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.

 

BLOG

  • Marin11/18/2015 6:11:11 PM

    PTAB Decisions Give Examples of Patent Eligible Subject Matter

    More

  • Marin11/18/2015 6:15:40 PM

    Covered Business Method Claims Are Not Required to Particularly Target Financial Industry

    More

  • Marin11/18/2015 7:31:35 PM

    When Is a Thesis Prior Art?

    More

  • Marin11/19/2015 2:13:05 PM

    An Innovator’s Dilemma: Design or Utility Patent?

    More

  • Marin1/28/2016 9:10:56 PM

    How Unpredictability Can Affect Obviousness Challenges

    More

  • Marin1/28/2016 9:15:16 PM

    The Patent Trial and Appeal Board Designates Two Decisions as Precedential

    More

  • M. Cionca and I. Kim2/4/2016 5:55:16 PM

    Software Inventions Are Still Patentable!

    More

  • Marin Cionca2/16/2016 6:34:53 PM

    In IPRs, patentees have to show that substitute patent claims are patentable

    More

  • I. Kim PhD2/26/2016 8:47:51 PM

    The U.S. Supreme Court Will Review Claim Construction Standards and Institution Decision Reviewability.

    More

  • Iris Kim, PhD3/25/2016 8:34:14 PM

    Challenging a Claim’s Validity with Different Standards of Claim Construction

    More

  • Marin Cionca5/17/2016 8:57:23 PM

    Patent Claims Rejection Based on Inherency

    More

  • Iris Kim, PhD6/1/2016 7:04:50 PM

    The Patent Trial and Appeal Board Designates Five More Decisions as Precedential

    More

  • Marin Cionca9/6/2016 9:26:12 PM

    Patent Case Law: New Example of Software as Patentable Subject Matter

    More

  • Marin Cionca9/15/2016 9:47:39 PM

    Patent Law Alert: Federal Circuit Opens Door for More Software Patents

    More

  • Marin Cionca2/21/2017 12:30:52 AM

    Software Patent Law Update: Federal Circuit Finds Graphical User Interface Patentable

    More

  • Marin Cionca4/25/2017 9:48:49 PM

    Monetization of Patents: How to Make Money with Patents

    More

  • CIONCA - Staff6/15/2017 5:32:14 PM

    Patent Law: Challenging the Patent Claim Definiteness Requirement

    More

  • CIONCA - Staff6/28/2017 8:26:07 PM

    Patent Law: Conditions Precedent May Expose Method Claim to Broad Interpretation During Prosecution

    More

  • CIONCA - Staff8/9/2017 5:39:58 PM

    Patent Case Study: The Novelty Of An “Invention” Is NOT Enough To Make It Patentable

    More

  • CIONCA Staff8/20/2017 3:16:11 PM

    CIONCA on Patents: Think Twice Before Suing for Patent Infringement and Fight Back when Unreasonably Sued

    More

  • staff9/15/2017 9:33:30 PM

    cionca

    More

  • staff9/27/2017 5:00:12 PM

    Claim Indefiniteness During Patent Pre-Issuance: Define Your Invention, Not Just Your Audience

    More

  • staff9/27/2017 5:12:07 PM

    CIONCA - Patent and Trademark Law Attorney

    More

  • Staff9/28/2017 7:27:22 PM

    CIONCA

    More

  • Staff11/3/2017 4:20:04 PM

    An Introduction to Provisional Patent Applications

    More

  • 11/10/2017 6:47:44 PM

    An Introduction to Design Patent Applications

    More

  • 11/17/2017 1:24:20 PM

    An Introduction to Patent Searches

    More

  • 12/1/2017 8:01:27 PM

    An Introduction to Patent Cooperation Treaty Applications

    More

  • 12/26/2017 6:04:25 PM

    CIONCA Sets Foot in San Francisco

    More

  • 1/2/2018 7:47:09 PM

    The Lanham Act: Disparagement Provision Violates the First Amendment

    More

  • CIONCA Team1/17/2018 8:12:06 PM

    A Fork in the Road: Production or Protection?

    More

  • CIONCA Team2/16/2018 4:07:48 PM

    Fashion and Intellectual Property

    More

  • 3/8/2018 1:25:46 PM

    Proceed with Caution: Consider Carefully when Narrowing Claims for Allowance

    More

  • 3/20/2018 12:50:05 PM

    Andrei Iancu - New Director of the USPTO

    More

  • CIONCA Staff4/13/2018 9:10:04 PM

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

    More

  • CIONCA Staff4/20/2018 5:25:25 PM

    USPTO Changes Examination Procedure Pertaining to Subject Matter Eligibility in View of Berkheimer v. HP, Inc.

    More

  • 5/4/2018 7:37:51 PM

    The Hague System for Protection of International Designs

    More

  • CIONCA IP5/17/2018 9:54:58 PM

    Marin Cionca Presents at OCIPLA May 2018 Luncheon

    More

  • 7/3/2018 7:44:33 PM

    Impax Laboratories Inc. v Lannett Holdings Inc. on Claim Invalidation

    More

  • Marin Cionca7/31/2018 6:50:05 PM

    My patent expired? Can I still sue for patent infringement?

    More

  • Staff8/16/2018 4:24:01 PM

    Correcting or Changing a Patent After Issue Through the Central Reexamination Unit

    More

  • Staff8/31/2018 7:26:58 PM

    Patent Claim Interpretation By Federal Circuit's on Facebook's Contiguous Image Layout

    More

  • CIONCA Team Member9/17/2018 4:33:20 PM

    Trademarks and Likelihood of Confusion: Federal Circuit’s Decision in In re: Detroit Athletic Co.

    More

  • Marin Cionca10/1/2018 7:42:12 PM

    Can I Register a Color as a Trademark or Service Mark?

    More

  • CIONCA Team Member10/16/2018 6:50:31 PM

    A Double-Edged Sword: Benefit of Priority or Longer Patent Term

    More

  • CIONCA Team Member11/19/2018 1:07:51 PM

    The Appeals Process

    More

  • Marin Cionca12/8/2018 8:35:06 PM

    IP Assets - Procurement, Enforcement, Monetization

    More

  • CIONCA Team Member12/18/2018 6:12:48 PM

    Schlafly v. The Saint Louis Brewery: The Registration of Merely a Surname

    More

  • CIONCA Team Member1/4/2019 4:12:21 PM

    In re: Tropp: New Matter in a Continuation Can Be Relevant to Written Description Requirement

    More

  • Marin Cionca1/23/2019 9:45:30 PM

    Patent Law Alert: All Sales of the Invention, Including Secret Sales May Invalidate a Patent

    More

  • CIONCA Team Member2/5/2019 7:22:27 PM

    TiVo Puts Tivoli on Pause: TTAB’s Decision in TiVo Brands LLC v. Tivoli, LLC

    More

  • CIONCA Team Member2/19/2019 7:12:46 PM

    Revised Guidance by USPTO on Patent Subject Matter Eligibility and Examining Computer-Implemented Functional Claims

    More

  • Marin Cionca3/1/2019 9:36:50 PM

    USPTO Director Andrei Iancu Visits Orange County!

    More

  • CIONCA Team Member3/21/2019 3:49:43 PM

    Defining Inherency: A Decision in Personal Web Technologies, LLC v. Apple, Inc.

    More

  • CIONCA Team Member4/3/2019 7:25:37 PM

    The Patent Trial and Appeal Board (PTAB) Designates Three Decisions Precedential

    More

  • Marin Cionca4/17/2019 3:48:33 PM

    What Qualifies as Proper Use in Commerce Claim in a USPTO Trademark Application?

    More

  • CIONCA Team Member5/7/2019 7:13:41 PM

    The Federal Circuit Defines a Technological Invention

    More

  • CIONCA Team Member5/20/2019 8:25:57 PM

    PTAB Designates Cases as Precedential

    More

  • Marin Cionca6/11/2019 8:43:17 PM

    Can I Successfully License My Invention?

    More

  • CIONCA Team Member6/27/2019 7:41:52 PM

    Obviousness in a Single Prior Art Instance: Game and Technology Co., LTD., v. Activision Blizzard INC., Riot Games, INC.

    More

  • CIONCA Team Member7/5/2019 2:22:42 PM

    In re: Global IP Holdings LLC: Broadening Claims Through Reissue Applications

    More

  • CIONCA Team Member8/5/2019 2:29:33 PM

    Is Speculation Enough Evidence for an Appeal?: General Electric Company v. United Technologies Corporation

    More

  • CIONCA Team Member8/19/2019 7:46:17 PM

    In re Yarnell Ice Cream, LLC: Trademark Descriptiveness and Acquired Distinction

    More

  • CIONCA Team Member9/4/2019 7:20:46 PM

    Guangdong Alison Hi-Tech Co. v. International Trade Commission: Objective Boundaries

    More

Marin Cionca, Esq.

Registered Patent Attorney

USPTO Reg. No. 63899

VERIFY

CONTACT INFO

About CIONCA® IP Law firm: We are an Orange County, CA based boutique intellectual property firm with a focus on patent and trademark application, prosecution, opinion, licensing and IP enforcement services, offering its IP services primarily at flat fee rates. We serve local OC clients, as well as clients throughout US and international clients.

HOME               

Let’s talk!

We’d love to hear from you…we just need a little info
about your plans to take over the world!

P.S…Feel free to call us! (800)985-9198