Knowles Electronics v. Iancu (Fed. Cir. 2018)
In a split decision, the Federal Circuit has affirmed a PTAB Inter Partes Reexamination decision against a patentee – finding the claims of Knowles Patent No. 8,018,049 invalid as anticipated/obvious.
The patent here covers a cool microphone on a chip with a special inlaid housing for shielding a transducer the transducer when in use in a hearing aid. The patent claims the microchip “package,” and the construction of that term forms the crux of the appeal. Note here that this is the same debate previously discussed in the Federal Circuit’s March 1 decision in Knowles Electronics v. Cirrus Logic (Fed. Cir. 2018) [Knowles Case]
Here, the PTAB construed “package” as “a structure consisting of a semiconductor device, a first-level interconnect system, a wiring structure, a second-level interconnection platform, and an enclosure that protects the system and provides the mechanical platform for the sublevel.”
On appeal, Knowles asks argues that the package should further require a “a second-level connection with a mounting mechanism.” That limitation was required by the Federal Circuit in two prior decisions on closely related claims. In appeal the Federal Circuit sided with the PTO — reaffirming that the USPTO need not follow prior Federal Circuit claim construction decisions:
We have held that, in some circumstances, previous judicial interpretations of a disputed claim term may be relevant to the PTAB’s later construction of that same disputed term. See Power Integrations, Inc. v. Lee, (Fed. Cir. 2015).
According to he court, the PTAB satisfied its requirements by considering the prior court constructions and determined that its construction still complied with the term’s broadest reasonable interpretation (BRI).
Jude Newman offered a dissent making two collateral points:
- The PTO should not have been allowed to intervene in this case to defend the PTAB Judgement.
- Even if allowed to intervene, the PTO should not have been permitted to present additional evidence (in the form of dictionary definitions) in the appeal.