Inphi Corporation v. Netlist, Inc.


Docket Nos. 2015-1179

O’MALLEY, REYNA, CHEN
November 13, 2015

Brief Summary:  PTO finding that negative limitation supported by specification lacking explicit disclaimer affirmed, although “in all cases, a patentee may [not] arbitrarily dissect its invention by amending the claims in order to avoid the prior art”.

Summary:   Inphi appealed PTAB’s decision affirming the examiner’s final decision, following its request for inter partes reexamination (requested pre-AIA which repealed inter partes reexamination (see fn 1-2)), declining to reject claims of Netlist’s US 7,532,537 relating to computer system RAM modules for lack of written description (WD) of a negative limitation excluding certain types of memory modules.  The examiner found the negative limitation overcame obviousness rejections and the Board affirmed.  Imphi appealed, citing Santarus (FC 2012) which states that “[n]egative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation” and the Board found “no such reason expressly articulated in the specification”.  The FC panel opinion explains that the Board did find it was “reasonably supported” including being consistent with industry standards that are incorporated by reference into the specification, being left out of Table 2 which “distinguishes among the relevant signals by providing separate columns for CS, RAS, and CAS”, by “various other passages” and Figure 9A, and Inphi’s expert testimony.  It was noted that the FC reviews legal conclusions of the PTAB de novo.  It explained that the specification satisfies WD “when ‘the essence of the original disclosure’ coveys the necessary information-‘regardless of how it’” does so “and regardless of whether the disclosure’s ‘words [a]re open to different interpretation[s]” (In re Wright, FC 1989); the specification must “clearly allow persons of ordinary skill in the art to recognize what [the inventor] invented what is claimed” (Vas-Cath, FC 1991).  The panel found the main question here to be “whether properly describing alternative features-without articulating advantages or disadvantages of each feature-can constitute a ‘reason to exclude’ under the standard articulated in Santarus” (the specification of which discussed of the disadvantages of sucralfate as compared to omeprazole)”.  The FC panel held “that it can”, finding this position consistent with Santarus’ discussion of MPEP 2173.05(i) (“If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims”) and In re Johnson (CCPA 1977 (“It is for the inventor to decide what bounds of protection he will seek.”)), as well as its conclusion that WD support for a negative limitation “need not rise to the level of disclaimer” (“In fact, it is possible for a patentee to support both the inclusion and exclusion of the same material.”)  The FC panel explained that while the Santarus court the “express recitation of (dis)advantages was sufficient to provide a reason to exclude” sucralfate, it “did not hold…that such recitations were required to satisfy” WD, and the panel did not do so here.  It also explained, however, “[t]hat is not to say that in all cases, a patentee may arbitrarily dissect its invention by amending the claims in order to avoid the prior art”, citing In re Bimeda (FC 2013) (specification did not allow for exclusion of “only [an antiinfective] while permitting the use of antibiotics”).  The Board decision was therefore affirmed.

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