Precedential Federal Circuit Opinions   

1.  VLSI TECHNOLOGY LLC v. INTEL CORPORATION [OPINION]  (2021-1826, 11/15/22) (Chen, Bryson, Hughes)

Bryson, J. Affirming in part, reversing in part, and remanding unpatentability of challenged claims in IPR proceedings. First, the Court rejected patent owner’s argument that the Board failed to acknowledge and give proper weight to the district court’s claim construction for the term “force region.” The Board was clearly well aware of that construction. In addition, that construction did not resolve the fundamental disagreement between the parties as to the proper construction. Because the parties’ positions before the Board made it clear that the Board needed to go beyond the district court’s claim construction to resolve the parties’ dispute, it was unnecessary for the Board to acknowledge the district court’s claim construction. Second, the Court found the Board’s construction of “used for electrical interconnection not directly connected to the bond pad” too broad and should instead require the interconnect layers to be capable of carrying electricity or be connected to active circuitry. The use of the words “being used for” in the claim imply that some sort of actual use of the metal interconnect layers to carry electricity is required.  

WilmerHale represented Appellee, Intel Corporation.

2.  CUPP COMPUTING AS v. TREND MICRO INC. [OPINION]  (2020-2262, 11/16/22) (Dyk, Taranto, Stark)

Dyk, J. Affirming unpatentability of claims challenged in IPR proceedings because Patent Owner’s attempt to narrow claim scope by disclaimer failed. The claims recited a mobile device processor “different than” a security system processor which Patent Owner argues requires the processors to be remote from one another. First, any disclaimer during prosecution of the patent must be clear and unmistakable.  Patent Owner’s arguments during prosecution could reasonably interpreted as requiring “different than” to mean distinct processors, not necessarily remote from, and thus does not rise to the level of disclaimer. Second, any disclaimer during IPR proceedings is binding in later proceedings, whether before the PTO or in court, but not binding in the IPR proceeding in which it is made. To find disclaimers binding in the same proceeding they are made would nullify the IPR amendment process.