Search Team

Search by Last Name
A
B
C
D
E
F
G
H
I
J
K
L
M
N
O
P
Q
R
S
T
U
V
W
X
Y
Z

Knowles Electronics LLC v. Cirrus Logic, Inc.

Description of Genus Insufficient to Provide Written Description Support for Species Claim

Knowles Electronics LLC v. Cirrus Logic, Inc.2018 WL 1095253 (Fed. Cir. Mar. 1, 2018) (Newman (dissenting), WALLACH, Chen) (PTAB) (2 of 5 stars)

Fed Cir affirms IPRx rejection of four claims as anticipated, and four amended claims as lacking written description. The PTAB did not err in its construction of “package” (as in, “microelectromechanical system package”) as not requiring a “mounting mechanism.” The opinion describes how neither the claims nor the specification recited such a limitation. “Because intrinsic evidence is not definitive, we turn to extrinsic evidence.” Op. at 8. The opinion finds that the extrinsic evidence did not exclude the possibility of alternate approaches.

The PTAB also did not err in determining that the four proposed claims lacked written description. While Knowles’ specification described the possibility of connecting solder pads to an external printed circuit board, it did not disclose using solder reflow to accomplish that. The opinion rejects Knowles’ argument that a person of skill, reviewing the specification, would have appreciated that the disclosed solder pads were intended to be used with a solder reflow process. The opinion quotes Lockwood, 107 F.3d 1565 (Fed. Cir. 1997) (“It is not sufficient for purposes of the written description requirement of § 112 that the disclosure, when combined with the knowledge in the art, would lead one to speculate as to the modifications that the inventor might have envisioned, but failed to disclose.”).

The opinion also finds that Knowles waived any challenge to Cirrus’s participation in the IPR proceeding. Cirrus participated as the real-party-in-interest replacing the third-party requestor of record, Wolfson Microelectronics. Knowles had not objected before the PTAB to replacing Wolfson with Cirrus as the real-party-in-interest. That Knowles did object to Cirrus’s participation in the PTAB oral hearing was insufficient.

Dissent: Judge Newman points out that Knowles’ patent was previously before the Federal Circuit in MEMS Technology Berhad v. International Trade Commission, 447 F. App’x 142 (Fed. Cir. 2011). That case specifically analyzed the meaning of “package.” The dissent discusses the analysis of that case, and expresses concern about the PTAB’s reasoning, per Trans Texas, 498 F.3d 1290 (Fed. Cir. 2007), that “the USPTO is not bound in reexamination proceedings by claim constructions produced by a court.” Dissent at 3 (quoting PTAB Op. at 12). The dissent points out that Trans Texas, and other similar cases cited by the PTO, involved district court treatments of patentability issues, not treatments by the Federal Circuit.

KEYWORDS: INTER PARTES REEXAMINATION; CLAIM CONSTRUCTION; WRITTEN DESCRIPTION; REAL-PARTY-IN-INTEREST; WAIVER; ISSUE PRECLUSION