{"id":2029,"date":"2018-04-06T01:03:40","date_gmt":"2018-04-06T05:03:40","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2029"},"modified":"2018-04-26T09:47:34","modified_gmt":"2018-04-26T13:47:34","slug":"ptab-is-not-bound-by-prior-litigation-based-claim-constructions-provided-they-are-appropriately-considered","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2029","title":{"rendered":"PTAB is not Bound by prior Litigation-Based Claim Constructions Provided They are Appropriately Considered"},"content":{"rendered":"<p>In <a href=\"http:\/\/www.cafc.uscourts.gov\/sites\/default\/files\/opinions-orders\/16-1954.Opinion.4-5-2018.1.PDF\">Knowles Electronics. v. Iancu<\/a>, [2016-1954] (April 6, 2018), the Federal Circuit affirmed the PTAB&#8217;s affirmance of the Examiner&#8217;s determination that\u00a0claims 1\u20132, 5\u20136, 9, 11\u201312, 15\u201316, and 19\u00a0of U.S. Patent No. 8,018,049 were anticipated, and claims 21\u201323 and 25\u201326\u00a0would have been obvious.<\/p>\n<p>The claims were directed to a silicon condenser microphone and manufacturing method.\u00a0\u00a0Knowles argued that the PTAB erred by improperly construing\u00a0\u201cpackage,\u201d including by failing to consider the Federal Circuit construction of package in a related patent, and by improperly relying on a new ground of rejection to\u00a0sustain the Examiner\u2019s obviousness findings.<\/p>\n<p>The Federal Circuit noted that it has\u00a0held that, in some circumstances, previous<br \/>\njudicial interpretations of a disputed claim term may be\u00a0relevant to the PTAB\u2019s later construction of that same\u00a0disputed term. While the PTAB is\u00a0not generally bound by a previous judicial interpretation\u00a0of a disputed claim term does not mean that it\u00a0has no obligation to acknowledge that interpretation or to\u00a0assess whether it is consistent with the BRI.\u00a0 The Federal Circuit found that the PTAB considered a previous\u00a0interpretation of the term and properly determined its\u00a0claim construction was consistent with the term\u2019s BRI, and the PTAB adequately explained its adoption a claim construction<br \/>\nrelative to the prior construction.<\/p>\n<p>On the question of whether the Board relied upon a new ground of rejection, the Federal Circuit said that the PTAB is not limited to reciting and\u00a0agreeing with the examiner\u2019s rejection in haec verba, and can\u00a0further explain the examiner\u2019s rejection\u00a0and thoroughly respond to an applicant\u2019s argument. Knowles argued that the the PTAB&#8217;s finding regarding the motivation to combine, based upon the principles of operation of the references,\u00a0does not appear anywhere in\u00a0the Examiner\u2019s decision.\u00a0 However, after examining the decisions of the Examiner and the Board, the Federal Circuit found taht the PTAB\u2019s rejection relied on the same reasons provided\u00a0by the Examiner, albeit using slightly different\u00a0verbiage.\u00a0 The Federal Circuit noted that Knowles was given, and actually used its opportunity to respond to the theory of unpatentability before the Board.<\/p>\n<p>&nbsp;<\/p>\n<p>&nbsp;<\/p>\n","protected":false},"excerpt":{"rendered":"<p>In Knowles Electronics. v. Iancu, [2016-1954] (April 6, 2018), the Federal Circuit affirmed the PTAB&#8217;s affirmance of the Examiner&#8217;s determination that\u00a0claims 1\u20132, 5\u20136, 9, 11\u201312, 15\u201316, and 19\u00a0of U.S. Patent No. 8,018,049 were anticipated, and claims 21\u201323 and 25\u201326\u00a0would have &hellip; <a href=\"https:\/\/patents.harnessip.com\/?p=2029\">Continue reading <span class=\"meta-nav\">&rarr;<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[1],"tags":[],"class_list":["post-2029","post","type-post","status-publish","format-standard","hentry","category-uncategorized"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2029","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2029"}],"version-history":[{"count":2,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2029\/revisions"}],"predecessor-version":[{"id":2031,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2029\/revisions\/2031"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2029"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2029"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2029"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}