Federal Circuit Affirms PTAB’s Rejection of Claims Despite Earlier CAFC Validation

Knowles Elecs. LLC v. Cirrus Logic, Inc., No. 16-2010, 2018 (Fed Cir. Mar. 1, 2018) (Before Newman, Wallach, and Chen, Circuit Judges) (Opinion for the court, Wallach, Circuit Judge).

The ’231 patent, owned by Knowles Electronics, LLC (“Knowles”), discloses microelectromechanical system (“MEMS”) packages which shield a microphone from an interference signal or an environmental condition. The original petition for inter partes reexamination of the patent was filed by three third-party requesters, two of which dropped out of the appeal. The third, Wolfson Microelectronics plc. (“Wolfson”), was replaced by Cirrus Logic, Inc. and Cirrus UK Ltd. (“the Cirrus entities”) as real parties-interest.

The Examiner rejected claims 1-4 of the ‘231 patent for anticipation and proposed claims 23-27 for lack of an adequate written description. The Patent Trial and Appeal Board (“PTAB”) affirmed. Knowles appealed, and the Federal Circuit affirmed.

First, the PTAB properly construed the term “package” in claims 1-4 of the ‘231 patent. The PTAB found that “package” “may refer to chip assemblies that possess any type of second-level connection mechanism” without limiting the “connection” to one that uses a “mounting mechanism” as argued by Knowles.  Neither claims 1-4 nor the patent specification limited the type of connection required to form the MEMS package. Furthermore, no prosecution history disclosures were identified to help construe the term.

Because the claims and specification did not offer a definition for “package” that would lead to the proffered interpretation, the PTAB properly considered extrinsic evidence, including dictionary and treatise references describing common categories for mounting in MEMS to form second-level connections. The qualifying language used in many of these references implied that second-level connections in circuit boards may not be properly limited to the types of mounts argued by Knowles. There was no error in the PTAB’s determination that the “package” definition was not limited to surface or through-hole mounting.

Second, substantial evidence supported the PTAB’s finding that the ’231 specification did not provide adequate written description to allow an ordinary artisan to recognize that the inventor was in possession of proposed claims 23-27. They recited a MEMS package wherein the solder pads were “configured to mechanically attach and electrically connect the package to a surface of an external printed circuit board using a solder reflow process.” The specification did not require solder pads to connect to the circuit board by any particular process. It disclosed only a broad genus – solder pads capable of being connected to a circuit board. Given the at most passing reference to solder pads in the specification and the conflicting views of the artisan’s knowledge, the PTAB reasonably found that artisans would not have recognized that the inventor possessed solder pads “configured to” connect to a printed circuit board through a reflow process.

Finally, because Knowles challenged the entry of the Cirrus entities as proper parties only after the PTAB issued its decision on appeal, this argument was waived.

Newman, Circuit Judge, dissenting

Although the majority opinion was silent with respect to a prior claim construction by the Federal Circuit relating to the patent, Judge Newman wrote in dissent that the majority’s failure to address the issue (which was briefed) allowed for a final claim construction by the Federal Circuit to for the first time lack preclusive effect. Judge Newman wrote:

[T]he PTAB stated that “precedent makes clear that the USPTO is not bound in reexamination proceedings by claim constructions produced by a court.” PTAB Op. *12. While precedent has previously addressed the effect of a prior district court claim construction on a subsequent PTO proceeding, never before has a final claim construction by this court been held not to be preclusive.

Here the claim construction was decided by the Federal Circuit, as a matter of law, in MEMS Technology Berhad v. International Trade Commission, 447 F. App’x 142 (Fed. Cir. 2011). No equitable or due process exception to issue preclusion is here asserted; thus preclusion should apply. The majority declines to discuss this question, which is presented on this appeal. By this silence, my colleagues are reinforcing this incorrect position. I respectfully dissent.

Take Away

Lack of specific limiting language in the patent claims and specifications leaves one susceptible to patentability challenges for anticipation as well as insufficient written description. 

[Troutman-Ad]

[Troutman-About]