how the prior art teaches reassembly in the network interface, as required by the claims, left the panel unable to “reasonably discern whether the Board followed a proper path in determining that the asserted prior art teaches or suggests the reassembly limitations, and by extension, that the subject of claims 41-43 would have been obvious.”  The Court therefore vacated that portion of the Board’s decision and ordered the Board to reconsider whether the asserted prior art teaches the entirety of the reassembly limitations, including the requirement that reassembly takes place in the network interface.

This case underscores the importance of the Board adequately explaining its findings.  Parties to post grant reviews that have received an adverse decision from the Board should pay careful attention to whether the Board sufficiently supported its findings.

©1994-2020 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.National Law Review, Volume X, Number 224


About this Author

Brad Scheller Patent Litigation Attorney Mintz Law Firm

Brad Scheller is a trial attorney who focuses his patent litigation practice on representing clients in the automotive devices, thermoplastics, electronic components and consumer products industries in federal district court, before the Patent Trial and Appeal Board and at the International Trade Commission. With a background in mechanical engineering and over 14 years of experience practicing law, Brad has successfully represented patent owners in enforcing their rights against infringers and protecting those rights from challenges of invalidity, and has also successfully defended and...

Vincent M. Ferraro, Mintz Levin, Patent Litigation Licensing & Technology Transactions Strategic IP Monetization & Licensing IPRs & Other Post-Grant Proceedings Federal District Court

Vincent’s practice focuses on patent disputes in Federal District Courts and before the U.S. Patent Trial and Appeal Board. With over 10 years of experience, Vincent has handled patent disputes involving telecommunications, cellphone and smartphone technology, digital photography, image processing, electronic circuitry, electrical components, computer software and hardware, LCD technology, data mining, financing, mechanical devices, medical devices and implants, consumer products, GPS technology, e-commerce, and Internet security. In patent litigation cases, he guides clients through all phases of the case, including pre-suit due diligence, claim construction, discovery, depositions, hearings, and trial.

Vincent also has significant experience representing clients in post-grant proceedings before the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office, including inter partes review (IPR) and covered business method (CBM) patent review proceedings. He has represented both petitioners and patent owners in these proceedings.

Vincent also regularly counsels clients on their IP portfolio strategies and assists them in developing design strategies for their products. He works closely with inventors, analyzes new inventions, drafts U.S. patent applications, and prosecutes patents before the U.S. Patent and Trademark Office in various high-technology fields and on consumer products. He also renders patent freedom-to-operate and validity opinions.