PTAB Should Provide Adequate Reasoning and Evidence in Its Decision and Teaching Away Argument Requires More Than a General Preference
| August 26, 2020
ALACRITECH, INC. V. INTEL CORP., CAVIUM, LLC, DELL, INC.
July 31, 2020
Before Stoll, Chen, and Moore
Summary
The Federal Circuit reviewed the adequacy of the Patent Trial and Appeal Board’s (Board) obviousness findings under the Administrative Procedure Act’s (APA) requirement that the Board’s decisions be supported by adequate reasoning and evidence. The Federal Circuit agreed with Alacritech’s argument that the Board did not adequately support the finding. The Federal Circuit found no reversible error in the Board’s remaining obviousness determination. The Federal Circuit vacated in part and remanded the Board’s decision.
Background
Alacritech, Inc. owns the patent 8,131,880. Intel Corp., et al., (Intel) petitioned to the Board for inter partes review (IPR) of the patent ‘880. The Board’s final decisions found the challenged claims unpatentable as obvious. Alacritech appealed the Board’s obviousness decision for four independent claims.
The ‘880 patent relates to computer networking and is directed to a network-related apparatus and method for offloading certain network processing from a central processing unit (CPU) to an “intelligent network interface card.” Intel asserted that the challenged claims would have been obvious over Thia1 in view of Tanenbaum2. The Board agreed and held all of the challenged claims unpatentable as obvious in the final written decisions. On appeal in the Federal Circuit, one of the focus was on claim 41 reciting “a flow re-assembler disposed in the network interface” as follows:
| 41. An apparatus for transferring a packet to a host computer system, comprising: a traffic classifier, disposed in a network interface for the host computer system, configured to classify a first packet received from a network by a communication flow that includes said first packet; a packet memory, disposed in the network interface, configured to store said first packet; a packet batching module, disposed in the network interface, configured to determine whether another packet in said packet memory belongs to said communication flow; a flow re-assembler, disposed in the network interface, configured to re-assemble a data portion of said first packet with a data portion of a second packet in said communication flow; and a processor, disposed in the network interface, that maintains a TCP connection for the communication flow, the TCP connection stored as a control block on the network interface. |
Discussion
Alacritech argued that the Board’s analysis was inadequate to support its findings on claims 41-43. Independent claim 43 is similar to claim 41, but recites a limitation in the network interface with “a re-assembler for storing data portions of said multiple packets without header portions in a first portion of said memory.” The dispute was focused on where reassembly takes place in the prior art and whether that location satisfies the claim limitations. The alleged claims incorporate limitations that require reassembly in the network interface, as opposed to a central processor. Intel argued that “Thia . . . discloses a flow re-assembler on the network interface to re-assemble data portions of packets within a communication flow.” In response, Alacritech argued that “[n]either Thia nor Tanenbaum discloses a flow re-assembler that is part of the NIC.”
The Board recited some of the parties’ arguments and concluded that the asserted prior art teaches the reassembly limitations. Alacritech argued that the Board’s analysis did not adequately support its obviousness finding. The Federal Circuit reviewed the adequacy of the Board’s obviousness finding under the APA’s requirement that the Board’s decisions be supported by adequate reasoning and evidence. The Federal Circuit emphasized that the Board’s findings need not be perfect, but must be “reasonably discernable.” However, the Board failed to meet the requirement by explaining why it found those arguments persuasive. The Federal Circuit reasoned that the Board briefly recites two terse paragraphs from the parties’ arguments and, in doing so, “appears to misapprehend both the scope of the claims and the parties’ arguments.” Further, the Federal Circuit turned down Intel’s argument that it should prevail because the Board “soundly rejected” Alacritech’s arguments. But the Board’s rejection does not necessarily support the Board’s finding that the asserted prior art teaches or suggests reassembly in the network interface. The Board should meet the obligation to “articulate a satisfactory explanation for its action including a rational connection between the facts found and the choice made.” The Federal Circuit, therefore, vacated the portion of the Board’s decision.
Alacritech successfully kept the ball rolling due to the Board’s inadequate reasoning and evidence. However, Alacritech did not substantially weaken the obviousness determination, and its teaching away argument on Tanenbaum hit the wall. Tanenbaum suggests on protocols for gigabit networks that “[u]sually, the best approach is to make the protocols simple and have the main CPU do the work.” Such a statement did not disparage other approaches. As pointed out by the Federal Court, “Tanenbaum merely expresses a preference and does not teach away from offloading processing from the CPU to a separate processor.”
The Federal Circuit affirmed the Board’s finding of a motivation to combine Thia and Tanenbaum, explaining that “[a] reference that ‘merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into’ the claimed invention does not teach away.” (Meiresonne v. Google (Fed. Cir. March 7, 2017)) The proposition makes clear that a general preference cannot support teaching away argument. A proper teach away argument requires evidence that shows the prior art references would lead away from the claimed invention.
Takeaway
- The PTAB’s obviousness findings should meet the APA’s requirements to support its decisions with adequate reasoning and evidence.
- A proper teach away argument requires evidence that shows the prior art references would lead away from the claimed invention.
