Appeal
from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. 95/001, 850.
Richard L. Rainey, Covington & Burling LLP, Washington,
DC, argued for appellant. Also represented by Brian Gerard
Bieluch, Michael S. Sawyer, Cyril Djoukeng.
Molly
R. Silfen, Office of the Solicitor, United States Patent and
Trademark Office, Alexandria, VA, argued for intervenor. Also
represented by Nathan K. Kelley, Thomas W. Krause, Meredith
Hope Schoenfeld; Mark R. Freeman, Appellate Staff, Civil
Division, United States Department of Justice, Washington,
DC.
Before
Newman, Clevenger, and Wallach, Circuit Judges.
OPINION
WALLACH CIRCUIT JUDGE.
Appellant
Knowles Electronics LLC ("Knowles") appeals the
inter partes reexamination decision of the U.S. Patent and
Trademark Office's ("USPTO") Patent Trial and
Appeal Board ("PTAB") that affirmed an
examiner's findings that (1) claims 1-2, 5-6, 9, 11-12,
15-16, and 19 of U.S. Patent No. 8, 018, 049 ("the
'049 patent") are un-patentable as anticipated; and
(2) claims 21-23 and 25-26 of the '049 patent would have
been obvious over various prior art references. Analog
Devices, Inc. v. Knowles Elecs. LLC (Analog Devices
I), No. 2015-004989, 2015 WL 5144183, at *7, *9
(P.T.A.B. Aug. 28, 2015); see Analog Devices, Inc. v.
Knowles Elecs. LLC (Analog Devices II), No.
2015-004989, 2016 WL 675856, at *7 (P.T.A.B. Feb. 17, 2016)
(denying request for rehearing).[1] We have jurisdiction
pursuant to 28 U.S.C. § 1295(a)(4)(A)
(2012).[2]We affirm.
Background
I. The
'049 Patent
The
'049 patent, entitled "Silicon Condenser Microphone
and Manufacturing Method, " generally discloses a
silicon condenser microphone apparatus, including a housing
for shielding a transducer, used in certain types of hearing
aids to protect the transducer from outside interferences.
See '049 patent, Abstract; id. col. 1
ll. 17- 19, 26-30, 46-51. The components of the microphone
apparatus, i.e., "package, " may specifically be
processed "in panel form" that can be separated
later into individual units. See id. col. 3 ll.
10-19. As a result, the invention purportedly improves over
the prior art's "drawbacks associated with
manufacturing these housings, such as lead time, cost, and
tooling." Id. col. 1 ll. 39-41.
Independent
claim 1 is representative of the apparatus claims and
discloses: A silicon condenser microphone package comprising:
a package housing formed by connecting a multi-layer
substrate comprising at least one layer of conductive
material and at least one layer of non-conductive material,
to a cover comprising at least one layer of conductive
material;
a cavity formed within the interior of the package housing;
an acoustic port formed in the package housing; and
a silicon condenser microphone die disposed within the cavity
in communication with the acoustic port;
where the at least one layer of conductive material in the
substrate is electrically connected to the at least one layer
of conductive material in the cover to form a shield to
protect the silicon condenser microphone die against
electromagnetic interference.
Id. col. 12 ll. 16-31. Independent claim 21 is
representative of the method claims and discloses:
A method of manufacturing a silicon condenser microphone
package comprising:
providing a panel comprising a plurality of interconnected
package substrates, where each of the plurality of package
substrates comprises at least one layer of conductive
material and at least one layer of non-conductive material;
attaching a plurality of silicon condenser microphone dice to
the plurality of package substrates, one die to each package
substrate;
attaching a plurality of package covers, each comprising at
least one layer of conductive material, to the panel, one
package cover to each of the package substrates, where
attaching the plurality of package covers to the panel
comprises electrically connecting the at least one layer of
conductive material in the package cover to the at least one
layer of conductive material in the corresponding package
substrate to form a shield to protect the silicon condenser
microphone die against electromagnetic interference; and
separating the panel into a plurality of individual silicon
condenser microphone packages.
Id. col. 13 l. 34-col. 14 l. 18.
Discussion
Knowles
argues that the PTAB erred in two respects. First, Knowles
argues that the PTAB improperly construed "package,
" including by failing to consider this court's
construction of package for a related patent. See
Appellant's Br. 58-73. Second, Knowles argues that the
PTAB improperly relied on a new ground of rejection to
sustain the Examiner's obviousness findings. See
id. at 74-80. After stating the applicable standard of
review and legal framework, we address these arguments in
turn.[3]
I.
Claim Construction
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, [4] 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),
overruled on other grounds by Aqua Prods., Inc. v.
Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc). 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, " Teva, 135 S.Ct. at 841,
such as expert testimony, dictionaries, and treatises, those
underlying findings amount to factual determinations that we
review for "substantial evidence, " Microsoft
Corp., 789 F.3d at 1297. Substantial evidence means
"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 two inconsistent conclusions may
reasonably be drawn from the evidence in record, the
PTAB's decision to favor one conclusion over the other is
the epitome of a decision that must be sustained upon review
for substantial evidence." Elbit Sys. of Am., LLC v.
Thales Visionix, Inc., 881 F.3d 1354, 1537 (Fed. Cir.
2018) (internal quotation marks, brackets, and citation
omitted).
"During
reexamination proceedings of unexpired patents . . . the
[PTAB] uses the 'broadest reasonable interpretation
consistent with the specification' standard, or
BRI." In re CSB-Sys., 832 F.3d at 1340
(citation omitted); cf. Cuozzo, 136 S.Ct. at 2145
(acknowledging the PTAB's use of BRI during
reexamination). "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 ...