Docket No. 2016-2010
NEWMAN (D), WALLACH, CHEN
March 1, 2018
Brief summary: PTAB decision affirming rejection of Knowles’s claims as anticipated or lacking written description (proposed amended claims) affirmed.
Summary: Knowles appealed PTAB decision following inter partes reexamination affirming the examiner’s rejection of claims 1-4 of US 6,781,231 directed to microelectromechanical system (“MEMS”) packages for shielding the microphone thereof from an interference signal or an environmental condition for anticipation and proposed new claims 23-27 for lack of an adequate written description. The FC panel explained that it reviews PTAB’s “ultimate claim construction in a reexamination de novo” (on which the anticipation finding was based) (In re CBS-Int’l, FC 2015 (broadest reasonable interpretation (Cuozzo, US 2016)) after considering the patent’s specification, prosecution history (intrinsic evidence considered de novo) and any extrinsic evidence (expert testimony, dictionaries; reviewed for substantial evidence (Microsoft, FC 2015; Consol. Ed., US 1938); In re Jolly, FC 2002 (court “will not find the [PTAB’s] decision unsupported by substantial evidence simply because the [PTAB] chose one conclusion over another plausible alternative”); BRI cannot be divorced from the specification and record evidence (Microsoft)). “Package” is a limiting preamble term (Catalina, FC 2002) that the PTAB construed to “refer to chip assemblies that possess any type of second-level connection mechanism”, not limited “to one that uses a ‘mounting mechanism’” (as argued by Knowles, i.e., Knowles argued the PTAB interpreted the term too broadly). The FC panel found that neither claims 1-4 nor the specification “specify the type of connection required to form the MEMS package”, and found no error with the PTAB’s construction based on extrinsic evidence (Phillips, FC 2005; unlike in PPC Broadband (FC 2016) in which the PTAB “failed to consider evidence ‘in light of the specification’ and ‘claims themselves’”); finding no inconsistency with the definition in MEMS Tech. (FC 2011); Virnet X, FC 2016 (“We will not find legal error based upon an isolated statement stripped from its context.”)) On written description of the “reflow process limitation”, Knowles argued the PTAB “fail[ed] to consider…how a PHOSITA would understand that solder pads were capable of attachment via reflow” or “‘other methods of soldering’ in its analysis” but the FC panel disagreed, finding the PTAB’s conclusion of no WD supported by substantial evidence (e.g., “the specification does not require solder pads to connect to the circuit board by any particular process”, “other processes…were known in the art…and could have been used”; Ariad, FC 2010 (WD “must clearly allow [a PHOSITA] to recognize that the inventor invented what is claimed”); Lockwood, FC 1997 (insufficient to argue “the disclosure, when combined with the knowledge in the art, would lead one to speculate as to the modifications that the inventor might have envisioned, but failed to disclose”); Enzo, FC 2002 (whether the specification conveyed possession of the invention with reasonable clarity)). Knowles also argued Cirrus Logic, which replaced one of the original three requestors (the other two of which dropped out), was not a proper party to the proceeding but the FC panel concluded that argument waived since Knowles did not object to the PTAB’s entry of Cirrus Logic. Judge Newman’s dissent argued that the MEMS (FC 2011) claim construction should have been applied by the PTAB as not doing so “impart[s] uncertainty”.