Power Integrations, Inc. v. Lee
797 F.3d 1318
| Fed. Cir. | 2015Background
- The ’876 patent covers a digital frequency jittering circuit and methods to vary a power supply’s switching frequency to reduce electromagnetic interference; key limitations require a counter to cause a DAC to adjust an oscillator control input.
- Power Integrations sued Fairchild in Delaware; the district court construed “coupled” to mean a connection that permits voltage/current/control signals to pass for control purposes, not necessarily a direct connection.
- The PTO reexamined claims 1, 17–19; the Board affirmed anticipation rejections based on prior art (Martin, Habetler, Wang), reasoning that intervening ROM/EPROMs did not prevent a counter from being “coupled” to a DAC.
- Power Integrations argued to the Board that the claims require the counter itself (not a programmed memory) to control the DAC; the Board focused largely on whether intervening components are permitted and did not meaningfully address the counter-vs-memory control point.
- The Federal Circuit vacated and remanded, holding the Board misapprehended Power Integrations’ principal claim-construction argument and failed to provide a reasoned explanation addressing whether the claimed coupling requires the counter itself to drive the DAC (as opposed to the counter plus a programmed memory).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Proper construction of “coupled” in claim 1 | "Coupled" requires the counter itself to pass voltage/current/control signals to the DAC to control it (intervening components permitted but cannot substitute for the counter’s control) | "Coupled" means devices joined in a circuit; intervening memory does not preclude the counter being coupled to the DAC | Vacated and remanded: Board failed to address plaintiff’s actual argument about who/what controls the DAC and did not reasonably apply broadest reasonable interpretation in light of specification and district court construction |
| Whether Martin/Habetler/Wang anticipate claims when a ROM/EPROM sits between counter and DAC | Prior art separates counter from DAC via memory so the counter does not itself drive the DAC; thus not anticipating claims requiring the counter to control the DAC | Prior art that places a memory between counter and DAC still discloses a counter coupled (via memory) to the DAC and therefore anticipates | Vacated and remanded: anticipation analysis depends on the unresolved claim construction issue; Board’s anticipation findings are inadequately explained |
| Board’s obligation to address prior judicial claim construction | Board should assess whether prior district-court construction is consistent with broadest reasonable construction and must address it when relied upon by patent owner | Board need not follow judicial construction but must explain and consider it when raised and pertinent | Vacated and remanded: Board erred by declining to evaluate or acknowledge the district court’s construction in the circumstances presented |
| Adequacy of Board’s explanation and burden allocation | Board mischaracterized PI’s argument and shifted burden by assuming Habetler’s signals were voltages | Board’s factual inferences and reliance on dictionary meaning were sufficient | Vacated and remanded: Board failed to provide adequate reasoning under the APA and did not resolve critical factual/legal questions necessary for appellate review |
Key Cases Cited
- Allentown Mack Sales & Serv., Inc. v. NLRB, 522 U.S. 359 (1988) (agencies must engage in reasoned decisionmaking)
- Dickinson v. Zurko, 527 U.S. 150 (1999) (standard of review and APA constraints on PTO decisions)
- Perricone v. Medicis Pharm. Corp., 432 F.3d 1368 (2005) (single reference anticipation rule)
- Sec. & Exch. Comm’n v. Chenery Corp., 332 U.S. 194 (1947) (court cannot accept post hoc rationalizations for agency action)
- Motor Vehicle Mfrs. Ass’n v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29 (1983) (agency must supply reasoned explanation for changes or actions)
- In re NTP, Inc., 654 F.3d 1279 (2011) (PTO’s broadest reasonable interpretation standard during reexamination)