Intel Corporation v. Qualcomm Incorporated ( 2021 )

Case: 20-1828 Document: 98 Page: 1 Filed: 12/28/2021
United States Court of Appeals
for the Federal Circuit
______________________
INTEL CORPORATION,
Appellant
v.
QUALCOMM INCORPORATED,
Cross-Appellant
______________________
2020-1828, 2020-1867
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2018-
01334, IPR2018-01335, IPR2018-01336.
______________________
Decided: December 28, 2021
______________________
THOMAS SAUNDERS, Wilmer Cutler Pickering Hale and
Dorr LLP, Washington, DC, argued for appellant. Also rep-
resented by DAVID LANGDON CAVANAUGH, CLAIRE HYUNGYO
CHUNG; JOSEPH F. HAAG, Palo Alto, CA.
JENNIFER L. SWIZE, Jones Day, Washington, DC, ar-
gued for cross-appellant. Also represented by ROBERT
BREETZ, DAVID B. COCHRAN, DAVID MICHAEL MAIORANA,
JOSEPH M. SAUER, Cleveland, OH; KELLY HOLT, New York,
NY; MATTHEW JOHNSON, JOSHUA R. NIGHTINGALE, Pitts-
burgh, PA; ISRAEL SASHA MAYERGOYZ, Chicago, IL.
______________________
Case: 20-1828 Document: 98 Page: 2 Filed: 12/28/2021
2 INTEL CORPORATION v. QUALCOMM INCORPORATED
Before PROST, TARANTO, and HUGHES, Circuit Judges.
TARANTO, Circuit Judge.
Qualcomm Inc. owns U.S. Patent No. 8,838,949, which
addresses multi-processor systems in which software
stored in non-volatile memory coupled to a first processor
is to be used by a second processor. The patent describes
and claims systems, methods, and apparatuses for effi-
ciently retrieving an executable software image from the
first processor’s non-volatile memory and loading it for use
by the second processor. Intel Corp. challenged all claims
of the ’949 patent as unpatentable for obviousness in three
inter partes reviews (IPRs) before the Patent and Trade-
mark Office. The Office’s Patent Trial and Appeal Board
consolidated the proceedings and issued a final written de-
cision holding that Intel had proved unpatentable claims
10, 11, 13–15, and 18–23, but not claims 1–9, 12, 16, and
17. Intel Corp. v. Qualcomm Inc., IPR2018-01334, 2020
WL 1286306, at *27 (P.T.A.B. Mar. 16, 2020) (Final Writ-
ten Decision). Intel appeals.
We hold first that Intel has adequately demonstrated
Article III standing to press this appeal. On the merits, we
hold that in the decision before us, the Board failed to tie
its construction of the phrase “hardware buffer” to the ac-
tual invention described in the specification. For that rea-
son, we vacate the Board’s decision as to claims 1–9 and 12
and remand for a new construction. As to claims 16 and
17, which are in means-plus-function format, we also va-
cate and remand. We conclude that the Board failed to de-
termine for itself whether there is sufficient corresponding
structure in the specification to support those claims and
whether it can resolve the patentability challenges despite
the (potential) indefiniteness of those claims.
Case: 20-1828 Document: 98 Page: 3 Filed: 12/28/2021
INTEL CORPORATION v. QUALCOMM INCORPORATED 3
I
A
The patent addresses a system with multiple proces-
sors, each of which must execute its own “boot code” to play
its operational role in the system. Such code must be
stored in non-volatile memory (e.g., flash memory or read-
only memory), since volatile memory is cleared when the
device powers down; and the boot code generally must be
transferred to its corresponding processor’s volatile
memory in order to be executed by that processor. ’949 pa-
tent, col. 1, lines 39–41. In a multi-processor system, one
possible design choice is to store the boot code for each pro-
cessor in its own separate non-volatile memory. Another
choice, to avoid the costs of multiple memories each ade-
quate for such storage, is to store the boot code for one pro-
cessor in the non-volatile memory of another processor,
permitting elimination or shrinkage of the non-volatile
memory of the first processor. Id., col. 1, line 60, through
col. 2, line 14.
The ’949 patent, titled “Direct Scatter Loading of Exe-
cutable Software Image from a Primary Processor to One
or More Secondary Processor in a Multi-Processor System,”
assumes the latter, shared-storage choice. It addresses the
problem, inherent in that choice, of loading the boot code
for a “secondary” processor (into its volatile memory) from
the non-volatile memory of a “primary” processor. Id., col.
2, line 58, through col. 3, line 2. It uses a “direct scatter
load” procedure to do so. “Scatter loading” refers to moving
a “binary multi-segmented” software image into scattered
parts (as opposed to one contiguous block) of the secondary
processor’s “system memory” before executing it. Id., col.
2, lines 14–22. The patent discloses a “direct” scatter load-
ing process, through which the segments of the software
image are transmitted “directly” from a “hardware buffer”
to their final locations in the secondary processor’s “system
memory.” Id., col. 2, lines 58–63.
Case: 20-1828 Document: 98 Page: 4 Filed: 12/28/2021
4 INTEL CORPORATION v. QUALCOMM INCORPORATED
Claims 1 and 2 are representative for the claim-con-
struction issue on appeal. They recite:
1. A multi-processor system comprising:
a secondary processor comprising:
system memory and a hardware
buffer for receiving an image
header and at least one data seg-
ment of an executable software im-
age, the image header and each
data segment being received sepa-
rately, and
a scatter loader controller configured:
to load the image header, and
to scatter load each received data segment based
at least in part on the loaded image header, di-
rectly from the hardware buffer to the system
memory;
a primary processor coupled with a
memory, the memory storing the executa-
ble software image for the secondary pro-
cessor; and
an interface communicatively coupling the
primary processor and the secondary pro-
cessor, the executable software image be-
ing received by the secondary processor via
the interface. 1
1 The indentation of the last two components of the
“multi-processor system” (the “primary processor” and the
“interface”) has been altered from the original to reflect the
Case: 20-1828 Document: 98 Page: 5 Filed: 12/28/2021
INTEL CORPORATION v. QUALCOMM INCORPORATED 5
2. The multi-processor system of claim 1 in which
the scatter loader controller is configured to load
the executable software image directly from the
hardware buffer to the system memory of the
secondary processor without copying data be-
tween system memory locations on the second-
ary processor.
Id., col. 12, line 60, through col. 13, line 16 (emphases
added).
Claim 16 is relevant to the means-plus-function issue
on appeal. It recites:
16. An apparatus comprising:
means for receiving at a secondary processor, from
a primary processor via an inter-chip communica-
tion bus, an image header for an executable soft-
ware image for the secondary processor that is
stored in memory coupled to the primary processor,
the executable software image comprising the im-
age header and at least one data segment, the im-
age header and each data segment being received
separately;
means for processing, by the secondary proces-
sor, the image header to determine at least one lo-
cation within system memory to which the
secondary processor is coupled to store each data
segment;
means for receiving at the secondary processor,
from the primary processor via the inter-chip com-
munication bus, each data segment; and
fact that they are parts of the multi-processor system, not
parts of the secondary processor.
Case: 20-1828 Document: 98 Page: 6 Filed: 12/28/2021
6 INTEL CORPORATION v. QUALCOMM INCORPORATED
means for scatter loading, by the secondary pro-
cessor, each data segment directly to the deter-
mined at least one location within the system
memory, and each data segment being scatter
loaded based at least in part on the processed im-
age header.
Id., col. 14, lines 17–37 (emphases added).
B
In 2017, Qualcomm initiated actions against Apple Inc.
(not party to this appeal) in district court and at the Inter-
national Trade Commission (ITC), alleging that Apple in-
fringed the ’949 patent (and other patents) by making,
selling, and using iPhone models that incorporated base-
band processors made by Intel. See J.A. 6233. Qualcomm’s
infringement theory identified the Intel baseband proces-
sors as the “secondary processors” of the ’949 patent and
pointed to “Intel design documents that describe how the
Intel baseband processors are integrated into the iPhones.”
See J.A. 6262, 6264. In 2019, Qualcomm and Apple settled
all litigation worldwide between the two companies, and
Qualcomm agreed to license the patents to Apple for six
years (and two additional years if Apple wished). J.A.
6084, 6210. Later in 2019, Apple acquired “the majority of
Intel’s smartphone modem business” (including its produc-
tion of baseband processors), J.A. 6088, though Intel con-
tinues to supply pre-acquisition versions of its baseband
processors to Apple and another customer, J.A. 6204.
Meanwhile, in 2018, Intel petitioned the Board for
three inter partes reviews, each petition covering various
claims of the ’949 patent and together covering all. After
consolidating the reviews, the Board issued a final written
decision. The Board ruled that Intel had proved the un-
patentability of claims 10, 11, 13–15, and 18–23, but Qual-
comm, despite filing a cross-appeal to raise the issue, no
longer challenges that ruling. The Board also ruled that
Intel had failed to prove the unpatentability of the
Case: 20-1828 Document: 98 Page: 7 Filed: 12/28/2021
INTEL CORPORATION v. QUALCOMM INCORPORATED 7
remaining claims: (a) independent claim 1 and its depend-
ent claims 2–9, plus claim 12 (depending on independent
claim 10); and (b) independent claim 16 and its dependent
claim 17. See Final Written Decision, at *27. Intel appeals
those losses.
The Board’s determination upholding claims 1–9 and
12 turned on the construction of the claim phrase “hard-
ware buffer.” No party put forward an explicit construction
of that term until Qualcomm’s patent owner response, in
which Qualcomm proposed to construe the phrase to mean
“a buffer within a hardware transport mechanism that re-
ceives data sent from the primary processor to the second-
ary processor.” J.A. 4224. In reply, Intel argued that
“‘hardware buffer’ should be given its ordinary meaning of
‘a buffer implemented in hardware.’” J.A. 4322. In sur-
reply, Qualcomm defended its proposed construction but
also advanced an alternative construction, “a buffer that is
not allocated by the secondary processor.” J.A. 4397. Qual-
comm explained: “In the ’949 patent, the hardware buffer
is a permanent buffer within the hardware transport mech-
anism, in contrast to a temporary buffer in system memory
that is allocated by the secondary processor at run time for
this purpose.” Id. (cleaned up).
The Board rejected both Qualcomm’s original construc-
tion, which referred to “a hardware transport mechanism,”
and Intel’s “ordinary meaning” construction, “a buffer im-
plemented in hardware.” Final Written Decision, at *5–6.
Instead, the Board agreed with Qualcomm that “the ’949
patent does differentiate disclosed loading techniques from
known prior art techniques that use temporary buffers”
and concluded that “the ‘hardware buffer’ limitations . . .
‘should not be read so broadly as to encompass’ the use of a
temporary buffer.” Id. at *7 (quoting SciMed Life Systems,
Inc. v. Advanced Cardiovascular Systems, Inc., 242 F.3d
1337, 1343 (Fed. Cir. 2001)).
Case: 20-1828 Document: 98 Page: 8 Filed: 12/28/2021
8 INTEL CORPORATION v. QUALCOMM INCORPORATED
That construction, the Board concluded, was disposi-
tive of the prior-art challenges to claims 1–9 and 12. Intel
had argued that the required “hardware buffer” was taught
by the “intermediate storage area” disclosed in its principal
prior-art reference (Svensson, U.S. Patent No. 7,356,680).
But because Svensson’s “intermediate storage area” was
“reserved at runtime,” the Board determined, it was a tem-
porary buffer and thus not a “hardware buffer.” Id. at *23–
24.
As to claims 16 and 17, the Board ruled that Intel had
failed to show unpatentability because Intel had not met
its burden of identifying sufficient structure corresponding
to two means-plus-function terms in independent claim 16.
Claim 16 recites a “means for processing” and a “means for
scatter loading.” Id. at *7–8. In IPR2018-01335, Intel’s
petition identified those phrases as means-plus-function
limitations and offered the same constructions for them
that Qualcomm had offered in prior ITC litigation. In its
institution decision, the Board wrote that it “ha[d] ques-
tions as to the sufficiency of [Intel’s] identified structures”
for the two terms. J.A. 5160. But because the petition met
the standard for institution on claims 10–15, the Board in-
stituted review on claims 16 and 17 as well, suggesting that
the parties “address the constructions of the mean-plus-
function limitations in claim 16” and “the impact that a de-
termination that the specification of the ’949 patent does
not provide adequate corresponding structure for the re-
cited functions should have on this proceeding and any fi-
nal written decision.” J.A. 5161.
After institution, Qualcomm argued in its patent owner
response that the means-plus-function terms in claim 16
“do not need to be construed in order for the Board to reach
its Final Written Decision” because “[n]one of the argu-
ments Qualcomm makes . . . to distinguish the prior art re-
quires construction of these limitations,” J.A. 4226, but
also argued that constructions Intel had proposed (the
same ones Qualcomm had previously proposed in the ITC
Case: 20-1828 Document: 98 Page: 9 Filed: 12/28/2021
INTEL CORPORATION v. QUALCOMM INCORPORATED 9
proceeding) were sufficient. In reply, Intel did not defend
as correct the structure it had identified in its petition; in-
stead, it said, “Upon consideration of the Board’s articu-
lated concerns, [Intel] agrees that the ’949 specification
fails to disclose sufficient structure to perform the recited
functions.” J.A. 4325. Intel also agreed with Qualcomm
that the Board could address the patentability of claim 16
without construing the means-plus-function limitations.
J.A. 4325–26. In sur-reply, Qualcomm pointed out that In-
tel had “change[d] its position” about the sufficiency of the
structure in the specification; and Qualcomm argued,
“[S]hould the Board maintain its position that the specifi-
cation does not disclose corresponding structure for the
functions, then this precludes the Board from finding that
claim 16 is unpatentable.” Patent Owner Sur-Reply at 14–
15, Intel Corp. v. Qualcomm Inc., IPR2018-01334, Paper
No. 25 (P.T.A.B. Nov. 8, 2019).
In its final written decision, the Board accepted Intel’s
position that “‘the ’949 specification fails to disclose suffi-
cient structure to perform the recited functions’ for two of
the means-plus-function limitations.” Final Written Deci-
sion, at *7–8, *26. While acknowledging that both parties
agreed that the Board should assess the patentability of
claims 16 and 17 even if it concluded that there was insuf-
ficient corresponding structure for the functions, the Board
concluded, “Because [Intel] has not met its burden under
our Rules to show structure corresponding to the claimed
function to which we can compare the prior art’s disclosure,
we determine [Intel] has not shown, by a preponderance of
the evidence, that [claims 16 and 17] are unpatentable un-
der 35 U.S.C. § 103(a) as obvious.” Id. at *26.
Intel timely appealed. We have statutory jurisdiction
under 28 U.S.C. § 1295(a)(4)(A) and 35 U.S.C. §§ 141(c),
319. Qualcomm moved to dismiss the appeal, arguing that
Intel lacks Article III standing because Qualcomm had not
sued or threatened to sue Intel for infringing the ’949 pa-
tent. Apple then moved to intervene in the appeal. We
Case: 20-1828 Document: 98 Page: 10 Filed: 12/28/2021
10 INTEL CORPORATION v. QUALCOMM INCORPORATED
denied both motions, directing Qualcomm and Intel to ad-
dress standing in their merits briefs and permitting Apple
to move to file an amicus brief. Apple did so, but its pro-
posed brief only repeated its argument that it should be
joined as a party, so we denied the motion.
II
We begin by addressing the jurisdictional standing
question, and we arrive at the same conclusion this panel
has reached today in Intel Corp. v. Qualcomm Inc., No. 20-
1664 (Fed. Cir. Dec. 28, 2021). Here, as there, Intel has
engaged in activity that has already given rise to an in-
fringement suit by Qualcomm. J.A. 6214–19 (ITC); J.A.
6239–43 (district court); see also Grit Energy Sols., LLC v.
Oren Techs., LLC, 957 F.3d 1309, 1319 (Fed. Cir. 2020).
And Qualcomm has not disputed that, in those proceed-
ings, it identified an Intel product as the “secondary pro-
cessor” of the ’949 patent. Intel Opening Br. 49–50; see also
J.A. 6256–57, 6261–62, 6272–73. Thus, for the same rea-
sons as in our companion case, “Intel’s risks transcend
mere conjecture or hypothesis.” Intel, No. 20-1664, slip op.
at 7. That is so even though Intel has only shown that it
manufactures the claimed “secondary processor” of the ’949
patent’s claimed inventions, not all the components re-
quired by the claims, given the centrality of that compo-
nent to the claims, the possibility of direct infringement
suits based on product testing, and the possibility of indi-
rect infringement suits based on at least inducement. See
JTEKT Corp. v. GKN Auto. Ltd., 898 F.3d 1217, 1221 (Fed.
Cir. 2018) (“IPR petitioners need not concede infringement
to establish standing to appeal.”). We therefore find that
Intel has standing and proceed to consider the merits of its
appeal.
Case: 20-1828 Document: 98 Page: 11 Filed: 12/28/2021
INTEL CORPORATION v. QUALCOMM INCORPORATED 11
III
A
We begin with the claim-construction issue presented
respecting claims 1–9 and 12. Claim construction is ulti-
mately a question of law, decided de novo on review, as are
the intrinsic-evidence aspects of a claim-construction anal-
ysis. See, e.g., Data Engine Techs. LLC v. Google LLC, 10
F.4th 1375, 1380 (Fed. Cir. 2021). But we review any un-
derlying fact findings about extrinsic evidence, such as ex-
tra-patent usage, for substantial-evidence support when
the appeal comes from the Board. Compare Monsanto
Tech. LLC v. E.I. DuPont de Nemours & Co., 878 F.3d 1336,
1341 (Fed. Cir. 2018) (substantial-evidence review for
Board factual findings) with Teva Pharms. USA, Inc. v.
Sandoz, Inc., 574 U.S. 318, 331–32 (2015) (clear-error re-
view for district court factual findings related to claim con-
struction). Here, though there was some expert testimony
on the meaning of “hardware buffer,” the Board’s claim-
construction reasoning involved only intrinsic evidence
from the specification. See Final Written Decision, at *5–
7. We therefore review it de novo.
In the inter partes review proceedings before us,
brought before November 13, 2018, the Board’s claim-con-
struction task was to determine the “broadest reasonable
interpretation consistent with the specification.” PPC
Broadband, Inc. v. Corning Optical Commc’ns RF, LLC,
815 F.3d 747, 751 (Fed. Cir. 2016); see also Personalized
Media Commc’ns, LLC v. Apple Inc., 952 F.3d 1336, 1340
n.2 (Fed. Cir. 2020) (noting the change in Board regula-
tions beginning November 13, 2018). When applying that
standard, the Board is not limited to choosing the single
best interpretation when more than one is reasonable. But
it requires that any adopted interpretation be reasonable
in light of “general claim construction principles,” which
govern in district court. Microsoft Corp. v. Proxyconn, Inc.,
789 F.3d 1292, 1298 (Fed. Cir. 2015) (noting that the Board
Case: 20-1828 Document: 98 Page: 12 Filed: 12/28/2021
12 INTEL CORPORATION v. QUALCOMM INCORPORATED
may not “construe claims during IPR so broadly that its
constructions are unreasonable under general claim con-
struction principles”), overruled in another respect, Aqua
Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en
banc); see also In re Smith Int’l, Inc., 871 F.3d 1375, 1382
(Fed. Cir. 2017).
“[T]here is no magic formula or catechism for conduct-
ing claim construction.” Phillips v. AWH Corp., 415 F.3d
1303, 1324 (Fed. Cir. 2005) (en banc). Claim language and
the specification (written description) are the dominant
sources of interpretation, and prosecution history can mat-
ter to a lesser degree (though arguments based on prosecu-
tion history have not been made here). Id. at 1312–17; see
also World Class Tech. Corp. v. Ormco Corp., 769 F.3d
1120, 1123 (Fed. Cir. 2014); Proxyconn, 789 F.3d at 1298
(noting that even under the broadest-reasonable-interpre-
tation standard, prosecution history can matter). Of cen-
tral importance here, we have explained that “‘[u]ltimately,
the interpretation to be given a term can only be deter-
mined and confirmed with a full understanding of what the
inventors actually invented and intended to envelop with
the claim.’” Phillips, 415 F.3d at 1316 (quoting Renishaw
plc v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250
(Fed. Cir. 1998)). Understanding the concrete substance to
which the words used in the claim and the intrinsic evi-
dence refer is necessary because, “[i]n reviewing the intrin-
sic record to construe the claims, we strive to capture the
scope of the actual invention, rather than strictly limit the
scope of claims to disclosed embodiments or allow the claim
language to become divorced from what the specification
conveys is the invention.” Retractable Techs., Inc. v. Bec-
ton, Dickinson & Co., 653 F.3d 1296, 1305 (Fed. Cir. 2011).
Here, it is clear from the claim language that the claim
term at issue has meaning, but it is unclear what that
meaning is. There is no definition to be found in the intrin-
sic evidence. And the determination of that meaning (or
range of reasonable meanings) depends on understanding
Case: 20-1828 Document: 98 Page: 13 Filed: 12/28/2021
INTEL CORPORATION v. QUALCOMM INCORPORATED 13
what the intrinsic evidence makes clear is the substance of
the invention—what the inventor “intended to envelop,”
Phillips, 415 F.3d at 1316—an understanding that in some
cases is usefully clarified by expert testimony (as long as
that testimony is consistent with the intrinsic evidence),
see id. at 1318. But, we conclude, the Board did not do
enough to reach and articulate that understanding, and its
claim construction is therefore wanting.
The phrase “hardware buffer” appears in claims 1, 2, 8,
and 12 of the ’949 patent. We do not discern, and no party
has suggested, that “hardware buffer” has a clear, undis-
puted meaning in either ordinary English or in relevant
technical parlance. Nevertheless, we reach three conclu-
sions from the claim language.
First, because every buffer in our (physical) world is ul-
timately implemented on a physical device (i.e., hardware),
a “hardware buffer” must mean something more than just
a “buffer implemented in hardware,” as Intel urges, or else
the word “hardware” would be erased from the claims.
That consequence, while not inevitably disqualifying a con-
struction in every patent, is counter to an important prin-
ciple of interpretation, for patent claims as for statutes: “It
is highly disfavored to construe terms in a way that renders
them void, meaningless, or superfluous.” Wasica Finance
GmbH v. Continental Automotive Systems, Inc., 853 F.3d
1272, 1288 n.10 (Fed. Cir. 2017); see SimpleAir, Inc. v. Sony
Ericsson Mobile Commc’ns AB, 820 F.3d 419, 429 (Fed. Cir.
2016); Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358,
1362 (Fed. Cir. 2007); Phillips, 415 F.3d at 1314; Duncan
v. Walker, 533 U.S. 167, 174 (2001) (refusing to adopt a
statutory construction that “would render the word ‘State’
insignificant, if not wholly superfluous”); Salman Ranch
Ltd. v. United States, 573 F.3d 1362, 1374 (Fed. Cir. 2009)
(“A cardinal rule of statutory construction is that courts
should construe statutes so as to avoid rendering superflu-
ous any statutory language.” (cleaned up)). Here, the strik-
ing fact that Qualcomm, in its claim language, did not just
Case: 20-1828 Document: 98 Page: 14 Filed: 12/28/2021
14 INTEL CORPORATION v. QUALCOMM INCORPORATED
say “buffer,” but instead said “hardware buffer,” provides a
strong reason to avoid the disfavored result of rendering
the word “hardware” superfluous. 2 Second, because claim
1 requires both a “system memory” and a “hardware
buffer,” there must be some distinction between those two
concepts. Third, because claim 2 requires loading the exe-
cutable software image “directly from the hardware buffer
to the system memory of the secondary processor without
copying data between system memory locations on the sec-
ondary processor,” the meaning of “hardware buffer” re-
lates to the ability to move the software image “directly” to
the second processor’s system memory and to avoid “copy-
ing data between system memory locations.”
Those conclusions from the claim language advance the
claim-construction inquiry only so far. And they do not, on
their own, provide a concrete basis for a clarifying defini-
tion of “hardware buffer.” What is needed, then, is an anal-
ysis of the specification to arrive at an understanding of
what it teaches about what a “hardware buffer” is, based
on both how it uses relevant words and its substantive ex-
planations. 3 In this crucial respect, the Board fell short in
its analysis here, and we think the Board is better posi-
tioned than we are to correct the deficiencies so as to arrive
2 Though Intel asserts that the specification some-
times uses the word “hardware” in a redundant manner,
Intel Opening Br. at 31, the uses Intel identifies are not
instances of modifying the word “buffer,” and Intel does not
persuasively show why such uses are actually redundant
or, in any event, overcome the fact that the claims (in which
relevant readers expect more precise, less discursive draft-
ing than in the written description) recite “hardware
buffer,” not just “buffer.”
3 To date, the parties have not made substantial
claim-construction arguments about the prosecution his-
tory.
Case: 20-1828 Document: 98 Page: 15 Filed: 12/28/2021
INTEL CORPORATION v. QUALCOMM INCORPORATED 15
at the understanding needed to draw a confident conclu-
sion about the proper claim construction. We identify some
of the deficiencies without suggesting how, if at all, a
proper construction will be substantively different from the
limited, negative one (excluding “temporary” buffers) that
the Board adopted.
Although the Board correctly noted that the specifica-
tion describes prior art teaching of use of “temporary” buff-
ers, it did not explain precisely what “temporary” means or
how the patent-described prior-art use relates to the al-
leged invention. Final Written Decision, at *7. The Board
cited three passages from the ’949 specification (column 2,
lines 23–34; column 4, lines 43–47; and column 5, lines 31–
35) that mention the use of a temporary buffer in prior art
assertedly being improved by the invention here. But the
Board did not analyze exactly how the use of a hardware
buffer, as claimed by Qualcomm, would address the con-
cerns about the prior-art temporary buffers raised in those
passages.
Other seemingly significant characteristics of the
prior-art buffers (as described in the ’949 patent’s specifi-
cation) appear unrelated to their temporal character. Dis-
cussing prior art, the specification says that the prior-art
buffer “would be some place in system memory.” ’949 pa-
tent, col. 2, lines 31–34. That statement aligns with what
the claim language already makes clear—Qualcomm’s
“hardware buffer” is somehow different from “system
memory”—but does not clarify what exactly the difference
is. The specification also says that use of a referred-to
prior-art buffer would require “copying the data into a tem-
porary buffer in the modem processor RAM.” Id., col. 5,
lines 31–35. That statement advances the inquiry into the
proper claim construction, because it aligns with other
specification passages that support an understanding that
use of a “hardware buffer” relates to one of the key claimed
advances of the invention—the elimination of “extra
memory copy operations.” See id., col. 7, line 16 (“Zero Copy
Case: 20-1828 Document: 98 Page: 16 Filed: 12/28/2021
16 INTEL CORPORATION v. QUALCOMM INCORPORATED
Transport flow” (emphasis added)); id., col. 7, lines 27–30
(“Thus, aspects of the present disclosure avoid extra
memory copy operations, thereby improving performance
(e.g., reducing the time required to boot secondary proces-
sors in a multi-processor system).”); id., col. 9, lines 42–46
(“Accordingly, no extra memory copy operations occur in
the secondary processor in the above aspect. Thus, conven-
tional techniques employing a temporary buffer for the en-
tire image, and the packet header handling, etc., are
bypassed in favor of a more efficient direct loading pro-
cess.”).
As to what the seemingly important relationship be-
tween a “hardware buffer” and those characteristics is, we
have before us no adequate explanation. The Board’s ex-
planation does not clarify the contemplated concrete oper-
ations of a “hardware buffer” in this patent. It therefore
fails to clarify how a “hardware buffer,” as contemplated in
the specification, produces improved efficiency through “di-
rect loading” and avoiding “extra memory copy operations.”
Id., col. 9, lines 37–46. Nor does the Board’s analysis men-
tion the distinctions between “system memory” and “hard-
ware buffer” that are drawn both in the claim language and
in the specification.
What is needed in this case is a more substance-focused
analysis than is yet present, in the Board’s opinion or in
the present record (at least in the excerpts drawn to our
attention), of what the intrinsic evidence shows the as-
serted advance to be and how, concretely, the “hardware
buffer” relates to that advance. We do not exclude the pos-
sibility that the record should be expanded in order to ar-
rive at an adequate understanding at the substantive level.
The Board’s construction was based on what Qualcomm
proposed only in its sur-reply, so the Board did not benefit
from expert explanation of technical operations that might
bear on the merits of that construction and produce the
needed understanding.
Case: 20-1828 Document: 98 Page: 17 Filed: 12/28/2021
INTEL CORPORATION v. QUALCOMM INCORPORATED 17
The Board’s construction was entirely a negative
one—excluding “temporary” buffers. “Although there is no
per se rule against negative constructions,” Medicines Co.
v. Mylan, Inc., 853 F.3d 1296, 1308 (Fed. Cir. 2017) (cita-
tion omitted), which in some cases can be enough to resolve
the relevant dispute, the Board’s construction in this case
is inadequate. It is not clear what precisely constitutes a
“temporary buffer” as recited in the Board’s construction.
Compare Intel Opening Br. at 40 (positing that a tempo-
rary buffer must be both “allocated or reserved at runtime”
and “deallocated to be used for another purpose”), with
Qualcomm Resp. Br. at 48 (arguing that a buffer that is
“newly allocated each time the system is booted” is tempo-
rary). To resolve even that uncertainty requires the kind
of additional, substantive understanding discussed above,
which seems likely to support an affirmative construction
in place of the Board’s purely negative one.
Finally, we note two matters that would benefit from
attention on remand. In a trial transcript from the Qual-
comm-Apple litigation (a transcript that was before the
Board here), a named inventor of the ’949 patent testified
in some detail about the difficulty of “design[ing] [the] sys-
tem so the hardware could place the data right where it
needed to be.” Transcript of Jury Trial Day 2 (Vol. 2B) at
222, Intel Corp. v. Qualcomm Inc., IPR2018-01334, Exhibit
No. 2004 (P.T.A.B. Dec. 12, 2019). That testimony may
bear on the remand inquiry. Additionally, our cases some-
times speak of hardware and software implementations of
computer functions, reflecting a distinction that appears in
usage in the field. See Tomita Techs. USA, LLC v. Nin-
tendo Co., 681 F. App’x 967, 972 (Fed. Cir. 2017) (finding
that a “software implementation” of an image processing
function was not equivalent to a patent’s “hardware imple-
mentation” of that function); Texas Digital Systems, Inc. v.
Telegenix, Inc., 308 F.3d 1193, 1214–16 (Fed. Cir. 2002)
(recognizing the broad range encompassed by a construc-
tion as “any firmware, software and/or hardware” that
Case: 20-1828 Document: 98 Page: 18 Filed: 12/28/2021
18 INTEL CORPORATION v. QUALCOMM INCORPORATED
performs a certain function); Nazomi Commc’ns, Inc. v.
ARM Holdings, PLC, 266 F. App’x 935, 936 (Fed. Cir. 2008)
(considering a patent on a “hardware accelerator” that “sig-
nificantly speed[s] up the processing of Java bytecodes over
prior art systems that used software to perform the conver-
sion from stack-based instructions to register-based in-
structions”). Neither the Board nor the parties have
explained what if any bearing that usage may have on a
proper understanding of “hardware buffer” in claims 1–9
and 12 here.
The Board’s rejection of Intel’s challenge to those
claims rested on the determination that the Svensson ref-
erence did not disclose the claimed “hardware buffer,”
which in turn depended on the Board’s claim construction
of that phrase. Because that construction is inadequate
and must be reconsidered, we vacate the rejection of Intel’s
challenges to claims 1–9 and 12, and we remand for recon-
sideration of claim construction as discussed in this opin-
ion.
B
With respect to claims 16 and 17, there is no dispute
that claim 16 (and hence dependent claim 17) contains
terms that are in means-plus-function format governed by
35 U.S.C. § 112(f). In the IPR2018-01335 proceedings here,
after Intel agreed with the Board’s suggestion in the insti-
tution decision that two of the means-plus-function terms
in claim 16 were indefinite for lack of supporting structure,
the Board concluded that Intel’s statement necessarily
meant that Intel, as the petitioner, had not met its burden
to demonstrate the unpatentability of those claims. See Fi-
nal Written Decision, at *26. Intel challenges that merits
conclusion. We hold that the Board’s conclusion was error
and that a remand is required, because the Board did not
decide for itself whether required structure is present in
the specification or whether, even if it is not, the absence of
Case: 20-1828 Document: 98 Page: 19 Filed: 12/28/2021
INTEL CORPORATION v. QUALCOMM INCORPORATED 19
such structure precludes resolution of Intel’s prior-art chal-
lenges.
Under 35 U.S.C. § 318, as construed in SAS Institute,
Inc. v. Iancu, 138 S. Ct. 1348 (2018), the Board is obligated
to “issue a final written decision with respect to the patent-
ability of” every claim challenged by the petitioner. Id. at
1353. But that obligation does not mean that the Board
must reach a determination of the patentability of a claim
on the presented prior-art grounds if such a determination
is rendered impossible because of the indefiniteness of an
essential claim limitation. See Samsung Electronics Amer-
ica, Inc. v. Prisua Eng’g Corp., 948 F.3d 1342, 1353 (Fed.
Cir. 2020); cf. Anniston Mfg. Co. v. Davis, 301 U.S. 337, 355
(1937) (“We do not think that Congress was attempting to
require the impossible.”). In such a case, the statutory es-
toppel provision of 35 U.S.C. § 315(e) does not apply, be-
cause the problem of indefiniteness is one of the patentee’s
own making, not attributable to the challenger. Cochlear
Bone Anchored Solutions AB v. Oticon Med. AB, 958 F.3d
1348, 1359 (Fed. Cir. 2020) (citing Samsung, 948 F.3d at
1353 n.3). To avoid confusion going forward, the Board
should, in IPRs where that principle applies, clearly state
that the final written decision does not include a determi-
nation of patentability of any claim that falls within the
impossibility category.
Importantly, it is not always impossible to adjudicate a
prior-art challenge, one way or the other, just because some
aspect of a claim renders the claim indefinite. See Sam-
sung, 948 F.3d at 1355 (noting that indefiniteness “does not
necessarily preclude the Board from addressing the patent-
ability of the claims on section 102 and 103 grounds”). For
example, the indefiniteness of one limitation may not pre-
clude the Board from rejecting a challenge by finding that
another limitation is missing from the argued prior art and
its argued combinations and modifications. In the other
direction, if a claim limitation requires alternative limita-
tions A or B, and A is indefinite, but B is not, the Board
Case: 20-1828 Document: 98 Page: 20 Filed: 12/28/2021
20 INTEL CORPORATION v. QUALCOMM INCORPORATED
may well be able to determine that the argued prior art and
its argued combinations or modifications cover the B op-
tion, thus satisfying the A or B limitation. See Cochlear,
958 F.3d at 1359–60. The indefiniteness of a limitation
(here, a means-plus-function limitation) precludes a pa-
tentability determination only when the indefiniteness
renders it logically impossible for the Board to reach such
a decision.
The inter partes review scheme as a whole confirms the
limited character of the impossibility qualifier to the SAS
obligation. That scheme protects the interests not only of
the petitioner in securing a determination on the patenta-
bility of a claim, but other interests as well. It protects in-
terests of the patentee, as well as of the judicial system and
the agency, in diminishing duplication of adjudication bur-
dens and risks in specified respects. See, e.g., 35 U.S.C.
§ 315(b) (timing limit on seeking IPR once district court ac-
tion filed), § 315(e) (estoppel provision against other pro-
ceedings). And it reflects a public interest in the Board’s
answering the patentability questions, reflected in the
statutory authorization for the Board to decide an inter
partes review even after petitioners have withdrawn. 35
U.S.C. § 317.
The Board’s treatment of claims 16 and 17 here was
contrary to those principles. The Board simply accepted
Intel’s concession that the required structure for the
means-plus-function claim was missing. The Board did not
itself conclude that the prior-art analysis task was impos-
sible, and it could not so conclude here without determining
for itself that such structure was missing, a legal question
that is part of claim construction. See Noah Systems, Inc.
v. Intuit Inc., 675 F.3d 1302, 1311 (Fed. Cir. 2012)
(“Whether a claim complies with the definiteness require-
ment of 35 U.S.C. § 112 is a matter of claim construction
. . . .”). Nor did the Board decide whether it could resolve
the patentability dispute even if claim 16 is indefinite.
Contrary to Intel’s argument in this court, Intel Opening
Case: 20-1828 Document: 98 Page: 21 Filed: 12/28/2021
INTEL CORPORATION v. QUALCOMM INCORPORATED 21
Br. at 45, there is no proper basis at present for not reach-
ing the merits of the prior-art challenge to claims 16 and
17 or for declaring inapplicability of estoppel. At the same
time, contrary to Qualcomm’s argument in this court, Qual-
comm Resp. Br. at 50–51, the Board could not properly en-
ter a final written decision on the merits of the prior-art
challenges with estoppel effect, as the Board did not assess
those merits.
On remand, the Board must decide one or both of two
issues. One is whether it can resolve the prior-art chal-
lenge to the patentability of claims 16 and 17 despite the
potential indefiniteness of the means-plus-function terms.
The other is whether those terms are actually indefinite.
We express no view on which issue the Board should con-
sider first. If the Board determines both that there is in-
definiteness and that such indefiniteness renders it
impossible to adjudicate the prior-art challenge on its mer-
its, then the Board should conclude that it is impossible to
reach a decision on the merits of the challenge and so state
in its decision. See Samsung, 948 F.3d at 1358.
IV
For the foregoing reasons, we vacate the Board’s con-
struction of the term “hardware buffer,” its determination
that claims 1–9 and 12 were non-obvious over the prior art,
and its conclusion that claims 16–17 lacked sufficient cor-
responding structure in the specification, and we remand
for further proceedings consistent with this opinion.
The parties shall bear their own costs.
VACATED AND REMANDED