Wednesday, August 12, 2015

CAFC notes review of a patentability determination is confined to “the grounds upon which the Board actually relied.”

The CAFC vacated the Board decision in Power Integrations :

Power Integrations, Inc. (“Power Integrations”) challenges
a decision of the Board of Patent Appeals and
Interferences (“board”) affirming the rejection of claims 1,
17, 18, and 19 of U.S. Patent No. 6,249,876 (the “’876
patent”) as anticipated under 35 U.S.C. § 102(b). See Ex
parte Power Integrations, Inc., No. 2010-011021, 2010 WL
5244756 (B.P.A.I. Dec. 22, 2010) (“Power Integrations
III”). For the reasons discussed below, we vacate and

Here, however, the board fundamentally misconstrued
Power Integrations’ principal claim construction
argument and failed to provide a full and reasoned explanation
of its decision to reject claim 1 of the ’876 patent as
anticipated. Before this court, the district court, and the
board, Power Integrations has consistently argued that
claim 1, when read in light of the specification and surrounding
claim language, requires that the counter itself—not
a pre-programmed memory—controls the digital
to analog converter’s output to vary the switching frequency.1
Br. of Plaintiff-Appellant 9, 18–20; Power Integrations
I, 422 F. Supp. 2d at 455; J.A. 817–19, 876–77,
896–98. In its view, the “coupled” limitation in claim 1
requires that the counter be connected to the digital to
analog converter in a manner that allows it to pass voltage,
current, or control signals to instruct the digital to
analog converter.

From footnote 2:

When it petitioned the board for rehearing, Power
Integrations argued that the board had “misapprehended
or overlooked” its principal argument regarding the
proper interpretation of the term “coupled.” J.A. 935. It
pointed out that, contrary to the board’s assertions, it had
never contended that claim 1 precluded the presence of
intervening components between the counter and the
digital to analog converter. J.A. 935. The board summarily
rejected this argument, however, stating that even
accepting Power Integrations’ “contention that elements
are ‘coupled’ with the presence of ‘intervening components’
. . . and further assuming that [Power Integrations’]
assertion that Habetler discloses an intervening
element (i.e., an EPROM) between a counter and a con-
verter is also true, it follows that Habetler would disclose
a counter ‘coupled to’ a converter under [Power Integrations’]
proposed analysis.” Power Integrations IV, 2011
WL 1821718, at *2.

Of changed arguments:

Perhaps recognizing the deficiencies in the board’s
analysis, the solicitor on appeal advances a number of
arguments as to why the disputed claims of the ’876
patent should be rejected as anticipated. As a general
proposition, however, our review of a patentability determination
is confined to “the grounds upon which the
Board actually relied.” In re Applied Materials, Inc., 692
F.3d 1289, 1294 (Fed. Cir. 2012); see Camp v. Pitts, 411
U.S. 138, 142 (1973) (per curiam) (emphasizing that
under the APA, “the focal point for judicial review should
be the administrative record already in existence, not
some new record made initially in the reviewing court”).
We have no warrant to “accept appellate counsel’s post
hoc rationalizations for agency action,” Burlington Truck
Lines, Inc. v. United States, 371 U.S. 156, 168 (1962), or to
supply a reasoned justification for an agency decision that
the agency itself has not given, Motor Vehicle Mfrs. Ass’n
v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983);
see In re Gartside, 203 F.3d 1305, 1314 (Fed. Cir. 2000)
(emphasizing that a board decision “must be justified
within the four corners of [the] record”).

As to BRI:

Indeed, in reexamination it applies a
different claim construction standard than that applied by
a district court, affording claims “their broadest reasonable
interpretation consistent with the specification.” In
re NTP, Inc., 654 F.3d 1279, 1287 (Fed. Cir. 2011) (citations
and internal quotation marks omitted); see also In re
Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir.
2004). The fact that the board is not generally bound by a
previous judicial interpretation of a disputed claim term
does not mean, however, that it has no obligation to
acknowledge that interpretation or to assess whether it is
consistent with the broadest reasonable construction of
the term.4
Before the board, Power Integrations repeatedly
argued that the district court’s claim construction
was the only reasonable interpretation of claim 1’s “coupled”
limitation when it was viewed in light of the surrounding
claim language and the specification.

The specific holding of the CAFC:

We hold only that the board on remand should carefully
and fully assess whether the disputed claims of the
’876 patent are anticipated by the prior art, setting out its
reasoning in sufficient detail to permit meaningful appellate
review. See Lee, 277 F.3d at 1346 (emphasizing that
remand is required where a board decision “is potentially
lawful but insufficiently or inappropriately explained”
(citations and internal quotation marks omitted)); see also
Nazomi Commc’ns, Inc. v. Arm Holdings, PLC, 403 F.3d
1364, 1371 (Fed. Cir. 2005) (vacating and remanding a
district court’s claim construction determination because
the court did “not supply the basis for its reasoning sufficient
for a meaningful review”).



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