In previous posts, we have discussed whether the PTAB and the district courts can reach different conclusions on the same issue. (See Fed Circ Affirms Conflicting Invalidity Determinations from District Court and PTAB; Can PTAB and Courts Reach Different Decisions? Definitely So.) In those instances, the Federal Circuit held they can, because the standards applicable at the PTAB and the district court were different. A recent Federal Circuit decision affirming a PTAB ruling in an ex parte reexamination highlights this issue again.
In Knowles Electronics LLC v. Cirrus Logic, Inc., 2016-2010 (Fed. Cir. Mar. 1, 2018), the Federal Circuit considered the validity of a patent it had previously found not invalid seven years prior, in an appeal from the International Trade Commission. This time, in a 2-1 decision, the court found the patent to be invalid for anticipation and lack of written description. The crux of the dispute (at least in the eyes of dissenting Judge Newman) was whether the PTAB was bound by the Federal Circuit’s decision in the previous ITC appeal. The PTAB and the panel majority, however, did not see it that way.
For its part, the PTAB stated that “precedent makes clear that the USPTO is not bound in reexamination proceedings by claim constructions produced by a court.” The precedent to which the Board referred, however (In re Trans Texas Holdings, 2006-1599 (Fed. Cir. 2007)), addressed whether the PTAB was bound by a district court’s claim construction. The Board then went on to construe the disputed term “package,” and found the claims invalid. On appeal, the panel majority did not address whether the USPTO is bound by a prior decision of the Federal Circuit. Rather, the court reviewed the PTAB’s claim construction, agreed with it, and then affirmed the invalidity findings.
To be sure, the patentee Knowles did raise the prior ITC ruling, contending that the PTAB should have looked at that previous judicial interpretation and determined whether it is consistent with the broadest reasonable interpretation (“BRI”) of the disputed term. In response, the panel majority noted that even if they were to look at the ITC decision, “[they] would find no inconsistency” with the PTAB’s construction here.
In her dissent, Judge Newman framed the inquiry as one of issue preclusion: does a Federal Circuit decision on the same patent have preclusive effect in subsequent PTAB proceedings? After considering that the purpose of post-grant proceedings under the AIA is to bring efficiency, cost savings, and finality to patent disputes, Judge Newman answered in the affirmative. Allowing the PTAB to ignore prior Federal Circuit decisions on the same patent creates redundancy and waste. She then criticized the panel majority for implicitly holding that the PTAB is not bound by the Federal Circuit’s prior ITC decision, on the same claim terms of the same patent. She also disagreed that there was no difference between the PTAB’s and the Federal Circuit’s constructions of “package.”
Interestingly, neither the majority nor the dissent discussed the difference between BRI and the ITC standard for claim construction. Although this decision relates to an ex parte reexamination, it has potential ramifications for post-grant proceedings before the PTAB. After Knowles, it is clear that the PTAB believes it is free to disregard a previous claim construction from a court, even if that court is the Federal Circuit, which has exclusive appellate jurisdiction over PTAB decisions. Practitioners should continue to monitor this issue.