Inphi Corporation v. Netlist, Inc.
805 F.3d 1350
| Fed. Cir. | 2015Background
- Netlist owns U.S. Patent No. 7,532,537 for memory modules (DDR DRAM) that translate between system memory domain and physical memory domain and use chip-select signals.
- Inphi requested inter partes reexamination; examiner initially rejected many claims as obvious, Netlist amended claims to add a negative limitation excluding CAS, RAS, and bank-address signals as DDR chip selects, and the examiner withdrew the rejection.
- Inphi appealed to the PTAB arguing the negative limitation lacked written-description support under 35 U.S.C. § 112, para. 1 (pre-AIA) because the specification did not provide a “reason to exclude.”
- The PTAB upheld the examiner, relying on the specification (Table 2, Figure 9A), incorporation of JEDEC DDR standards, and expert testimony to conclude the specification distinguishes chip-selects from CAS/RAS/bank-address signals.
- The Federal Circuit reviewed the Board’s factual findings for substantial evidence and legal conclusions de novo, and affirmed the PTAB: the specification sufficiently conveyed a reason to exclude the listed signals.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether a negative claim limitation excluding CAS, RAS, and bank-address signals satisfies written-description under § 112, ¶1 | Inphi: Santarus requires an express reason to exclude (advantage/disadvantage) and the specification lacks such a reason | Netlist: Proper description of alternative features (distinguishing signals) plus JEDEC incorporation and unrebutted expert testimony supplies a reason to exclude | Court: Affirmed PTAB — properly described alternative features can provide the “reason to exclude”; substantial evidence supports disclosure distinguishing CS from CAS/RAS/BA |
Key Cases Cited
- Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344 (Fed. Cir. 2012) (negative claim limitations need the specification to "describe a reason to exclude")
- In re Johnson, 558 F.2d 1008 (C.C.P.A. 1977) (applicant may explicitly exclude alternatives recited in specification)
- In re Bimeda Research & Dev. Ltd., 724 F.3d 1320 (Fed. Cir. 2013) (specification that forecloses a negative limitation fails written description)
- Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (en banc) (written-description standard: specification must show inventor possessed the claimed invention)
- In re Wright, 866 F.2d 422 (Fed. Cir. 1989) (written-description satisfied where essence of disclosure conveys necessary information)