886 F.3d 1369
Fed. Cir.2018Background
- Knowles Electronics appealed the PTAB's inter partes reexamination decision that certain claims of U.S. Patent No. 8,018,049 were unpatentable (some claims found anticipated; others obvious). The Federal Circuit affirmed.
- The '049 patent claims a silicon condenser microphone package and a manufacturing method involving a multi-layer substrate, conductive cover, a cavity, acoustic port, and electrical connection between substrate and cover to form an EMI shield; method claims recite panel processing and separation into individual packages.
- Knowles challenged (1) the PTAB's construction of the claim term "package," urging a narrower construction requiring specific second-level mounting (through-hole or surface mount), and (2) that the PTAB relied on a new ground of rejection when finding claims obvious over Une in view of Halteren.
- The PTAB construed "package" broadly as a structure including device, interconnects, wiring, a second-level interconnection platform, and an enclosure, without requiring particular mounting techniques; the PTAB found prior art Une and Halteren teach the claimed elements and combined them permissibly.
- The Federal Circuit reviewed claim construction de novo under the PTAB's broadest-reasonable-interpretation (BRI) standard for reexamination, affirmed the PTAB's construction as consistent with the specification and prior case law, and held the PTAB did not impose a new ground of rejection and Knowles had a fair opportunity to respond.
Issues
| Issue | Knowles' Argument | USPTO/Analog Devices' Argument | Held |
|---|---|---|---|
| Proper construction of "package" | Requires a second-level mounting mechanism specifically via through-hole or surface-mount connections | "Package" is broader: device + first-level interconnects + wiring + second-level interconnection platform + enclosure; no specific mounting required | Court: Affirmed PTAB; broad construction consistent with specification and prior authority; dependent-claim limitations don't narrow independent claims |
| Whether PTAB relied on a new ground of rejection (obviousness: Une + Halteren) | PTAB introduced new "modes-of-operation" motivation to combine not found in Examiner's reasoning, creating a new ground | Examiner already relied on substitution of known elements and predictable results; PTAB explanation tracks and expands Examiner's rationale; Knowles had chance to respond | Court: No new ground; PTAB relied on same basis as Examiner and Knowles had fair opportunity to respond |
| Use of extrinsic evidence (prior constructions, treatises) to construe "package" | Prior cases/treatises categorize package mounting as through-hole or surface-mount; court should adopt MEMS Technology construction limiting mounting | PTAB considered prior decisions and extrinsic materials but reasonably held intrinsic record controls and supports broader BRI | Court: PTAB reasonably weighed extrinsic evidence; intrinsic evidence controls; BRI construction stands |
| PTO intervenor standing and use of supplemental evidence (dissent) | (raised by dissent) Director lacks Article III standing to continue appeal as intervenor when original appellee withdrew and Director asserts no personal injury; supplemental extra-record evidence improper | Majority: Director may intervene under statute; PTO has statutory right to defend PTAB decision when petitioner withdraws; precedent allows intervention and participation | Court (majority): Allowed Director intervention and participation; dissent raised standing and administrative-record objections but was not controlling |
Key Cases Cited
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claim construction principles; specification controls)
- KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (obviousness doctrine; substitution of known elements with predictable results)
- Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015) (intrinsic evidence priority in claim construction)
- In re CSB-Sys. Int'l, Inc., 832 F.3d 1335 (Fed. Cir. 2016) (de novo review of PTAB claim constructions in reexamination)
- In re Bigio, 381 F.3d 1320 (Fed. Cir. 2004) (review of PTO claim term interpretations under BRI)
- In re Leithem, 661 F.3d 1316 (Fed. Cir. 2011) (new ground of rejection standard; PTAB may not rely on facts not found by examiner)
- In re Stepan Co., 660 F.3d 1341 (Fed. Cir. 2011) (whether PTAB relied on new ground reviewed de novo)
- Diamond v. Charles, 476 U.S. 54 (1986) (intervenor must satisfy Article III standing to continue suit when original party withdraws)
- Lujan v. Defenders of Wildlife, 504 U.S. 555 (1992) (standing: injury-in-fact, causation, redressability)
- Spokeo, Inc. v. Robins, 136 S. Ct. 1540 (2016) (Congress cannot eliminate Article III standing requirements)
- Town of Chester v. Laroe Estates, 137 S. Ct. 1645 (2017) (intervenor must have standing for each form of relief sought)
- Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016) (PTO intervention discussed in context of reviewing PTAB rules)
- ASARCO Inc. v. Kadish, 490 U.S. 605 (1989) (standing and justiciable controversy discussions)