Inphi Corporation v. Netlist, Inc. No. 2015-1179 (Fed. Cir. 2015)

Written By: John Kirkpatrick

Appellant Inphi asserts that U.S. Patent No. 7,532,537 (’537 patent) is invalid because the negative claim limitation “and the chip selects of the first and second number of chip selects are DDR chip selects that are not CAS, RAS, or bank address signals” does not meet the written description requirement of 35 U.S.C. § 112, paragraph 1.  Specifically, Inphi argues that specification fails to provide a reason to exclude the negative limitation.  Santorus, Inc. v. Par Pham., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012).  The Court (O’MALLEY, Reyna, Chen) found substantial evidence to affirm the Patent Trial and Appeal Board’s (the Board) determination that the negative claim limitation is supported under §112, paragraph 1.     

“Whether a patent claim satisfies the written description requirement […] depends on whether the description ‘clearly allows[s] persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.”  Inphi Corporation at *9.  “We review factual findings of the Board for substantial evidence. […] Substantial evidence supports a finding that the specification satisfies the written description requirement when ‘the essence of the disclosure’ conveys the necessary information – ‘regardless of how it’ conveys such information.”  Id. at *8, emphasis removed.  

The issue is “whether properly describing alternative features - without articulating advantages and disadvantages of each feature – can constitute a ‘reason to exclude’” as described in Santorus.  Id. at *10.  The Court determined that a reason to exclude does require the specification to provide “a preference for the included signal(s) over the excluded signals (or alternatively a disadvantage of the excluded signals.”  Id. at *10.    Rather, the Court, citing Santorus, notes that “[i]f alternative elements are positively recited in the specification, they may be explicitly excluded in the claims.”  Id. at *11 (see also MPEP § 2173.05(i)).  Further, “[i]t is for the inventor to decide what bounds of protection he will seek.”  Id. at *12 quoting In re Johnson, 558 F.2d 1008, 101[8] (CCPA 1977).  Specifically, although the patent at issue in Santorus cited a disadvantage of the excluded subject matter, Santorus does not extend the existing jurisprudence as described in MPEP § 2173.05(i) and In re Johnson.  Rather, “the ‘reason’ required Santorus is provided, for instance, by properly describing the alternative features of the patented invention.”  Inphi Corporation at *12.  In the instant case, passages in the specification, including the incorporation of a standards document stating that the relevant signal types are distinct, distinguish between the signal types, including those excluded in the claim.  This, the Court concludes “makes it clear that there was substantial evidence that the ’537 patent possessed the negative claim limitation as of the filing date.”  Id. at *13.  Thus, the Court affirmed the Board’s finding of support for the negative limitation, held that Santarus did not create a “heightened written description standard for negative claim limitations, and that properly described, alternative features are sufficient to satisfy the written description standard […] for negative claim limitations.”  Id. at *14.

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