In Knowles Electronics LLC v. Cirrus Logic, Inc., No. 2016-2010 (Fed. Cir. Mar. 1, 2018), the Federal Circuit affirmed a PTAB decision that upheld an examiner’s rejection of claims for anticipation in an inter partes reexamination (IPX). The same claims had earlier been challenged, and determined to be not invalid (over different prior art), in an ITC decision that was also affirmed by the Federal Circuit. MEMS Tech. Berhad v. Int’l Trade Comm’n, 447 F. App’x 142 (Fed. Cir. 2011). The decision in the IPX appeal turned on construction of a particular claim term (“package”), and according to a dissent authored by Judge Newman, the court should have reversed the PTAB’s decision due to claim preclusion, because the court had earlier construed the same term differently.
Knowles’s challenged patent discloses microelectromechanical system (“MEMS”) packages including a substrate, a microphone, and a cover. MEMS microphone packages are used in a variety of consumer electronic devices, such as mobile phones.
With respect to anticipation, the only disputed issue on appeal was construction of the term “package” in the preamble of the claims. The PTAB determined that the disputed term “may refer to chip assemblies that possess any type of second-level connection mechanism.” Knowles argued that the term requires a second-level connection with a “mounting mechanism,” and that the PTAB erred in construing the term as not limited to a mounting mechanism. In MEMS Technology, the court had earlier determined that a “package” “is a self-contained unit that has two levels of connection, to the device and to a circuit (or other system).”
In evaluating claim construction, the PTAB stated that although it fully considered the Federal Circuit’s construction in MEMS Technology, “precedent makes clear that the USPTO is not bound in reexamination proceedings by claim constructions produced by a court,” citing In re Trans Texas Holdings Corp., 498 F.3d 1290, 1301 (Fed. Cir. 2007) (stating that “the Board was not bound by the district court’s claim construction”) (emphasis added).
On appeal, the court did not address whether the PTAB was bound by the court’s earlier construction, stating that it “fail[ed] to see how the definition of package adopted by the PTAB below does not accord with the definition adopted in MEMS Technology.”
In a dissenting opinion, Judge Newman wrote “in concern for perpetuation of the erroneous position that the PTAB need not apply the prior final judicial decision of the same issue of the same claims of the same patent.” According to the dissent, the PTAB was bound by the Federal Circuit’s earlier construction of the term, because the cited authority, Trans Texas Holdings, is directed to the effect of a prior district court decision on claim construction, not a Federal Circuit decision. In the dissent’s view, the PTAB’s “duplicate” litigation of the same question negates the purpose of the AIA “to provide a more efficient and less costly post-grant determination of certain validity issues.”
For now, there does not appear to be any controlling authority on the issue, and the PTAB may continue to take the position that it may not be bound by a Federal Circuit decision construing a particular claim term.