In re: Power Integrations, Inc.

Docket No. 2017-1304

March 19, 2018

Brief summary: PTAB claim construction and resultant anticipation decisions regarding PI’s ‘876 patent reversed (“[t]he board has had two opportunities to come up with a sustainable interpretation that differs from the one that survived litigation and has failed” and “conclude[d]” that “there is not one.”)

Summary: PI appealed the remand PTAB decision during ex parte reexamination rejecting claims 1, 17, 18 and 19 of US 6,249,876 as anticipated. The ‘876 patent has been involved in litigation against Fairchild Semi. (D. Del. 2006 (“PI I”), FC 2013 (“PI III”), FC 2016 (“PI V”), and this reexamination was filed while DC proceedings were pending. During reexamination, the PTAB affirmed the examiner’s rejections of the claims “[i]n light of its construction of the term ‘coupled’ in claim 1” and PI appealed. In PI IV (FC 2015), a FC panel found the PTAB “had ‘fundamentally misconstrued [PI’s] principal claim construction argument” that was “expressly tied to the [DC’s] claim construction” (acknowledging “the board is not generally bound by a prior judicial construction of a claim term’ and that ‘in reexamination [the board] applies a different claim construction standard than that applied by a” DC), and “failed to provide a full and reasoned explanation of its [anticipation] decision”. The FC also found that the PTAB “failed to straightforwardly and thoroughly assess the critical issue of whether claim 1, when viewed in light of the specification and the surrounding claim language, requires the counter itself-and not the counter and a memory functioning together” (as determined by the DC). On remand, the PTAB again affirmed the examiner’s anticipation rejection, concluding “that a comparison of its claim construction with that of the [DC] was ‘unwarranted’” (a DC’s “claim construction is ‘typically’ narrower than the broadest reasonable construction” (BRC)) and “continued to adhere to a generalist dictionary definition of the term ‘coupled’” as “it could ‘glean[] no substantial guidance from either the context of the claim itself of the Specification’ regarding the meaning of the term.” The PTAB also found that claim 1 “does not preclude the counter and memory functioning together”. In this decision, the FC panel explained that “[e]ven under the [BRC] rubric…the board must always ‘consider the claims in light of the specification and teachings of the underlying patent’” (In re CSB-Sys, FC 2016; Trivascular, FC 2016; In re Suitco, FC 2010 (BRC is not “unfettered license to interpret claims to embrace anything remotely related to the claimed invention”); In re Smith, FC 2017 (“correct inquiry…is not whether the specification proscribes or precludes some broad reading of the claim adopted by the examiner”)) and that “there is no reason why this construction could not coincide with that of a court in litigation.” And the FC panel found that “[t]he board’s construction here was unreasonably broad and improperly omitted any consideration of the disclosure in the specification” (Novartis, FC 2004 (“the specification may define claim terms by implication such that the meaning may be found in or ascertained by a reading of the patent documents”); Slimfold, FC 1987). The FC panel also found that “claim 1 requires the counter to ‘caus[e]’ the converter to adjust the control input and to vary the switching frequency” (i.e., “functioning together”) (Amgen, FC 2006 (“claim construction must begin with the words of the claims themselves”)). The FC panel also concluded the “board’s claim construction…renders the claim language meaningless” (Bicon, FC 2006; Merck, FC 2005) and is “[e]ven more fundamentally…is unsupported by the specification” (PPC Broadband, FC 2016) (e.g., “every embodiment…shows a counter that passes…control signals to the digital to analog converter” (Astrazeneca, FC 2004)). Thus, the FC panel disagreed with the PTAB’s claim construction. As the anticipation decision was based on that erroneous claim construction, it also reversed the finding of anticipation. The FC panel noted that “[t]he board has had two opportunities to come up with a sustainable interpretation that differs from the one that survived litigation and has failed” and “conclude[d]” that “there is not one.”

This entry was posted in Anticipation (35 USC 102), Claim Construction, Reexamination. Bookmark the permalink.

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