PTAB Reconstruing Claims: Estoppel? | Patently-O

Knowles Electronics v. Cirrus Logic (Fed. Cir. 2018) [Knowles Case]

Construing Promises: In a 2011 choice, the Federal Circuit construed the claims of Knowles Electronics’ U.S. Patent No. 6,781,231, which includes the declare phrase “package” as applied in the claimed microelectromechanical system to suggest 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 5 many years later on, the PTAB offered a somewhat distinct building during an inter partes reexamination. In Judge Newman’s check out, that variance permitted for the PTAB to uncover the claims anticipated although the 2011 Federal Circuit choice identified the patents legitimate. She writes:

The variance concerning [the two] constructions may not look to be large, but the PTAB’s building sufficed to keep claims 1–4 invalid on the floor of anticipation whilst the Federal Circuit’s building sustained validity on the floor of anticipation

The difficulty, for Judge Newman, is that a choice from the PTAB’s managing courtroom should really command the steps of the PTAB and limit its electrical power. For its element, the PTAB commonly refuses to be sure by prior declare building choices by District Courts, but this is the 1st situation exactly where the PTAB has disregarded a prior interpretation by the Federal Circuit.

Even though I began with Judge Newman’s belief. Her belief was in dissent, the The vast majority (Judges Wallach and Chen) averted the query of no matter if the PTAB’s should comply with Federal Circuit declare building choices. Rather, the vast majority held that the PTAB building is in “accord with the definitions adopted in Mems Tech.” Based upon this declare building, the vast majority agreed that the claims were being anticipated by the proffered prior art.

Published Description: The patentee also added many claims during the reexamination. Having said that, these were being turned down for absence of prepared description. On appeal in this article, the Federal Circuit affirmed – holding that the recently added limitation that “solder pads are ‘configured to mechanically connect … the package to a surface area of an exterior printed circuit board making use of a solder reflow process’” was not supported by the original specification. In individual, the specification did not discover the “solder reflow process” as the connection mechanism. Here, the PTAB held that this kind of a process was not so very well recognized in the art that the disclosure demonstrates possession of that process. This factual conclusion by the PTAB was easy to protect on appeal considering that it want only be supported by sizeable evidence. Judge Newman did not present any dissenting belief on this aspect of the judgment.

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