| Karen Cassidy Selvaggio

Editor: Paul Stewart

Federal Circuit Summaries

Before Newman, Clevenger, and Wallach. Appeal from the Patent Trial and Appeal Board.

Summary: The USPTO has standing to intervene to defend its decision, even when the requestor has withdrawn.

Knowles Electronics LLC (“Knowles”) appealed an inter partes reexamination decision of the PTAB which affirmed an examiner’s findings that the patent claims were anticipated or obvious. On appeal, Knowles argued that the PTAB erred in two respects: (1) the PTAB improperly construed “package” and (2) the PTAB improperly relied on a new ground of rejection to sustain the Examiner’s obviousness finding. Third-party requester Analog Devices, Inc. declined to defend the judgment in its favor, and the USPTO intervened.

The Federal Circuit first determined that the USPTO had standing to intervene. The Federal Circuit cited precedent allowing the USPTO to intervene even when the petitioner has withdrawn on appeal.

Knowles argued that the Federal Circuit should direct the PTAB to adopt the definition of “package” from another case. In that case, the Federal Circuit had affirmed the International Trade Commission’s more narrow claim construction. The Federal Circuit concluded that the PTAB was not bound by that prior construction, despite its affirmance by the Federal Circuit. Reviewing the PTAB’s claim construction de novo, the Federal Circuit found that the narrower construction proffered by Knowles (and previously endorsed by the Federal Circuit) would read a disclosed embodiment out of the claim and therefore was not justified. Furthermore, the Federal Circuit concluded that extrinsic evidence relied upon by Knowles could not overcome the intrinsic evidence.

With respect to Knowles’ second argument, the Federal Circuit found that the PTAB did not rely upon a new ground of rejection in its analysis because the PTAB’s rejection relied on the same reasoning provided by the Examiner. Moreover, because Knowles had a fair opportunity to respond, the PTAB’s rejection did not count as a new ground of rejection.

Judge Newman dissented, concluding that, although the USPTO may have had statutory authorization to intervene, it could not satisfy the constitutional requirements of Article III standing without a showing of an independent PTO interest or injury.