Client Alert
PTAB Must Address the Core Issue of the Dispute Between the Parties to Satisfy the APA
Client Alert
PTAB Must Address the Core Issue of the Dispute Between the Parties to Satisfy the APA
September 17, 2020
Alacritech, Inc. v. Intel Corp., 2019-1467, 2019-1468 (Fed. Cir. July 31, 2020)
An alleged infringer filed an IPR against three claims of a patent regarding offloading certain processing tasks from a host computer’s general-purpose CPU to a specialized “intelligent network interface card.” One of the tasks that can be offloaded is the reassembly of packets of data received by the host computer from the network. The Patent Trial and Appeal Board (PTAB) ruled that prior art rendered the claims obvious and unpatentable.
The Federal Circuit partially reversed the PTAB, holding that the PTAB did not address the central issue in the case and therefore the court could not reasonably discern whether the PTAB had made a correct decision. The crux of the parties’ dispute was where the data was reassembled in the prior art and whether that location satisfied the claim limitations. The claims required the reassembly to take place in the network interface, and not a central processor. But the Federal Circuit held that the PTAB’s analysis did “not acknowledge that part of the parties’ dispute, much less explain how the prior art teaches or suggests reassembly in the network interface.” Because the PTAB did not, the Administrative Procedure Act required the Federal Circuit to set aside the PTAB’s judgment on these three claims because the judgment lacked an evidentiary basis. The court affirmed the PTAB’s opinion that another two claims were obvious and unpatentable.
View the full opinion here.