Inphi Corporation v. Netlist, Inc. , 805 F.3d 1350 ( 2015 )

United States Court of Appeals
for the Federal Circuit
______________________
INPHI CORPORATION,
Appellant
v.
NETLIST, INC.,
Appellee
______________________
2015-1179
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 95/001,381.
______________________
Decided: November 13, 2015
______________________
DAVID A. JAKOPIN, Pillsbury Winthrop Shaw Pittman
LLP, Palo Alto, CA, argued for appellant. Also represent-
ed by ROBERT M. FUHRER, McLean, VA.
MEHRAN ARJOMAND, Morrison & Foerster LLP, Los
Angeles, CA, argued for appellee. Also represented by
BRYAN LEITCH, BRIAN ROBERT MATSUI, Washington, DC.
______________________
Before O’MALLEY, REYNA, and CHEN, Circuit Judges.
2 INPHI CORPORATION v. NETLIST, INC.
O’MALLEY, Circuit Judge.
Netlist, Inc. (“Netlist”) is the assignee of U.S. Patent
No. 7,532,537 (“the ’537 patent”). Inphi Corporation
(“Inphi”) filed a request for inter partes reexamination1 on
June 9, 2010. The examiner rejected claims 1–9, 12–31,
and 34–44 as obvious in view of the prior art. In order to
overcome this rejection, Netlist amended its claims,
narrowing them. Thereafter, the examiner withdrew its
rejection of the claims and issued a final decision.
Inphi then filed a Notice of Appeal to the Patent Trial
and Appeal Board (“PTAB” or “the Board”), alleging,
among other things, that the amendment, which intro-
duced a negative claim limitation, failed to satisfy the
written description requirement of 35 U.S.C. § 112, para-
graph 1 (2006). 2 The Board issued a decision affirming
the examiner’s final decision declining to reject the rele-
vant claims. Inphi Corp. v. Netlist, Inc., No. 2013-009066,
2014 WL 187535 (P.T.A.B. Jan. 16, 2014). Inphi filed a
request for rehearing on February 18, 2014. The Board
denied Inphi’s request and affirmed its decision. Inphi
Corp. v. Netlist, Inc., No. 2013-009066, 2014 WL 41809431 The America Invents Act (AIA) repealed the pro-
visions authorizing inter partes reexaminations. Pub. L.
No. 112-29, § 6, 126 Stat. 284, 299–305 (2011). But the
pre-AIA provisions apply here because Inphi requested
the inter partes reexamination before the effective date of
the AIA. Id. § 6(c)(3)(C), 125 Stat. at 305.
2 Paragraph 1 of 35 U.S.C. § 112 was replaced with
newly designated § 112(a) by § 4(c) of the AIA and § 4(e)
of the AIA makes those changes applicable “to any patent
application that is filed on or after” September 16, 2012.
Pub. L. No. 112-29, § 4, 125 Stat. at 296–97. Because the
application resulting in the patent at issue in this case
was filed before that date, we refer to the pre-AIA version
of § 112.
INPHI CORPORATION v. NETLIST, INC. 3
(P.T.A.B. Aug. 13, 2014) (“Board Decision”). Inphi ap-
peals from this decision. Because the Board’s determina-
tion that the negative claim limitation met the
requirements of § 112, paragraph 1 is supported by sub-
stantial evidence, we affirm.
BACKGROUND
The ’537 patent, entitled “Memory Module with a Cir-
cuit Providing Load Isolation and Memory Domain Trans-
lation” has an application date of January 19, 2006. 3 The
invention relates to computer system memory modules,
which Netlist designs and manufactures. In particular,
the invention improves the performance and/or capacity of
the memory modules. ’537 Patent, col. 1, ll. 29–32.
Conventional computer systems, such as a desktop PC or
a laptop, are compatible with modular memory systems.
Users may simply insert a memory module into a slot or
socket in the motherboard of their personal computer.
The ’537 patent concerns random access memory (“RAM”),
which provides short-term storage of data for active
software programs. Greater performance and/or capacity
RAM leads, in general, to a better performing computer.
3 The ’537 patent is a continuation-in-part of Appli-
cation No. 11/173,175, filed on July 1, 2005 (now U.S.
Patent No. 7,289,386), which claims the benefit of U.S.
Provisional Application Serial No. 60/588,244, filed July
15, 2004 and which is a continuation-in-part of Applica-
tion No. 11/075,395, filed Mar. 7, 2005 (now U.S. Patent
No. 7,283,436), which claims the benefit of U.S. Provi-
sional Application Serial No. 60/550,668, filed Mar. 5,
2004, U.S. Provisional Application Serial No. 60/575,595,
filed May 28, 2004, and U.S. Provisional Application
Serial No. 60/590,038, filed July 21, 2004.
4 INPHI CORPORATION v. NETLIST, INC.
The memory module itself comprises a printed circuit
board, on which memory devices (also known as memory
chips) are mounted:
’537 Patent, Figure 16A. Figure 16A presents one side of
a printed circuit board, 460. The memory devices—410,
420—of which there can be up to eighteen, are shown
attached to the printed circuit board. The specification
discloses multiple memory device types, including “ran-
dom-access memory (RAM), dynamic random-access
memory (DRAM), synchronous DRAM (SDRAM), and
double-data-rate DRAM (e.g., SDR, DDR-1, DDR-2, DDR-
3).” Id. at col. 5, ll. 41–44.
The memory devices, therefore, can be of the Double
Data Rate (“dDDR”) Synchronous Dynamic RAM
(“SDRAM”) type. See id. at col. 36, ll. 28–31 (“In certain
embodiments, the memory module 400 is a 1-GB unbuff-
ered Double Data Rate (DDR) Synchronous Dynamic
RAM (SDRAM) high-density dual in-line memory module
(DIMM).”). At issue in this appeal is a negative claim
limitation Netlist introduced by amendment, limiting the
claimed chip selects to exclude three particular types of
INPHI CORPORATION v. NETLIST, INC. 5
signals (CAS, RAS, and bank-address signals). 4 Repre-
sentative claim 1, as amended, is as follows:
1. A memory module comprising:
a plurality of memory devices, each memory de-
vice having a corresponding load; and
a circuit electrically coupled to the plurality of
memory devices and configured to be electrically
coupled to a memory controller of a computer sys-
tem, the circuit selectively isolating one or more of
the loads of the memory devices from the comput-
er system, the circuit comprising logic which
translates between a system memory domain of
the computer system and a physical memory do-
main of the memory module, wherein the sys-
tem memory domain is compatible with a
first number of chip selects, and the physical
memory domain is compatible with a second
number of chip selects equal to twice the
first number of chip selects, wherein the
plurality of memory devices comprises dou-
ble-data rate (DDR) dynamic random-access
memory (DRAM) devices and the chip selects
of the first and second number of chip se-
lects are DDR chip selects that are not CAS,
RAS, or bank address signals.
4 DDR is an acronym for “double data rate,” which
means that data transfers occur on both a rising edge and
a falling edge of the waveform of a certain timing signal
for data transfers. CS is an acronym for “chip select,”
RAS is an acronym for “row address strobe,” and CAS is
an acronym for “column address strobe.” CS, RAS, CAS,
and bank address are each names for signals that direct
the actions of the memory chip.
6 INPHI CORPORATION v. NETLIST, INC.
Joint Appendix (“J.A.”) 1366 (emphasis added). While the
entire emphasized portion was added during reexamina-
tion, Inphi challenges only the underlined portion: “DDR
chip selects that are not CAS, RAS, or bank address
signals.” The examiner found the amendment sufficient
to overcome its obviousness rejections. The Board af-
firmed the examiner’s determination. Inphi contends, to
the contrary, that the negative claim limitation added by
amendment is not supported by the specification and thus
constitutes impermissible new matter in violation of 35
U.S.C. § 112, paragraph 1.
Inphi requested rehearing of the Board’s decision af-
firming the examiner. In its request, Inphi emphasized
this court’s decision in Santarus, Inc. v. Par Pharm., Inc.,
694 F.3d 1344, 1351 (Fed. Cir. 2012), which states that
“[n]egative claim limitations are adequately supported
when the specification describes a reason to exclude the
relevant limitation.” Inphi argued that “[w]hile the Board
gives lip service to the standard articulated in Santa-
rus . . . the Board also acknowledged that in this case
there is no such reason expressly articulated in the speci-
fication.” J.A. 2241.
The Board explained in its decision on Inphi’s request
for rehearing that, “the ’537 patent did not articulate
expressly a reason to exclude RAS and CAS signals . . . .”
Board Decision, 2014 WL 4180943, at *1. The Board
identified, however, three parts of the specification of the
’537 patent upon which it relied in finding that the nega-
tive claim limitation was reasonably supported: “(1)
consistency with [Joint Electron Device Engineering
Council (“JEDEC”)] standards; (2) the ’537 patent’s ex-
cluding RAS and CAS signals in Table 2; and (3) various
other passages from the ’537 patent [including Figure
9A] . . . .” Id.The JEDEC is a global standard setting body for the
microelectronics industry. The ’537 patent incorporates
INPHI CORPORATION v. NETLIST, INC. 7
by reference a JEDEC standards publication for DDR-1
memory devices, namely the JEDEC “Double Data Rate
(DDR) SDRAM Specification,” published February 2004
(“JESD79D”). J.A. 1866–1948. The incorporation is
provided in the description of Table 3A of the ’537 patent:
“Table 3A provides the numbers of rows and columns for
DDR-1 memory devices, as specified by JEDEC standard
JESD79D . . . incorporated in its entirety by reference
herein.” ’537 Patent, col. 22, ll. 28–32. The JEDEC
standard specifies that DDR signals (including CS, RAS,
CAS, and bank address signals) are distinct from each
other. See J.A. 1882 (depicting Truth Table 1a, a logic
table similar to Table 2 in the ’537 patent).
“Table 2 provides a logic table compatible with certain
embodiments . . . for the selection among ranks of memory
devices [] using gated CAS signals.” ’537 Patent, col. 18,
ll. 25–27. Table 2 distinguishes among the relevant
signals by providing separate columns for CS, RAS, and
CAS.
Figure 9A, which the Board references in its discus-
sion of “various other passages,” distinguishes chip select
signals (CS0, CS1), command signals (understood to in-
clude CAS and RAS signals), and bank address signals
(BA0-BAm) by displaying them on different signal lines in
Figure 9A. As the patent describes, “[t]he circuit 40
receives the two chip-select signals (CS0-CS1) and one
row/column address signal (An+1) from the computer
system. Both the circuit 40 and the register 230 receive
the bank address signals (BA0-BAm) and at least one
command signal (e.g., refresh, precharge, etc.) from the
computer system.” ’537 Patent, col. 17, ll. 2–7; see also id.at col. 16, ll. 62–66.
The Board found Inphi’s challenges to the first two
sources of evidence—the JEDEC standard and Table 2—
“unpersuasive.” Board Decision, 2014 WL 4180943, at *1.
In particular, the Board found that, “[a]t a minimum,
8 INPHI CORPORATION v. NETLIST, INC.
ordinarily skilled artisans would reasonably infer at least
an implicit reason to exclude [RAS and CAS signals]
based on their explicit exclusion in the context of [Table
2].” Id. Inphi’s request for rehearing failed to address the
“various other passages,” including Figure 9A. But in its
decision, the Board relied on these “various other passag-
es” that indicate that “chip selects are distinct from CAS,
RAS, and bank address signals.” Id. at *2.
Finally, the Board described the “[p]atent owner’s ref-
erence to JEDEC standards and [Inphi’s expert’s] unre-
butted testimony that ordinarily skilled artisans would
understand a DDR chip select to be exclusive of RAS,
CAS, and bank address signals” as “bolster[ing] support
for the negative limitation.” Id. at *2. Inphi appealed.
We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
This court reviews legal conclusions of the PTAB de
novo. In re Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004).
We review factual findings of the Board for substantial
evidence. In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir.
2000); Capon v. Eshhar, 418 F.3d 1349, 1351 (Fed. Cir.
2005). This is a deferential standard of review. See In re
Jolley, 308 F.3d 1317, 1320 (Fed. Cir. 2002) (“If the evi-
dence in record will support several reasonable but con-
tradictory conclusions, we will not find the Board’s
decision unsupported by substantial evidence simply
because the Board chose one conclusion over another
plausible alternative.”).
Substantial evidence supports a finding that the spec-
ification satisfies the written description requirement
when “the essence of the original disclosure” conveys the
necessary information—“regardless of how it” conveys
such information, and regardless of whether the disclo-
sure’s “words [a]re open to different interpretation[s].” In
re Wright, 866 F.2d 422, 424–25 (Fed. Cir. 1989) (citation
and internal quotation marks omitted); see also Falko-
INPHI CORPORATION v. NETLIST, INC. 9
Gunter Falkner v. Inglis, 448 F.3d 1357, 1365–66 (Fed.
Cir. 2006) (finding substantial evidence supported written
description based on “several passages in the [patentee’s]
application” and the unrebutted “testimony of [the pa-
tentee’s] expert,” which showed that skilled artisans
would understand the invention); Novozymes A/S v.
DuPont Nutrition Biosciences APS, 723 F.3d 1336, 1346
(Fed. Cir. 2013) (discussing the metaphor from In re
Ruschig, 379 F.2d 990, 995 (1967) that a disclosure should
“provide sufficient ‘blaze marks’ to guide a reader through
the forest of disclosed possibilities toward the claimed
compound”).
Whether a patent claim satisfies the written descrip-
tion requirement of 35 U.S.C. § 112, paragraph 1 depends
on whether the description “clearly allow[s] persons of
ordinary skill in the art to recognize that [the inventor]
invented what is claimed.” Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1562–63 (Fed. Cir. 1991) (internal quota-
tion marks omitted) (quoting In re Gosteli, 872 F.2d 1008,
1012 (Fed. Cir. 1989)).
[W]hatever the specific articulation, the test re-
quires an objective inquiry into the four corners of
the specification from the perspective of a person
of ordinary skill in the art. Based on that inquiry,
the specification must describe an invention un-
derstandable to that skilled artisan and show that
the inventor actually invented the invention
claimed.
Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc).
In particular, “[n]egative claim limitations are ade-
quately supported when the specification describes a
reason to exclude the relevant limitation.” Santarus, 694
F.3d at 1351.
10 INPHI CORPORATION v. NETLIST, INC.
At the heart of this appeal is whether the specification
of the ’537 patent provides a “reason to exclude” CAS,
RAS, or bank address signals that is sufficient to satisfy
the written description requirement embodied in Santa-
rus. In its briefs, Inphi argued that Santarus requires
“that the patentee describes a preference for the included
signal(s) over the excluded signals (or alternatively a
disadvantage of the excluded signals).” Inphi Reply Br. 6.
In other words that the specification identify the compar-
ative advantage of the material remaining after any
narrowing amendment. Id. During oral argument,
counsel for Inphi appeared to back away from this argu-
ment, suggesting that Santarus does not require listing
advantages or disadvantages to alternative signal types.
Oral Arg. at 02:14–03:45; 08:22–08:53, available at
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
15-1179.mp3. The question that remains is whether
properly describing alternative features—without articu-
lating advantages or disadvantages of each feature—can
constitute a “reason to exclude” under the standard
articulated in Santarus. We hold that it can.
The patent at issue in Santarus related to the treat-
ment of acid-caused gastrointestinal disorder. Santarus,
694 F.3d at 1350. This court found that the negative
claim limitation—“wherein the composition contains no
sucralfate”—is supported by the specification as required
by 35 U.S.C. § 112, paragraph 1. Id at 1350–51. In
support of the negative claim limitation, the specification
described that “sucralfate . . . [has] certain disadvantages
associated with [its] use. . . . Proton pump inhibitors such
as omeprazole represent an advantageous alternative to
the use of . . . sucralfate as a treatment for complications
related to stress-related mucosal damage.” Id. at 1350(emphasis added). And, further, that sucralfate “was
known to have occasional adverse effects.” Id. at 1350–
51. The specification, therefore, noted both that the
disclaimed element—sucralfate—has disadvantages and
INPHI CORPORATION v. NETLIST, INC. 11
that the claimed element—proton pump inhibitors such
as omeprazole—was advantageous.
In Santarus, the district court below held that “it is
inadequate that the specification states that [the] claimed
composition is ‘advantageous’ as compared with su-
cralfate . . . .” Id. at 1350. In reversing the district court,
the panel first noted that “the patentee is entitled” to
narrow the claims. Id. at 1351. The court continued:
The Manual of Patent Examining Procedure ex-
plains that claims may state the exclusion of al-
ternatives. See MPEP § 2173.05(i) (“If alternative
elements are positively recited in the specification,
they may be explicitly excluded in the claims.”).
For example, in In re Johnson, 558 F.2d 1008,
101[8] (CCPA 1977), the applicant narrowed the
claims to exclude the content of a lost interference
count, and the court observed that: “It is for the
inventor to decide what bounds of protection he
will seek.”
Negative claim limitations are adequately sup-
ported when the specification describes a reason to
exclude the relevant limitation. Such written de-
scription support need not rise to the level of dis-
claimer. In fact, it is possible for the patentee to
support both the inclusion and exclusion of the
same material. The claim limitation that the Phil-
lips formulations contain no sucralfate is ade-
quately supported by statements in the
specification expressly listing the disadvantages of
using sucralfate. The district court’s holding that
the ’772 patent claims are invalid on written de-
scription grounds is thus reversed.
Id. (emphases added). The meaning of this passage is the
central dispute between the parties. Inphi argues that
the phrase “reason to exclude” requires something more
than properly describing alternative features of the pa-
12 INPHI CORPORATION v. NETLIST, INC.
tented invention. Netlist, on the other hand, argues that
the written description requirement is satisfied when
alternative features are properly described. The Santarus
court found that the patent-at-issue’s express recitation of
(dis)advantages was sufficient to provide a reason to
exclude the claim limitation at issue. That court did not
hold, however, that such recitations were required to
satisfy the written description requirements of § 112,
paragraph 1 for negative claim limitations. Nor do we see
any reason to now articulate a new and heightened
standard for negative claim limitations. 5
When viewed in its proper context, Santarus simply
reflects the fact that the specification need only satisfy
the requirements of § 112, paragraph 1 as described in
this court’s existing jurisprudence, including through
compliance with MPEP § 2173.05(i) (“If alternative ele-
ments are positively recited in the specification, they may
be explicitly excluded in the claims.”) and In re Johnson,
558 F.2d at 1018 (“It is for the inventor to decide what
bounds of protection he will seek.”).
The “reason” required by Santarus is provided, for in-
stance, by properly describing alternative features of the
patented invention. See In re Johnson, 558 F.2d at 1019
(“The facts of the prosecution are properly presented and
relied on, under these circumstances, to indicate that
appellants are merely excising the invention of another, to
5 The dissent in Santarus incorrectly characterized
the “describe a reason” language in the majority as a “new
rule.” Id. at 1358–59. It is telling that both the majority
and dissent cite the same passages in In re Johnson and
MPEP § 2173.05. Compare id. at 1351, with id. at 1359.
These references are consistent with the Santarus re-
quirement that “the specification describe[] a reason to
exclude . . . .” Id. at 1351.
INPHI CORPORATION v. NETLIST, INC. 13
which they are not entitled, and are not . . . claiming ‘new
matter.’”).
That is not to say that in all cases, a patentee may ar-
bitrarily dissect its invention by amending the claims in
order to avoid the prior art. In one recent case, this court
found that if the specification directly forecloses the
negative claim limitation, it is invalid under § 112. See In
re Bimeda Research & Dev. Ltd., 724 F.3d 1320, 1322
(Fed. Cir. 2013) (affirming Board rejection of negative
claim limitation for lack of written description where
“[t]he specification . . . leaves no room for argument that
the inventor possessed a formulation that excludes only
[an antiinfective] while permitting the use of antibiotics”).
In this case, however, substantial evidence supports
the Board’s finding that the specification properly distin-
guishes the relevant signal types—CS, CAS, RAS, and
bank address. Indeed, the parties agree that the disclo-
sure in the ’537 patent distinguishes among the relevant
signal types, but simply disagree about whether that
distinction creates a “reason to exclude” that satisfies the
requirements of § 112, paragraph 1. Compare Inphi Op.
Br. 26 (“Thus, in effect, the Board—and Netlist’s attor-
ney’s—confused ‘distinguishment’ of various signals that
can be used as chip selects with ‘a reason to exclude’
certain signals over others as chip selects.”), with Netlist
Resp. Br. 27 (“This means that a DDR chip select signal is
not a CAS signal, a RAS signal, or a bank address signal.
That distinction ‘reasonably conveys’ a reason to ex-
clude, which provides substantial evidence to uphold the
Board’s decision.”). The Board’s review of the specifica-
tion makes it clear that there was substantial evidence
that Netlist possessed the negative claim limitation as of
the filing date, as is evidenced through the Board’s reli-
ance on the JEDEC standard, Table 2, and other various
passages in the specification, including Figure 9A.
14 INPHI CORPORATION v. NETLIST, INC.
We affirm the Board’s finding, as supported by sub-
stantial evidence, that the “original ’537 patent disclosure
reasonably conveys a reason to exclude the relevant
limitations.” Board Decision, 2014 WL 4180943, at *1.
We hold that Santarus did not create a heightened writ-
ten description standard for negative claim limitations
and that properly described, alternative features are
sufficient to satisfy the written description standard of
§ 112, paragraph 1 for negative claim limitations.
CONCLUSION
For the foregoing reasons, and because we find that
Inphi’s remaining arguments are without merit, we
conclude that the Board properly affirmed its previous
opinion upholding the examiner’s finding that the nega-
tive claim limitation at issue satisfied the standard for
written description under 35 U.S.C. § 112, paragraph 1.
Accordingly, the Board’s decision is affirmed.
AFFIRMED