Docket No. 2016-1954
NEWMAN (D), CLEVENGER, WALLACH
April 6, 2018
Brief summary: PTAB claim construction and affirmance of examiner’s obviousness rejections following reexamination requested by Analog Devices affirmed. FN2 explains that the PTO had the right to intervene after Analog Devices declined to defend the judgment in its favor.
Summary: Knowles appealed PTAB decision affirming an examiner’s anticipation and obviousness findings regarding US 8,018,049 related “[a] silicon condenser microphone package” and related methods following reexamination requested by Analog Devices (AD). AD opted not to defend the judgment in its favor (FN1) and the USPTO stepped in. The FC panel explained in FN2 that the USPTO is allowed under FC precedent “to intervene to defend a PTAB decision when a petitioner withdraws on appeal, necessarily implying jurisdiction” (NFC Tech., FC 2017; In re NuVasive, FC 2016; Cuozzo, US 2016 (“the [USPTO] may intervene in a later Judicial proceeding to defend its decision-even if the private challengers drop out”); Pers. Audio, FC 2017). Judge Newman’s dissent argued this was improper because the USPTO did not have Article III standing. The FC panel explained that it reviews PTAB “ultimate claim construction in a reexamination de novo” (In re CBS, FC 2016 (“broadest reasonable interpretation” (BRI) which “cannot be divorced from the specification and the record evidence…and must be consistent with the one that thoese skilled in the art [(‘PHOSITA’)] would reach”); Teva, US 2015). It also explained that the PTAB “gives priority” to “intrinsic evidence” (“patent’s specification, together with its prosecution history” (Phillips, FC 2005); Microsoft, FC 2015), which the FC panel reviews de novo. Extrinisic evidence (“such as expert testimony, dictionaries, and treatises”) may also be relied on and is reviewed for “substantial evidence” (that which “a reasonable mind might accept as adequate” (Microsoft, FC 2015)). Knowles argued the PTAB erred in “failing to consider” the construction of the limiting preamble claim term “package” as previously determined “for a related patent” and that it “improperly relied on a new ground of rejection to sustain the Examiner’s obviousness findings.” The FC panel explained that the PTAB’s construction of “package” was consistent with “the words of the claims themselves” and the specification. The FC panel also explained that “[w]hile the [PTAB] is not generally bound by a previous judicial interpretation of a disputed claim term[, this] does not mean…that is has no obligation to acknowledge that interpretation or to assess whether it is consistent with the [BRI] of the term” (Power Integrations, FC 2015), and found that the PTAB did both in its decision (“adopt[ed] a claim construction nearly identical to [that] adopted by the [FC] in MEMS Technology” (FC 2011)). The FC panel also found “[t]he extrinsic evidence submitted” by Knowles “cannot overcome the intrinsic evidence.” The FC panel reviewed the new ground of rejection issue “de novo” (In re Stepan, FC 2011), “the ultimate criterion” being “whether applicants have had fair opportunity to react to the thrust of the invention” (In re Biedermann, FC 2013). The PTAB will be found to “improperly enter a new ground of rejection” if it “finds facts not found by the examiner…, and these facts are the principal evidence upon which the [PTAB]’s rejection was based” (In re Leithem, FC 2011). The FC panel concluded “that the PTAB did not rely on a new ground of rejection in its motivation to combine analysis” since it “relied on the same reasons provided by the Examiner, albeit using slightly different verbiage”, and “Knowles had a fair opportunity to respond”. Thus, the PTAB’s decision was affirmed.