Inphi Corp. v. Netlist, Inc., No. 15-1179 (Fed. Cir. 2015)
Annotate this CaseNetlist’s 537 patent, entitled “Memory Module with a Circuit Providing Load Isolation and Memory Domain Translation” has a 2006 application date and relates to computer system memory modules, which Netlist designs and manufactures. The invention improves the performance or capacity of the memory modules. Inphi sought inter partes reexamination in 2010. The examiner rejected claims 1–9, 12–31, and 34–44 as obvious in view of the prior art. To overcome the rejection, Netlist amended its claims, narrowing them. Thereafter, the examiner withdrew the rejection of the claims and issued a final decision. The Patent Trial and Appeal Board affirmed, rejecting an argument that the amendment, which introduced a negative claim limitation, failed to satisfy the written description requirement of 35 U.S.C. 112, paragraph 1. The Federal Circuit affirmed, holding that the Board’s determination that the negative claim limitation met the requirements of section 112, paragraph 1 was supported by substantial evidence; properly described, alternative features are sufficient to satisfy the written description standard of section 112, paragraph 1 for negative claim limitations.
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