IPR obviousness decision vacated and remanded for insufficient explanation

Alacritech, Inc. v. Intel Corp., et al.

Docket No. 2019-1467, -1468 (IPR2017-01409-10, -01736-7, IPR2018-00338-9)
July 31, 2020

Brief Summary: IPR obviousness decision vacated and remanded as Board’s explanation did not “articulate a satisfactory explanation for its action”.

Summary: Alacritech (AT) appealed USPTO (“Board”) decision holding the claims of US 8,131,880 directed to “[a]n apparatus for transferring a packet to a host computer system” (“from a host computer’s central processing unit (CPU) to an ‘intelligent network interface card’ (INIC)” including a “flow re-assembler” that “re-assemble[s] a data portion of said first packet with a data portion of a second packet in said communication flow”) unpatentable for obviousness over “Thia” in view of “Tanenbaum”. The FC panel explained that in an IPR “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” (TQ Delta, FC 2019; In re NuVasive, FC 2016 (“perfect explanation” not required “if the agency’s path may reasonably be discerned”, must “articulate a satisfactory explanation for its action including a rational connection between the facts found and the choice made”); “the Board’s own explanation” must “be sufficient ‘for us to see that the agency has done its job”). AT appealed the Board decision as to independent claims 1, 32, 41 and 43 and argued that “the Board’s analysis is inadequate to support its finding that the asserted prior art teaches or suggests the reassembly limitations”. The FC panel agreed with AT, finding that “[a]fter briefly reciting some of the parties’ arguments in two terse paragraphs, the Board merely concludes that ‘data portions of packets are reassembled’ in both claim 41 and the asserted prior art” and “[i]n doing so, the Board appears to misapprehend both the scope of the claims and the parties’ arguments.” It explained that “]n]o party disputed that reassembly is disclosed by the asserted prior art”, “[t]he crux of the dispute” being “where reassembly takes place in the prior art and whether that location satisfies the claim limitations” that is “not acknowledged” by the Board which did not “explain how the prior art teaches or suggests reassembly in the network interface”. “As such,” the FC panel wrote, it “cannot reasonably discern whether the Board followed a proper path in determining that the asserted prior art teaches or suggests the reassembly limitations” (e.g., it “did not endorse, adopt, or otherwise suggest that it was persuaded by” Intel’s “arguments, much less explain why it found those arguments persuasive” (Pers. Web Techs., FC 2017); KSR, US 2007 (“rejections on obviousness grounds cannot be sustained by mere conclusory statements”); “the Board’s reasoning appears to be untethered to either party’s position” (Paice LLC, FC 2018)). The FC panel therefore vacated and remanded the Board’s obviousness decision. The FC panel did find “the Board’s finding of a motivation to combine Thia and Tanenbaum” to be “supported by substantial evidence” (e.g., no teaching away (Meiresonne, FC 2017)), and disagreed with AT’s claim construction argument.

This entry was posted in Inter Parties Review (IPR), IPR, Obviousness, Obviousness-Teaching Away. Bookmark the permalink.

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