Apple Inc. v. Zentian Ltd. — PTAB Added an Unclaimed Chip-Fabrication Requirement

Background

Apple petitioned for inter partes review of Zentian speech-processing patent claims requiring a calculating apparatus and acoustic-model memory fabricated on one integrated circuit. The PTAB concluded Apple had not shown the challenged claims unpatentable.

The Court’s Holding

The Federal Circuit vacated and remanded. The Board needed to address whether the cited memory could hold the abbreviated acoustic model. It also erred by requiring proof that a skilled artisan could personally fabricate the combined circuit without assistance. The claims required the components to be on one integrated circuit, not fabrication by the hypothetical artisan, and the artisan could obtain a prefabricated circuit.

Key Takeaways

Obviousness asks whether the claimed arrangement would have been obvious, not whether one skilled artisan personally could manufacture every component. The Board may not import a fabrication step absent claim language requiring it.

Why It Matters

The ruling prevents an extra manufacturing-capability hurdle from shielding otherwise obvious system claims and sends the record back for the Board to resolve the actual memory-capacity question.