Knowles Electronics v. Cirrus Logic (Fed. Cir. 2018) [Knowles Case]
Construing Claims: In a 2011 decision, the Federal Circuit construed the claims of Knowles Electronics’ U.S. Patent No. 6,781,231, including the claim term “package” as used in the claimed microelectromechanical system to mean a “self-contained unit that has two levels of connection, to the device and to a circuit (or other system).” MEMS Tech. v. Int’l Trade Comm’n, 447 F. App’x 142 (Fed. Cir. 2011). When passing judgment on the same patent five years later, the PTAB offered a slightly different construction during an inter partes reexamination. In Judge Newman’s view, that difference allowed for the PTAB to find the claims anticipated while the 2011 Federal Circuit decision found the patents valid. She writes:
The difference between [the two] constructions may not appear to be large, but the PTAB’s construction sufficed to hold claims 1–4 invalid on the ground of anticipation whereas the Federal Circuit’s construction sustained validity on the ground of anticipation
The problem, for Judge Newman, is that a decision from the PTAB’s controlling court should control the actions of the PTAB and limit its power. For its part, the PTAB generally refuses to be bound by prior claim construction decisions by District Courts, but this is the first case where the PTAB has disregarded a prior interpretation by the Federal Circuit.
Although I began with Judge Newman’s opinion. Her opinion was in dissent, the Majority (Judges Wallach and Chen) avoided the question of whether the PTAB’s must follow Federal Circuit claim construction decisions. Rather, the majority held that the PTAB construction is in “accord with the definitions adopted in Mems Tech.” Based upon this claim construction, the majority agreed that the claims were anticipated by the proffered prior art.
Written Description: The patentee also added several claims during the reexamination. However, those were rejected for lack of written description. On appeal here, the Federal Circuit affirmed – holding that the newly added limitation that “solder pads are ‘configured to mechanically attach … the package to a surface of an external printed circuit board using a solder reflow process'” was not supported by the original specification. In particular, the specification did not identify the “solder reflow process” as the connection mechanism. Here, the PTAB held that such a process was not so well known in the art that the disclosure shows possession of that process. This factual conclusion by the PTAB was easy to defend on appeal since it need only be supported by substantial evidence. Judge Newman did not offer any dissenting opinion on this aspect of the judgment.
The absurdity of the Google appointments never ends. CJ Wallach is one of the Google selections. His qualifications for science? None. His qualifications for patents? None.
() a Bachelor of Arts degree at the University of Arizona in 1973,
() he is one of the nation’s foremost experts on war crimes and the law of war.
The absurdity is worse than you describe.
link to linkedin.com
I have a couple of stupid questions:
1) In a post grant proceeding, why isn’t the patent owner’s construction accepted at face value? Why construe the claims to read on the prior art, while the patent owner is explicitly disclaiming such a construction? Isn’t it a good outcome for the patent owner to disclaim the broader subject matter thereby leaving it to the public?
2) Why is it not a rule of claim construction that the claims be construed so as not to read on the prior art, if such a reasonable interpretation exists? It is absurc to construe the claims to cover something the inventor did not discover, particularly when he voluntarily relinquishes such an interpretation.
I’ve seen far too many inventors’ patents destroyed by infringers and lawyers twisting the words to mean something the inventor and examiner did not intend. This is not right.
The idea is that the public is best served (better appraised of claim scope) if the patentee amends the claims to explicitly adopt the construction of the court.
1) where does this idea come from?
2) why is it deemed better if a non-inventor gets to set the terms of the invention?
3) how do you feel this fits into the words of Congress – the requirement AND designation of authority concerning exactly who gets to set the terms of invention?
That is the sound bite of the USPTO. I would understand if you are not convinced.
PiKa–what?
Amend when?
You can amend claims in reexamination, event so in reviews. I honestly think it is reckless not to present a new claim with the court construction explicitly recited.
Pika, rest assured, infringer will still argue intervening rights.
I agree with you. I understand intervening rights when claim scope is broadened, but intervening rights when claim scope is narrowed using limitations supported by the description, that seems unfair to the patentee. The infringer had a notice that its product was covered by the patent. The narrower claim scope was enabled by the patent. Why would the infringer get away with it just because the patent office did not have the resources to analyze millions of references? It beats me…
Pika, it is a shame, is it not, that point of novelty is not even claimed in the original patent, even in a dependent claim? I see this all the time. The inventor knows what he invented, or at least has a good idea. But the patent attorney does his thing — abstracting, broadening, using vague terms (you know exactly what I mean), but never actually claims the novel structure, etc., even in a dependent claim. The patent attorney boasts that he got his client a valuable patent. But what he really got is client is a headache, or worse, by not condescending to claim the invention.
However, if the novel feature is claimed in a dependent claim and it is still infringed, there are no intervening rights. That is why dependent claims are “necessary.”
…and there goes Ned, diving deep into the weeds…
I have seen what you are talking about, and yes, maybe attorneys are sometimes to blame. But it is much easier to define the invention when you know the closest prior art. Not having the closest prior art identified during prosecution is a problem that gets worse with the huge amount of information available. I think we need to rethink the patent system to deal with that reality.
“But it is much easier to define the invention when you know the closest prior art.”
PiKa,
Be aware of (and beware of) the temptation of “ease.”
Your “reality” is not taking into account that that closest prior art is typically NOT known at the time of submitting an application, and one cannot change the application (no new matter) after the submission point.
While it is certainly “best practices” to obtain a prior art search (it is something I push heavily to my clients – the more spent there, the better the end product); the reality is that there is NO such requirement for ANY search at all to be conducted. Further, clients that we serve have a spectrum of desires from their patent pursuit efforts. Clients make the choice (informed) as to what level of prior art search to conduct (if any at all). Further, even pursuing a patent is an optional choice of the client. And for many, that option weighed in the realities of business trade offs preclude the level of effort that you appear to want to induce.
Unless your reality includes an officious intrusion into the optional choices that a client may make, “reality” does not align with your path.
The invention has to be described in the specification, I don’t see a way around that. In response to Anon, I am not entirely convinced that a suitable description requires an extensive search. It requires a good cooperation with the inventor.
I just find it unjust when the invention is in the specification, and, by a game of claim invalidation and intervening rights, an infringer manages not to be liable. The process by which the patentee and the infringer arrive at what has been invented relies too much on formal aspects and is not fair to the patentee.
“described in the specification, I don’t see a way around that.”
No one is saying otherwise.
“In response to Anon, I am not entirely convinced that a suitable description requires an extensive search.”
Also, something that is not being said.
However, YOUR point of “Not having the closest prior art identified during prosecution is a problem that gets worse with the huge amount of information available. I think we need to rethink the patent system to deal with that reality.” is what is leading me to believe that YOU are feeling that some type of better/more inclusive/mandatory search is somehow part of the “answer.”
If that is NOT what you are suggesting, my apologies.
BRI, KSR, word games, and a mission to destroy the issued patent are the objectives of reexam and IPR. Any amendment induced by the threat of losing his patent is used against the patent owner as a confession while the infringer proceeds to attack the new words that replaced the old ones. The patent right fluctuates in limbo until the end of its term or the owner exhausts his funds. Clarifying the metes and bounds that protect the invention is contrary to the interests of infringers and their supporters, so that is to be avoided in post issuance proceedings. The goal is to eliminate the patent and liability for the infringer. I guess I am answering my own question.
Have Absolutely Josh. The primary goal of reexaminations is to keep the patent in the patent office under “serial” reexamination process until either the patent or the patent owner is broken. IPR only extended the opportunity by allowing the infringer into the patent office to obfuscate, prevaricate, and thereby terminate the valuable patent rights of a patent owner who many times cannot afford a full defense.
I have a couple of stupid questions.
1. In a post grant validity dispute, why is the patentee’s construction not accepted at face value? If he is clarifying the scope of his invention by eliminating broader interpretations, isn’t that a good thing?
2. Why isn’t it a rule of claim construction to reject constructions that read on the prior art when there are reasonable constructions that would distinguish from the prior art?
It is not fair that the lawyers and infringers are permitted to twist the words to mean something inventor was not attempting to claim. I’ve seen this happen many many times to kill a perfectly good patent.
Those are really good points Josh. I think the only answer is that the point of IPRs is to burn the patent.
A lot of the notice requirement comes into play where you don’t want the public not to be able to tell if a claim reads on something until the claims are construed. But, as to 2), the public is supposed to be able to look at the prosecution history for disclaimers to claim scope.
There are really two problems in patent law that have been used to burn the system down.
1. claim scope. And this isn’t really hard. It should be the scope of enablement.
2. 101. Should some things be excluded from patentability. And how to tell.
These two problems have been used to burn the system down. Just read Benson which is a study in evi1.
Why? Intervening rights.
That is why an accused infringer would not want 2. Not saying much.
Night, welcome to the abuse of process that reexaminations, etc., with BRI represent. Fully calibrated to do as much damage to a patent owner as possible.
I will never understand those who think that reexaminations are consistent with patents being property.
“with BRI represent.”
LOL – Ned refuses to conduct a property analysis on the all of the sticks in the bundle of a property right known as a granted patent from before any post grant review institution decision and all of the sticks in the bundle immediately after such an institution decision, – but still wants to complain.
I will never understand why Ned refuses to grasp the law of property properly and yet endeavor to champion a cause that requires that grasping.
When the PTO employs BRI, it effectively shifts the burden of proof to the “applicant.” While this expedient might be useful during examination, it is simply not justified in connection with an issued patent.
I believe Cuozzo decided that Congress had, in the AIA, granted authority to the PTO to adopt BRI. But Congress never did that with respect to reexaminations.
This case might be a case where the issue a BRI might once again be raised and bank or at the Supreme Court because an issued patent is involved, not an application.
Furthermore, reexaminations seem to be unconstitutional under McCormick Harvesting. I don’t see how one can distinguish that case on the basis that it was interpreting the reissues statute. The way it got to its interpretation is to first decide that only a court could declare a patent invalid for any reason, including mistake by the PTO.
Hopefully Oil States, which will come down Monday I believe, is properly decided.
Oil states on Monday….?
Do you have some inside track on that?
Monday????
Re: “..this is the first case where the PTAB has disregarded a prior [claim] interpretation by the Federal Circuit.”
That must be a shock to anyone who swallowed all the directly contrary rants on P-blogs.
I think that you are misconstruing those “rants.”
Of course, given your over exuberance towards cheerleading the infirm artifact of the AIA, this is not a surprise.
There’s plenty of situations where a prior claim construction should be modified, replaced or disregarded. They aren’t carved in stone.
Would you feel the same if this runs at an 80-90% rate FOR the parent holder (you know, your supposed clients),,,?
this
Define exactly what you’re referring to, please.
Most clients recognize that if, e.g., they made assertions in their marketing materials, in their applications, or during prosecution, or during re-examination, or during an IPR, or in court, where those assertions are arguably informative as to the meaning of a claim and arguably inconsistent with the scope of a first claim construction, that those assertions may result in a new claim construction that takes the newly appreciated evidence into account. Generally speaking, the sorts of assertions I described are going to work against patentees most of the time (for one thing, the patentee would have brought the evidence up in the first claim construction if it was helpful).
“ Generally speaking, the sorts of assertions I described are going to work against patentees most of the time ”
LOL – especially for someone like you with an ultra high degree of cognitive dissonance when it comes to any sense of being “pro-patent.”
But no, I am NOT talking about the (isolated) incident that you wish to trot out. I am talking in the larger sense that IF the changes in those “plenty of situations” were to go in the favor of patent holders, would you be so enthralled with the view that “a prior claim construction should be modified, replaced or disregarded. They aren’t carved in stone.“
LOL – especially for someone like you
No, for everybody, across the board.
Just a fact of life, really.
I know this is hard for you but, hey, you’re still advising your imaginary clients as if it’s 1998.
IF the changes in those “plenty of situations” were to go in the favor of patent holders, would you be so enthralled
LOL
Keep digging, Billy. You crack me up.
There is no “digging” here, Malcolm. I set a hypothetical for you, and you apparently cannot be bothered to think it through (much less provide anything approaching a cogent reply).
So, if you are a patent lawyer who helps abolish patents, what would your next field of concentration be and who would actually employ you?? Google?
Interviewer: So what did you do at your last job?
Me: I helped to eradicate all jobs my area of concentration.
Just not sure how well that works.
Are you trying to find some logic in those that would deter innovation through duplicity and dissembling?
Note as well the usual Malcolm tactic of kicking up dust with mindless ad hominem – and not answering the point out to him.
Just as with his other poker tells of “so serious” or “so deep,” when he engages only dust-kicking and ad hominem, he is basically saying that he cannot think of anything cogently on point to reply with.
Someone help me understand what the big deal is. The prior case was from the ITC, where Phillips was applied. The PTO applies BRI. While the two standards often reach the same construction, they can also reach a different result. So doesn’t that make Newman’s issue preclusion argument meaningless?
I completely agree. The PTAB applies a different claim construction standard. I think Newman may have missed that point. Her opinion never mentions the BRI standard.
Indeed, and MM at 3 raises an additional interesting question. In a second suit on the same patent against a different party, is that second party precluded from bringing in expert testimony on the meaning of a claim term to a POSITA which was not presented in the first suit and not clear from the spec, and thereby get a slightly different claim interpretation in the second suit, which a second Fed. Cir. panel could sustain in spite of its first decision?
In a second suit on the same patent against a different party, is that second party precluded from bringing in expert testimony on the meaning of a claim term to a POSITA which was not presented in the first suit and not clear from the spec, and thereby get a slightly different claim interpretation in the second suit, which a second Fed. Cir. panel could sustain in spite of its first decision
Of course the answer is “no”.
Newman’s argument is the following.
1) The CAFC is the authoritative and controlling circuit court for the CFC, the ITC, and the PTAB as well as all the DCs in patent matters.
2) The CAFC has already decided this patent is valid as a matter of law.
3) The PTAB is in clear error of law to attempt to overrule the CAFC in a matter of law.
We may see a sua sponte en banc hearing in this case.
I should have added the following.
“… if the Appellant does not itself request rehearing.
Newman’s argument does not reach for many of the reasons listed already (including, but not limited to: the different “rules of the game” for the non-Article III forum of PTAB)
Doesn’t the action amount to an overruling of the Article III appellate court by an administrative tribunal, whose decisions are appealed to said appellate court?
It also has implication for 35 U.S. Code § 145 – Civil action to obtain patent.
If an applicant after failing to reverse an examiner’s final rejection of claims, files a complaint against the USPTO Director in DCEDVA and receives a patent, which is affirmed after the USPTO appeals to the CAFC, the PTAB could then invalidate the issued patent in a subsequent IPR or PGR.
If Congress had really intended the PTAB to have such authority, Congress could just have repealed 35 U.S. Code § 145 when the AIA was enacted.
This case is another one that screams payoff.
The original examiner issues a notice of allowability. Then the patent’s validity is challenged at the ITC. The patent owner prevails.
Later during Inter Partes Reexamination the Examiner, disagrees with the results of the earlier examination and — in my experience — probably in violation of the APA is ordered by a USPTO senior official to adopt the construction, which both the ITC and also the CAFC rejected.
Yet issue preclusion would stop the patent owner from a reissue
1) if the owner had successfully argued a narrow construction in an Article III court and
2) if the patent owner made a reissue application to narrow a claim from an earlier USPTO construction when the amended claim was broader than the construction of the Article III court.
“Doesn’t the action amount to an overruling of the Article III appellate court by an administrative tribunal,”
No.
As indicated, there are different rules of the game going on, and you are attempting an apples to oranges comparison.
“It also has implication for 35 U.S. Code § 145 – Civil action to obtain patent.”
Again, no. It is known that one goes from one forum to another, the rules of the game change. Thus, the only “implication” is a bit of a fallacy, as it is already known that the different forums have different rules.
“…the PTAB could then invalidate the issued patent in a subsequent IPR or PGR.”
As with any other patent – your point concerning the path to get to the patent does not carry as you attempt to make it carry.
“If Congress had really intended”
If Congress had really intended to improve patent law, the AIA would not have passed.
“This case is another one that screams payoff.”
“payoff” may not be the most nuanced word. “Capture” certainly applies, as does the outcome of ills from the likes of Citizen’s United.
Newman is arguing that the patent claims have been fully adjudicated once the CAFC has decided their construction and validity.
The PTAB is effectively if not explicitly taking the position that a patent even if issued is never fully litigated.
Can the latter position really be justified within the US legal system? It is a recipe for the sort of corruption, which is currently taking place at the USPTO among a subset of senior officials and APJs, who have turned the US patent system into a giant “patent medicine” con scam, in which the inventor gains no benefit from the issuance of his patent while his Intellectual Property (IP) is stolen.
See USPTO’s New Motto: “You Innovate – We Expropriate!”.
In other words, today the USPTO lies just like any seller of snake oil when it issues a patent.
The following statement may not be doing full justice to USPTO senior official crooks and the PTAB clowns.
On second thought I should have written.
Joachime,
Let me offer a small correction:
“The PTAB is effectively if not explicitly taking the position that a patent even if issued is never fully litigated.”
becomes:
“The PTAB is effectively if not explicitly taking the position that a patent even if issued is never fully provided quiet title .
The difference is that the PTAB has been somewhat (shall we say) ambivalent as to how to “label” what it is doing in the NON-Article III forum.
In the formation of this country, concepts such as “Separation of Powers,” and an unconstrained judicial power were (rightfully) under intense observation (see Madison and the Federalist Papers).
We have regressed mightily (and NOT just in view of what the Executive Branch is doing – in many ways, just as – or more detrimental, the Judicial Branch has run amuck in what authority (pertaining explicitly to patents) has been “let loose.”
Here is the critical paragraph from Newman’s dissent.
If Newman’s point is rejected and if the CAFC finds a claim constructed by the CAFC to be valid, an infringer can challenge that claim, which is valid as a matter of law, pay off an appropriate USPTO senior official so that the PTAB will cobble together a bogus 112 (b) rejection to which the CAFC will defer under Chevron deference.
This situation is ridiculous. In the financial world the SEC and the FBI always assume that if there is a way to make money by criminality, someone will commit the crime. Newman because she is a judge on the CAFC argues collateral estoppel in terms of efficiency, but efficiency includes elimination of possible ways to make a dishonest buck. The regulators depended on the honesty of banks not to cheat on the libor exchange rate. Guess what happened!
“ The regulators depended on the honesty of banks not to cheat on the libor exchange rate. Guess what happened!”
The tale of “Capture” there is far worse than your comment indicates.
And such is not the only tale of “Capture.”
Title can’t be quieter than it is after the patent has been killed.
Alas, the term “quiet title” carries with it the connotation of a valid – and unquestionable – title.
While the USPTO has resorted to attacks on title or on inventorship when it has been unable to invalidate a patent, the USPTO is not questioning the validity of Knowles Electronics’ title to the patent. It has denied the validity after the validity was fully litigated.
Newman is arguing that validity is a settled legal issue for a set of patent claims and that the PTAB, whose controlling appellate court is the CAFC, may not revisit the validity of said set of patent claims. So far there is no question of title. Title seems to be quiet in this case.
As I stated…
connotation of a valid – and unquestionable
(yes, ownership of title is one aspect – it is not the only aspect)
I have spent the past few hours in reading up on quiet title action, writ of ejectment, and writ of estrepement.
Nothing indicated that valid ownership had any correlation with patent claim validity except the accidental use of the word “valid” and paronyms in two very different contexts.
If there really is a need for a some sort of post grant review proceeding beyond the whining of a slothful incumbent corporation, it could be called a Patent Ejectment Review.
If the Ejectment Review found sufficient evidence of invalidity, the petitioner would be given leave to file a Writ of Patent Ejectment on behalf of Abstract Idea, Prior Art, Obvious Combination, Indefinite Claim, No Enablement, No Possession, or No Support (each claiming a “license” to the patent) against Exclusive Licensee in the DCEDVA (a sort of inverse 35 USC 145 action).
The Patent Owner could respond on behalf of Exclusive Licensee with a Cross Complaint to Quiet Validity. There could be a Markman hearing using Phillips construction and a jury trial.
In this way claim construction and validity could be fully litigated and all questions of validity could be settled, and there would be collateral estoppel in any future litigation with respect to the patent claims in question.
:+1:
…but that might make sense
🙂
If the prior Fed. Cir. decision on claim interpretation for this patent was narrower under In re Phillips, that must be what Newman missed or chose to ignore, because she could not possibly have missed the following in the majority opinion here:
” “During reexamination proceedings of unexpired patents. . . the [PTAB] uses the broadest reasonable interpretation [(‘BRI’)] consistent with the specification standard . . . .” In re CSB-Sys., 832 F.3d at 1340 (internal quotation marks and citation omitted); cf. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144−45 (2016) (acknowledging the PTAB’s use of BRI during reexamination).”
Not to mention that under Texas Instruments v. Cypress Semiconductor, patent-related determinations by the ITC — even if addressed in an appeal to the CAFC — don’t have issue preclusive effect. Odd that this didn’t make it into the opinions at all.
Good point. Even more inexcusable re her alleged “law of the case” argument.
Opampman/Mike/Matt/Paul – it is not okay that a patent claim can have more than one legal interpretation. It is not okay for a law to have more than one interpretation. Citing bad decisions does not make it okay. It is chaos – great for this generation of patent lawyers, leaving a corpse of a patent system to the next generation.
Josh,
You need to recognize that different rules apply in different forums.
Because we DO have different forums (with their different rules), the SAME set of facts may very well reach different outcomes.
The ONLY way around this is to abolish the different forums.
As we live in this modern age of the Administrative State, that is simply not going to happen.
The next best thing is to realize that SOME things (like life, liberty and property) inure Constitutional protections that apply across the different forums, and that even Congress – the branch with the appropriate delegation of authority – may not write laws that violate an established item having protection from other Constitutional protections.
As I have elucidated elsewhere, one aspect where this shows is in the fact that patents are property (and the AIA did NOT touch that aspect of patents, which predates the AIA).
As property, there are other Constitutional protections from even actions that may in other circumstances entail a type of legitimate State action.
The easiest to discuss is eminent domain and the takings clause.
The State MAY engage in takings.
But they may do so only strict observnace with a number of factors.
Notably, those factors are badly missing in the post grant provisions of the AIA.
As I have also noted elsewhere, this type of thing is something that must be directly asked of the courts – they will NOT sua sponte come forward and say, guess what, that post grant stuff in the AIA is Constitutionally infirm.
Question presented: Can a property title be simultaneously valid and invalid?
Congress Answer: It is whatever we say it is.
Agency Answer: A patent is a privilege and taking your competitor’s money to break our promise is not capricious because your lawyer should have told that would happen when you applied for your patent.
Supreme Court Answer: ????
Legal Answer (in the form of a question):
What forum are you asking this question in?
Another case where the CAFC has already passed judgment on the claims and the PTAB comes in years later, disregards the proper claim construction, finds the claims invalid, and the CAFC doesn’t smack the PTAB down for usurping the CAFC.
Between this and the Alice nonsense, you don’t need to be a genius to see that the US patent system is FUBAR.
“Usurping?”
Please.
It goes more to former Chief Judge Michel’s contention that there is ONLY ONE REASONABLE construction of a claim term by the PTO after it has been fully litigated (and appealed through an Article III appellate court which is reviewing it de novo). (In fact…any Markman construction which has been fully appealed is sufficient as other issues like damages or infringement need not have been finalized yet….) Any further ‘broadening’ of the construction as set by the CAFC by the PTO is by definition…UNREASONABLE.
Judge Newman has stood firm on this issue (for good reason) through at least three dissents that I know of in the past two years.