Vacated Vacatur Terminates Termination

| Matthew FriedrichsJeremiah S. Helm, Ph.D.


Before Prost, Chen, and Stoll. Appeal from the Patent Trial and Appeal Board

Summary: Affirming the Board’s decision not to terminate case remanded under Arthrex I and upholding the Board’s claim construction.

Polaris Innovations Limited (“Polaris”) appealed the Patent Trial and Appeal Board’s finding of unpatentability regarding two petitions brought by NVIDIA Corporation. However, the Federal Circuit vacated and remanded in view of its decision in Arthrex I. On remand, Polaris and NVIDIA jointly moved for termination. While the motion was pending, the Supreme Court decided Arthrex II, vacating the Federal Circuit’s vacatur. In view of this, the Board denied the motion to terminate. With the Board’s initial determinations of unpatentability now before the Federal Circuit again, Polaris added an appeal of the denied motion to terminate.

On appeal, the Federal Circuit affirmed the PTAB’s decisions. Reviewing the Board’s decision not to terminate de novo, the Federal Circuit found because the Supreme Court’s decision in Arthrex II vacated the Federal Circuit’s vacatur, the Board had reached a final decision. Termination was, therefore, not required under Section 317 of Title 35. Moreover, Section 317(a) only requires termination with respect to the petitioner (NVIDIA). The Federal Circuit noted even if there was no final decision, the Board would have been within its discretion to proceed to a final written decision without a petitioner.

The Federal Circuit also affirmed the PTABs construction of terms from each of the two patents at issue. Reviewing claim construction de novo and underlying facts for substantial evidence, the Federal Circuit agreed “memory chips” can encompass both packaged and unpackaged dies. Likewise, the Federal Circuit agreed the broadest reasonable interpretation of “resource tag buffer” was “single buffer.” Finally, reviewing the Board’s findings regarding scope and content of the prior art for substantial evidence, the Federal Circuit found the Board’s conclusion that the prior art disclosed a “single buffer” adequately supported.

Editor: Paul Stewart