Disclosure Requirements for § 112, ¶6 Key to Level of Skill in the Art

Author:Mr David Jafari
Profession:McDermott Will & Emery

The U.S. Court of Appeals for the Federal Circuit recently upheld a summary judgment of non-infringement based on a license defense involving an industry standard. The Court also wrestled with the issue of whether a specification that fails to disclose specific structure corresponding to a functional limitation satisfies the disclosure requirement. Intel Corp. v. VIA Technologies, Inc., Case Nos. 02-1212, -1213 (Fed. Cir. February 14, 2003).

The patent at issue (the '291 patent) relates to "Fast Write" technology, an optional protocol for what is known as the accelerated graphics port (AGP) interface specification developed by Intel. The '291 patent specification describes how AGP permits graphics devices to communicate with the core logic without using the slower, peripheral interface component (PCI) bus. Intel licenses the AGP protocol to interested parties on a reciprocal, royalty-free basis, as a way of setting the industry standard for certain computer-chip specifications. The license covers any patent claims that "must be infringed in order to comply with" the standards set out in the AGP specification. VIA acquired an AGP license and conceded that its products practiced several claims of the '291 patent, but asserted that its activities were covered by the AGP cross-license agreement. Intel sued, asserting VIA's activities were outside the scope of the AGP license. VIA also cross-claimed for a declaratory judgment of invalidity of the '291 patent on the basis that the patent failed to disclose structure corresponding to the recited function in a "means-plus-function" claim element. The district court granted VIA's summary judgment of non-infringement, but did not find Intel's patent to be invalid.

The Federal Circuit upheld both rulings. The Federal Circuit found that the terms of the AGP license agreement were subject to more than one reasonable interpretation, i.e., that there was ambiguity in the agreement as to whether "Fast Write," an optional protocol, was covered by the license. The Federal Circuit held that "[w]hen a contract is ambiguous, the principle of contra proferentum … requires that the agreement be construed against the drafter who is solely responsible for its terms." Because Intel alone had drafted the non-negotiated license agreement, and the agreement was ambiguous as to whether it covered the "Fast Write" protocol, the Federal Circuit resolved the ambiguity against Intel.

The Federal Circuit also agreed with the district court...

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