Split Panel Affirms PTAB Decision in Knowles Electronics LLC v. Cirrus Logic, Inc.

In Knowles Electronics LLC v. Cirrus Logic, Inc., No. 2016-2010 (Fed. Cir. Mar. 1, 2018), the Federal Circuit affirmed a PTAB inter partes reexamination decision invalidating a patent as anticipated by the prior art and rejecting proposed claims for lack of written description.

The majority upheld the Board’s claim construction of the preamble term “package,” which the court agreed was limiting. The court disagreed with Knowles’ argument that the Board’s construction was inconsistent with a prior Federal Circuit decision that upheld the ITC’s construction of the same term in the same claims of the same patent. Based on the Board’s construction, the court agreed the challenged claims were anticipated.

Judge Newman dissented because the majority “decline[d] to consider whether the PTAB is bound by the Federal Circuit’s decision on the same patent” and in her view, this silence wrongly condoned the PTAB’s argument that “precedent makes clear that the USPTO is not bound by reexamination proceedings by claim constructions produced by a court.” Judge Newman concluded that the USPTO should be bound by the Federal Circuit’s prior decision and that, in this case, the Board should not have conducted a full trial of the same claim construction issue.