"[Defendant] asserted that summary judgment was warranted because Viavi’s infringement contentions identified only the 11246 Filter, which had been released of any pre-May 1, 2020 infringement and that had not been manufactured or sold since May 1, 2020 . . . [Plaintiff] opposed the summary judgment motion . . . It contended that the scope of the case went beyond the 11246 Filter, even as that was the only filter included in the claim charts accompanying Viavi’s complaint. Further, Viavi contended it was entitled to reasonable discovery from PTOT so that it could obtain information about any of PTOT’s filters that were incorporated into the major company’s devices."

"In fact, as soon as Viavi finally purchased several of the major company’s devices, it discovered that the only non-Viavi filter being used in one of these devices was not the 11246 Filter . . . After learning this, Viavi even initiated a new action wherein it sued based only on Filter #25, not on the 11246 Filter. Therefore, Viavi’s own actions indicate that, with a more searching pre-suit investigation, it “would have not filed” the suit it ended up filing here."

1. "First, Netlist argues that the Board erred by determining that Ellsberry teaches data paths that are enabled “in accordance with a latency parameter,” as recited in limitation"; and
2. "Second, Netlist argues the Board erred by determining that Ellsberry teaches “enabl[ing]” a “data path,” as recited by limitations [1e] and [1f]"

"The Board’s reliance on Ellsberry’s teachings, as supported by the JEDEC standards, constitutes substantial evidence that Ellsberry teaches enabling data paths in accordance with a latency parameter."

"Netlist further argues that, even if the Board had substantial evidence to find that Ellsberry uses latency information to control data paths, the Board erred by using the ’537 patent, which was not part of Samsung’s petition ground, to supply the missing limitation of enabling the data paths at the required time to account for the buffer . . . According to Netlist, the Board’s explanation shows that it impermissibly expanded the role of the ’537 patent from mere evidence of the general skill in the art to that of a prior art reference. This would violate the restriction that the Board may not depart from the petition and find claims invalid on grounds “of [its] own design."

"[A]ny potential error was harmless because the Board alternatively found that Ellsberry alone, without relying on the ’537 patent, teaches adding one clock cycle to account for propagation delay through its switch ASICs"

"Netlist argues this paragraph [of the Ellsberry reference] does not teach enabling the claimed “data path” because Ports A and B that it refers to are located outside of the switch ASIC (i.e., the claimed buffer) instead of within the switch ASIC, as required by the claims." (emphasis in the original)

"[W]e see no clear error in the district court’s finding that disclosing the chemical name and formula of cabozantinib (L)-malate salt, as well as that the structure of the salt is crystalline, is an identification of the structural features possessed by members of the genus . . .The claims are no broader than the written description, as the claims require cabozantinib (L)-malate salt with a crystalline structure. Furthermore, while not dispositive of satisfaction of the written description requirement, the specification also discloses processes used to make the invention . . . multiple of the factors laid out in Ariad are met here (i.e., structure, formula, chemical name), and the district court’s findings are not clearly erroneous . . . the district court appropriately analogized this case to GSK, where we noted that “[d]escribing a complex of dutasteride and solvent molecules is an identification of ‘structural features commonly possessed by members of the genus that distinguish them from others,’ allowing one of skill in the art to ‘visualize or recognize the identity of the members of the genus.’”"

"AML therefore argues instead that, regardless of the district court’s power to reach the Rule 12(b)(6) eligibility ground after deeming venue improper, it nonetheless should have refrained from doing so . . . AML simply wants this court to confirm that the patent-ineligibility dismissal will not have preclusive effect."

"We reject AML’s request for what is essentially an advisory opinion on the preclusive effect that the district court’s judgment (and ours) might have in future cases. The usual rule is that “the precise [preclusive] effect of the judgment[] in [the instant] case will necessarily have to be decided in any . . . later action[] that may be brought.”"