It Take Two to Tango: Knowles v. Iancu, a Standing Dispute in a PTAB Decision Review

 Introduction

On April 6, 2018, the Court of Appeals for the Federal Circuit (“Federal Circuit”) has decided Knowles Electronics LLC v. Andrei Iancu, Undersecretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (“Knowles v. Iancu”). Knowles Electronics LLC (“Knowles”) owns U.S. Patent No. 8,018,049 (“‘049 patent”) and appealed an inter partes reexamination decision of the Patent Trial Appeal Board (“PTAB”) which affirmed an examiner’s findings that the ‘049 patent would have been obvious over various prior art references. Knowles argued that the PTAB erred in two respects; firstly, that the PTAB improperly construed “package,” and secondly that the PTAB improperly relied on a new ground of rejection to sustain the examiner’s obviousness findings. The third-party requestor Analog Devices, Inc. declined to defend the judgement in its favor, resulting in the Federal circuit deciding the Director of the USPTO has standing to intervene and participate in the oral argument under Article III. 

Decision

With respect to Knowles first argument, Knowles asserted that the Federal Circuit “should direct the [PTAB] to adopt the definition of ‘package’” used in a prior case. The Federal Circuit, while it held that in some circumstances the previous interpretations of a disputed claim term (such as “packages”) may be relevant to the PTAB’s later construction of that same disputed term, agreed with the PTAB’s construction of “package” in the ‘049 patent. The Federal Circuit then determined that the extrinsic evidence raised by Knowles cannot overcome the patent intrinsic evidence.

 With respect to the second argument made by Knowles, the Federal Circuit held that the PTAB did not rely upon a new ground of rejection to sustain the examiner’s obviousness findings. The PTAB’s rejection cited the same reasons provided by the examiner and Knowles had a fair opportunity to respond to the PTAB’s rejection.

The Federal Circuit considered Knowles’s remaining arguments, and upon finding them unpersuasive, affirmed the USPTO’s Final Written Decision. In the dissent, Judge Newman, questioned whether the USPTO could satisfy the constitutional requirements for Article III Standing.