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. 

About Troutman Sanders and the Federal Circuit Review

Founded in 1897, Troutman Sanders LLP is an international law firm with more than 650 lawyers practicing in 16 offices located throughout the United States and Asia. Each week, partners Joe Robinson and Bob Schaffer, succinctly summarize the preceding week of Federal Circuit precedential patent opinions. They provide the pertinent facts, issues, and holdings. This Review allows you to keep abreast of the Federal Circuit’s activities – important for everyone concerned with intellectual property. IPWatchdog.com is pleased to publish these summaries each week.

The Author

Robert Schaffer

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Robert Schaffer

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Robert Schaffer

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 4 Comments comments. Join the discussion.

  1. Josh Malone March 13, 2018 8:06 am

    Takeaway – United States case law holds that a patent is often simultaneously valid and invalid. Incredulously the conflict is resolved in every case with the administrative branch trumping the judicial branch. That is the current law under the 2013 split panel opinion Fresenius USA v. Baxter Int’l.

    To make matters worse, the inventor does not enjoy the benefit of res judicata even if he prevails in the unfavorable PTAB, but must prevail over an unlimited number of challenges. The infringer(s) on the otherhand, need only win once.

    This is a scam of massive proportions. Knowles earned and vindicated their patent rights years ago.

  2. Bemused March 13, 2018 9:08 am

    This case perfectly illustrates why we have a PTAB that has run amok. Here, we have an Article III appellate court – which has direct oversight of this rogue administrative agency – neutering itself.

    Using colloquial (and rough) language, one might say that the CAFC has allowed itself to become the PTAB’s b*tch.

    What does it say about an appellate court where the judge with the biggest set is Pauline Newman?

  3. Joachim Martillo March 13, 2018 10:05 am

    The passage below is completely incomprehensible to me as a hardware/software engineer, who as a manager has been responsible for overseeing assembly.

    (Technically we outsourced fabrication of circuit boards, but I made sure I understood how it was done.)

    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.

    I may be out of date for I have not overseen assembly since 1995, but I have discussed it with QA engineers at Atrenne as recently as 2013.

    If an IC has solder pads, one connects it by means of solder flux. Flux means flow and the joining process is one of a number of reflux or reflow techniques.

    I also note that surface mount or through hole pin ICs can always be connected mechanically to a circuit board through breadboarding. It is a very old board debugging technique, with which any appropriate artisan should be familiar because breadboarding is commonly used in elementary electronics classes.

    We are dealing with a highly predictable art. If an expert asserted that Knowles wasn’t in possession and that the claims weren’t supported by the written description, the USPTO credited an expert that was not creditable — something that is not surprising because the USPTO is a corrupt organization.

    I have an example which highly suggests that the USPTO solicitor improperly coaxed a questionable expert to write a report in which the expert concludes exactly what the USPTO desires.

    On his own the expert did not know enough to make his conclusion and in the one case where the expert’s knowledge was not deficient, he contradicted his own previous writing on the subject.

    Until criminality is rooted out of the USPTO, no USPTO choice of expert opinion can be trusted.

    That fact is obvious in the Telebrands v Tinnus PGR.

  4. Benny March 14, 2018 5:26 am

    Like JM, I too am baffled by the sentence “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.”
    This only makes sense if the word “artisan” is replaced by “cretin”. It is the technological equivalent of stating that a a knurled flange bracket secured by a screw is not adequately supported if the claim does not also specify that the screw must be turned in order to secure it – the artisan would not recognize that screws are secured by turning, perhaps the inventor assumed that screws are hammered into place.
    At some point in the specification some assumptions of common general knowledge must be made.

Post a Comment

Respectfully add to the discussion.

Name *
Email *
Website