In Re: Power Integrations, Inc.
884 F.3d 1370
| Fed. Cir. | 2018Background
- The ’876 patent claims a digital frequency-jittering circuit and related method in which a counter is "coupled" to a digital-to-analog converter (DAC) such that the counter causes the DAC to adjust a control input and vary oscillator switching frequency.
- Power Integrations litigated the patent against Fairchild in district court; the district court construed "coupled" to require a connection allowing the counter itself to pass voltage, current, or control signals to the DAC. Juries found no anticipation/obviousness in prior-art Martin and Wang under that construction.
- The PTO granted ex parte reexamination; the PTAB rejected claims 1, 17, 18, and 19 as anticipated by Martin, Wang, and Habetler, adopting a dictionary-based construction of "coupled" meaning simply "joined into a single circuit."
- This court earlier vacated the PTAB decision for failing to evaluate whether the district-court construction was consistent with the broadest reasonable construction and remanded for reconsideration.
- On remand the PTAB reaffirmed its broad construction and anticipation holdings; Power Integrations appealed. The Federal Circuit reversed, holding the PTAB’s construction unreasonably broad because it ignored claim language and the specification requiring the counter itself to drive the DAC (not an intervening preprogrammed memory).
Issues
| Issue | Power Integrations' Argument | Director / PTAB Argument | Held |
|---|---|---|---|
| Proper construction of "coupled" in claims requiring counter to "cause" DAC to adjust control input | "Coupled" requires a functional control relationship: the counter itself must pass voltage, current, or control signals to the DAC | "Coupled" means simply joined in the same circuit (dictionary definition), so a counter plus memory can together drive the DAC | Court held the district-court construction (counter itself causes DAC to adjust input) is the broadest reasonable construction; PTAB's dictionary-only reading was unreasonably broad and reversed |
| Whether Martin/Wang/Habetler anticipate claim 1 (and claims 17–19) | Prior art uses an intervening preprogrammed memory/ROM that severs direct control; thus they do not disclose a counter that is coupled as claimed | Under PTAB construction, intervening memory does not prevent anticipation because components are in same circuit | Because proper construction requires the counter itself to drive the DAC, the cited prior art (which uses ROM/memory to determine DAC output) does not anticipate; anticipation rejections reversed |
| Reliance on district-court claim construction in PTO reexamination | District-court construction is informative and must be considered to see if it aligns with broadest reasonable construction | PTAB may apply broadest reasonable construction independently and believed district court construction was unwarranted to consider | Court held PTAB had obligation to evaluate the district-court construction against the broadest reasonable construction and failed to do so adequately |
| Whether specification permits inclusion of intervening memory between counter and DAC | Specification and embodiments consistently show counter outputs driving DAC; patent emphasizes compact design and minimizing components, disfavoring bulky memory insertion | PTAB: specification does not expressly exclude a memory between counter and DAC | Court held specification and embodiments support interpreting "coupled" to require direct control by the counter and that inclusion of memory is inconsistent with the invention’s described focus |
Key Cases Cited
- Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348 (Fed. Cir. 2013) (prior appellate decision addressing differences between Martin and the ’876 patent)
- Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 843 F.3d 1315 (Fed. Cir. 2016) (affirming no anticipation by Martin and Wang under district-court construction)
- Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272 (Fed. Cir. 2017) (standard of review for PTAB claim construction when intrinsic record governs)
- In re ICON Health & Fitness, Inc., 496 F.3d 1374 (Fed. Cir. 2007) (PTO must give claims their broadest reasonable construction during reexamination)
- In re Smith Int’l, Inc., 871 F.3d 1375 (Fed. Cir. 2017) (claims must be interpreted to correspond with how inventor describes invention in the specification)
- In re Suitco Surface, Inc., 603 F.3d 1255 (Fed. Cir. 2010) (rejection under broadest-construction rubric is not unlimited; examiner/PTAB cannot read claims to embrace anything remotely related)