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Knowles Electronics LLC v. Cirrus Logic, Inc.

United States Court of Appeals, Federal Circuit

March 1, 2018


         Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. 95/000, 509, 95/001, 251, 95/001, 363.

          Richard L. Rainey, Covington & Burling LLP, Washington, DC, argued for appellant. Also represented by Cyril Djoukeng, Brian Gerard Bieluch, Michael S. Sawyer.

          Nathan R. Speed, Wolf, Greenfield & Sacks, PC, Boston, MA, argued for appellees. Also represented by Justin Colannino, Richard Giunta, Marc S. Johannes.

          Before Newman, Wallach, and Chen, Circuit Judges.


          Wallach, Circuit Judge

         Appellant Knowles Electronics, LLC ("Knowles") appeals the inter partes reexamination decision on appeal of the U.S. Patent and Trademark Office's ("USPTO") Patent Trial and Appeal Board ("PTAB") affirming an examiner's rejection of claims 1-4 of U.S. Patent No. 6, 781, 231 ("the '231 patent") for anticipation and proposed claims 23-27 for lack of an adequate written description.[1]Cirrus Logic, Inc. v. Knowles Elecs. LLC (Cirrus I), No. 2015-004342, 2015 WL 5272691, at *2-3 (P.T.A.B. Sept. 8, 2015); see Cirrus Logic, Inc. v. Knowles Elecs. LLC (Cirrus II), No. 2015-004342, 2016 WL 1378707, at *1-2 (P.T.A.B. Apr. 5, 2016) (denying request for rehearing).

         Knowles appeals. We have subject matter jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A) (2012). We affirm.


         The '231 patent, entitled "Microelectromechanical System Package with Environmental and Interference Shield, " discloses microelectromechanical system ("MEMS") packages comprising a substrate, a microphone, and a cover accommodating the microphone. '231 patent, Abstract. The MEMS packages shield the microphone from an interference signal or an environmental condition, id. col. 1 ll. 38-41, and purportedly improve over the prior art's drawbacks "associated with manufacturing these housings, such as lead time, cost, and tooling, " id. col. 1 ll. 30-32.

         The instant appeal concerns claims 1-4 and proposed claims 23-27 of the '231 patent. Independent claim 1 is illustrative of the invention and recites:

         A microelectromechanical system package comprising:

a microelectromechanical system microphone;
a substrate comprising a surface for supporting the microelectromechanical microphone;
a cover comprising a conductive layer having a center portion bounded by a peripheral edge portion; and
a housing formed by connecting the peripheral edge portion of the cover to the substrate, the center portion of the cover spaced from the surface of the substrate to accommodate the microelectromechanical system microphone, the housing including an acoustic port for allowing an acoustic signal to reach the microelectromechanical system microphone wherein the housing provides protection from an interference signal.

Id. col. 5 ll. 12-25 (emphasis added). Claims 2-4 also recite a "package." See id. col. 5 ll. 26, 39, 53. Proposed claims 23-27 recite a package with a "lower surface comprising a plurality of solder pads" that is "configured to mechanically attach and electrically connect the [MEMS] package" to a printed circuit board "using a solder reflow process." J.A. 3886 (emphasis added); see J.A. 3886-87.


         Knowles raises three primary arguments on appeal. First, Knowles argues that "the [PTAB]'s rejection of the potentially most commonly accepted definition of 'package, ' and corresponding invalidity finding, requires reversal" as to claims 1-4. Appellant's Br. 45 (capitalization and alterations omitted); see id. at 45-63.[2] Second, Knowles argues that "the [PTAB]'s written description analysis requires reversal" as to the PTAB's rejection of proposed claims 23-27. Id. at 63 (capitalization and alterations omitted); see id. at 63-74. Finally, Knowles contends that "the record does not establish that the [Appellees] are proper parties." Id. at 75 (capitalization omitted); see id. at 75-79. After articulating the applicable standard of review and legal standards, we address Knowles's arguments in turn.

         I. Claim Construction in Claims 1-4

         A. Standard of Review and Legal Standard

         "We review the [PTAB]'s ultimate claim construction in a reexamination de novo." In re CSB-Sys. Int'l, Inc., 832 F.3d 1335, 1340 (Fed. Cir. 2016) (citing, inter alia, Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 840-41 (2015)). A patent's specification, together with its prosecution history, [3] constitutes intrinsic evidence to which the PTAB gives priority when it construes claims. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1297-98 (Fed. Cir. 2015). We review the PTAB's assessment of intrinsic evidence de novo. See id. When the PTAB "look[s] beyond the patent's intrinsic evidence and . . . consult[s] extrinsic evidence, " such as expert testimony, dictionaries, and treatises, Teva, 135 S.Ct. at 841, those underlying findings amount to factual determinations that we review for "substantial evidence, " Microsoft Corp., 789 F.3d at 1297 (citation omitted). Substantial evidence means such "relevant evidence [that] a reasonable mind might accept as adequate to support a conclusion." Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938) (citations omitted). "If the evidence in record will support several reasonable but contradictory conclusions, " we "will not find the [PTAB's] decision unsupported by substantial evidence simply because the [PTAB] chose one conclusion over another plausible alternative." In re Jolley, 308 F.3d 1317, 1320 (Fed. Cir. 2002).

         "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 reexamina-tion). "Accordingly, this court reviews the reasonableness of the [US]PTO's disputed claim term interpretations." In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (internal quotation marks and citation omitted). However, "[e]ven under the [BRI], the [PTAB's] construction cannot be divorced from the specification and the record evidence . . . and must be consistent with the one that those skilled in the art would reach." Microsoft Corp., 789 F.3d at 1298 (internal quotation marks and citations omitted).

         B. The PTAB Properly Construed the Term "Package" in Claims 1-4

         Knowles makes several arguments for why the PTAB's construction of "package" in the preamble of claim 1 of the '231 patent is incorrect.[4] The PTAB found that, under the BRI, a "package" "may refer to chip assemblies that possess any type of second-level connection mechanism." Cirrus I, 2015 WL 5272691, at *11; see Cirrus II, 2016 WL 1378707, at *4 ("[T]he Panel explained why the [BRI] of 'package' included, but was not limited to, packages produced from [Knowles's] two [proposed] mounting methods." (citation omitted)).[5] On appeal, Knowles con- tends that the term "package" should be construed to mean an assembly that "requires a second-level connection with a mounting mechanism." Appellant's Br. 47. Thus, Knowles disagrees with the PTAB's construction, which does not limit the "connection" to one that uses a "mounting mechanism."[6]

         Claims 1-4 do not specify the type of connection required to form the MEMS package. See '231 patent col. 5 ll. 12-67. The '231 patent's specification similarly does not limit the type of connection to one that is mountable or any specific form of mount. See, e.g., id. col. 3 ll. 4-7 ("The embodiment disclosed herein . . . would typically be mounted . . . ." (emphasis added)), col. 3 ll. 19-20 (describing the package to include "surface mountable components" without detailing the means of required connection with an external mechanism), col. 4 ll. 3-4 (describing general "electrical connection" of the substrate). Moreover, the parties do not identify any disclosures in the prosecution history that would aid in the construction of the term.

         Because intrinsic evidence is not definitive, we turn to extrinsic evidence. See Phillips, 415 F.3d at 1319 (allowing courts to look to extrinsic evidence after reviewing intrinsic evidence to better understand the field of the invention and the meaning of a term to a PHOSITA). Knowles asks the court to look only at certain dictionary and treatise references describing common categories for mounting in MEMS to form second-level connections. See Appellant's Br. 50-52. However, as the PTAB correctly noted, many references suggested by Knowles use qualifying language, thereby implying second-level connections in circuit boards may not be properly limited to the two types of mounts proffered by Knowles. See Cirrus I, 2015 WL 5272691, at *11 (quoting Fundamentals of Microsystems Packaging 67 (Rao R. Tummala ed., 2001) (J.A. 2833) ("In general, . . . packages can be classified into two categories: 1) through-hole, and 2) surface mount.") (emphasis added)); id. (quoting Microelectronics Packaging Handbook 42 (Rao R. Tummala et al. eds., 1989) (J.A. 2847) ("There are two basic types of connections . . . .") (emphasis added)); id. (quoting Handbook of Electronic Package Design 4 (Michael Pecht ed., 1991) (J.A. 2842) ("The external connections of a chip carrier serve to classify the component into one of the two major technological categories . . . .") (emphasis added)). Moreover, Knowles provided additional extrinsic evidence that supports the PTAB's determination that a package need not be confined to certain types of second-level connection mounts. See Cirrus I, 2015 WL 5272691, at *11-12 (reviewing Electronic Industries Alliance JEDEC Standard defining package as "[a]n enclosure . . . that allows electrical connection and provides mechanical and environmental protection" (J.A. 637-38), and a technical dictionary definition defining package as, inter alia, "an enclosure . . . used to contain any level of electronic system or subsystem" (J.A. 642-43)).

         Knowles does not contest that the references cited by the PTAB allow for means of connectivity beyond surface and through-hole mounts. Instead, Knowles argues that the PTAB impermissibly "simply select[ed] the broadest definition" cited by the parties to arrive at its claim construction. Appellant's Br. 55 (quoting PPC Broadband, Inc. v. Corning Optical Commc'ns RF, LLC, 815 F.3d 747, 752 (Fed. Cir. 2016)). That is incorrect. The PTAB reviewed all extrinsic evidence, including evidence proffered by Knowles, and found no evidence that the definition was limited to surface or through-hole mounting. Unlike PPC Broadband, where the PTAB failed to consider evidence "in light of the specification" and "claims themselves, " 815 F.3d at 752, Knowles admitted that the claims and specification did not offer a definition for package that would inform a PHOSITA as to its favored interpretation, see J.A. 4152 ("[The '231 patent] . . . does not offer a concise dictionary definition of the term."), 6907 (similar). Therefore, the PTAB properly considered extrinsic evidence, and we see no error in the PTAB's claim construction based on this extrinsic evidence.

         Knowles additionally argues that "[t]he [PTAB] should have read MEMS Technology and concluded that a 'package' requires a 'self-contained unit['] . . . and that this unit must be 'mountable.'" Appellant's Br. 53 (citing MEMS Tech. Berhad v. Int'l Trade Comm'n, 447 Fed.Appx. 142 (Fed. Cir. 2011)). This is so, Knowles avers, because the PTAB has an obligation to "evaluate a previous judicial interpretation of disputed claims 'and to determine whether it is consistent with the [BRI] of the term.'" Id. at 59 (alteration omitted) (quoting Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1327 (Fed. Cir. 2015)). We disagree with the premise of Knowles's argument suggesting that the PTAB's claim construction conflicts with MEMS Technology. In MEMS Technology, we upheld the International Trade Commission's construction of the term "package" in the '231 patent's preamble to mean "a self-contained unit that has two levels of connection, to the device and to a circuit (or other system)." 447 Fed.Appx. at 159; see id. (affirming the ITC's rejection of an anticipation claim because the disputed prior art "does not disclose first and second levels of electrical connection"). Thus, ...

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