from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in Nos. 95/000, 509, 95/001, 251,
Richard L. Rainey, Covington & Burling LLP, Washington,
DC, argued for appellant. Also represented by Cyril Djoukeng,
Brian Gerard Bieluch, Michael S. Sawyer.
R. Speed, Wolf, Greenfield & Sacks, PC, Boston, MA,
argued for appellees. Also represented by Justin Colannino,
Richard Giunta, Marc S. Johannes.
Newman, Wallach, and Chen, Circuit Judges.
Wallach, Circuit Judge
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.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).
appeals. We have subject matter jurisdiction pursuant to 28
U.S.C. § 1295(a)(4)(A) (2012). We affirm.
'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.
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:
microelectromechanical system package comprising:
a microelectromechanical system microphone;
a substrate comprising a surface for supporting the
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
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. 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.
Claim Construction in Claims 1-4
Standard of Review and Legal Standard
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,  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).
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).
PTAB Properly Construed the Term "Package" in
makes several arguments for why the PTAB's construction
of "package" in the preamble of claim 1 of the
'231 patent is incorrect. 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)). 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
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.
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"
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
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, ...