Alacritech v Intel, Cavium, Dell

Alacritech, Inc. v. Intel Corporation, Cavium, LLC, Dell, Inc.

Nos. 2019-1467, 2019-1468 Fed. Cir. July 31, 2020 Before Circuit Judges Moore, Chen, and Stoll.

Alacritech appealed the Patent Trial and Appeal Board’s decisions holding certain claims of U.S. Patent No. 8,131,880 unpatentable as obvious. The Court held that the Board did not adequately support its finding that the asserted prior art combination teaches or suggests a limitation recited in claims 41-43 of the patent, but found no reversible error in the Board’s remaining obviousness determinations.

The claim limitations at issue require that reassembly of packets take place in the network interface, as opposed to a central processor. None of the parties disputed that reassembly is disclosed by the asserted prior art. The crux of the dispute was where reassembly takes place in the prior art and whether that location satisfies the claim limitations.The Board concluded that “data portions of packets are reassembled” in the claims and in the asserted prior art. The Board’s analysis did not acknowledge the crux of the dispute, or explain how the prior art teaches or suggests reassembly in the network interface.

The Court rejected Intel’s view that the rejection of certain arguments made by Alacritech supported the Board’s finding. Intel conceded that the Board did not discuss Alacritech’s arguments in detail regarding one of the references, but posited that “the substantial evidence standard” requires affirmance “so long as there is evidentiary support in the record, even if the support was not specifically cited by the Board.” The Court found this position to be “a fundamentally incorrect statement of the law.” Under the APA, the Federal Circuit’s review of a patentability determination is confined to “the grounds upon which the Board actually relied.”

Alacritech averred that one of the references teaches away from the combination of references. The Court stated that expressing a preference for an alternative invention is not teaching away where the reference does not criticize, discredit, or otherwise discourage investigation into the claimed invention. The Court affirmed the Board’s finding of motivation to combine the references. Alacritech sought a narrowing interpretation of other claims. The Court found that Alacritech provided no support its position beyond the language of the claims, and that “the plain claim language, on its own, does not preclude an operation code from being associated with more than one packet.”

Read more: Federal Bar member attorneys may access the full case summary by registered patent attorney B.C. “Bill” Killough in the August 2019 issue of Federal Circuit Case Digest.

B.C. Killough is a registered patent attorney based in Charleston, SC. On behalf of his clients, Bill has obtained more than 300 United States patents, participated in prosecuting more than 100 foreign patent applications and he has filed more than 1000 trademark applications with the US Patent and Trademark Offices.

Additionally, you may read the full opinion here.