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.”"

"T-Mobile asserted several causes of action2 that relate to the interpretation of “survives the EPR.” In its first two causes of action, T-Mobile contended that for a patent claim to “survive” the reexamination, it must retain a claim scope sufficient to support KAIFI’s previously asserted infringement case against T-Mobile. In particular, T-Mobile alleged that (1) KAIFI impermissibly altered the claim scope from what it had staked out during the district court litigation by arguing for materially different claim construction positions before the Patent Office and (2) KAIFI’s inequitable conduct during the EPR (by failing to disclose to the Patent Office its prior inconsistent claim-construction positions taken in district court) rendered the claims unenforceable. In its remaining causes of action, T-Mobile alleged frustration of purpose and lack of mutual assent. KAIFI counterclaimed for breach of contract and sought to recover the EPR payment. The parties then filed cross-motions for summary judgment."

"In determining whether we have appellate jurisdiction over the appeal of a district court judgment in a diversity case, we “look to whether the four part Gunn test is met on the basis of the cause of action pled and the facts as they existed at the time the complaint or any compulsory counterclaim is filed” . . . AIFI’s counterclaim: breach of contract. The parties focus on the first and third Gunn requirements, contending that the state law breach of contract claim necessarily raises a substantial patent law issue . . . Focusing on KAIFI’s breach of contract counterclaim, we do not see how determining whether any of the asserted patent claims “survive[d] the EPR” necessarily raises a patent law issue . . . Looking at the text of the Settlement Agreement, we do not see support for T-Mobile’s particularized understanding of “survives” . . . A patent law question is not a “necessary element” of the breach of contract claim, which might well succeed on the theory that the term is being used in this contract in its ordinary-language sense as applied to the plain formal results of the EPR process."

1. Disagrees with Appellant that the Board misconstrued “multiplexed signals” and therefore affirms the not unpatentable determination; and
2. In contrast, agrees with Cross-Appellant that the Board's determination as to other claims constituted an APA violation.

"Beginning with the intrinsic evidence, the claim language, “multiplexed signals,” indicates it is signals that are being multiplexed, not paths. This contradicts Apple’s insistence that multiplexing occurs whenever multiple data paths are combined into a single path." (emphasis in original)

"Because the Board appears to have overlooked Smart Mobile’s motivation to combine arguments with respect to claim 1 – which Apple also relied on for claim 17 – instead erroneously finding Smart Mobile made no such arguments, we cannot reasonably discern the Board’s basis for siding with Apple . . . While the Board’s failure to discuss the bottlenecking issue “does not alone establish that the Board did not consider it” . . . here the non-existent discussion coupled with the Board’s incorrect statement that Smart Mobile did not respond to Apple’s explanation, leads us to question whether the Board did consider bottlenecking."