Power Integrations, Inc. v. Lee

United States Court of Appeals
for the Federal Circuit
______________________
POWER INTEGRATIONS, INC.,
Plaintiff-Appellant
v.
MICHELLE K. LEE, DIRECTOR, U.S. PATENT AND
TRADEMARK OFFICE,
Defendant-Appellee
______________________
2014-1123
______________________
Appeal from the United States District Court for the
District of Columbia in No. 1:11-cv-01254-BJR, Judge
Barbara Jacobs Rothstein.
______________________
Decided: August 12, 2015
______________________
HOWARD G. POLLACK, Fish & Richardson, P.C., Red-
wood City, CA, argued for plaintiff-appellant. Also repre-
sented by MICHAEL R. HEADLEY; CRAIG E. COUNTRYMAN,
San Diego, CA; FRANK SCHERKENBACH, Boston, MA.
AMY J. NELSON, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, argued for
defendant-appellee. Also represented by NATHAN K.
KELLEY, SCOTT WEIDENFELLER.
______________________
Before MOORE, MAYER, and LINN, Circuit Judges.
2 POWER INTEGRATIONS, INC. v. LEE
MAYER, Circuit Judge.
Power Integrations, Inc. (“Power Integrations”) chal-
lenges 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
remand.
BACKGROUND
The ’876 patent is entitled “Frequency Jittering Con-
trol for Varying the Switching Frequency of a Power
Supply.” It is directed to a technique for reducing elec-
tromagnetic interference by jittering the switching fre-
quency of a switched mode power supply. See ’876 patent
col.1 ll.66–67. Claim 1, as amended, recites:
A digital frequency jittering circuit for varying the
switching frequency of a power supply, compris-
ing:
an oscillator for generating a signal having a
switching frequency, the oscillator having a con-
trol input for varying the switching frequency;
a digital to analog converter coupled to the control
input for varying the switching frequency; and
a counter coupled to the output of the oscillator,
the digital to analog converter coupled to the
counter, the counter causing the digital to analog
converter to adjust the control input and to vary
the switching frequency of the power supply.
J.A. 710.
Claims 17, 18, and 19 relate to a method for varying
the switching frequency using a varying voltage to control
POWER INTEGRATIONS, INC. v. LEE 3
the oscillator. ’876 Patent col.9 ll.37–52. Independent
claim 17, as amended, requires “cycling a counter” to
generate a secondary voltage that varies over time:
A method for generating a switching frequency in
a power conversion system, comprising:
generating a primary voltage;
cycling a counter coupled to one or more second-
ary voltage sources to generate a secondary volt-
age which varies over time; and
combining the secondary voltage with the primary
voltage to be received at a control input of a volt-
age­controlled oscillator for generating the switch-
ing frequency of the power conversion system
which is varied over time.
J.A. 713.
In 2004, Power Integrations brought suit against
Fairchild Semiconductor International, Inc. and related
parties (collectively “Fairchild”) in the United States
District Court for the District of Delaware. It alleged that
Fairchild had willfully infringed the ’876 patent, as well
as United States Patent Nos. 4,811,075, 6,107,851, and
6,229,366. See Power Integrations, Inc. v. Fairchild
Semiconductor Int’l, Inc., 422 F. Supp. 2d 446, 448 (D.
Del. 2006), aff’d in part, rev’d in part, 711 F.3d 1348 (Fed.
Cir. 2013) (“Power Integrations I”). During claim con-
struction proceedings, Power Integrations argued that the
term “coupled” in claim 1 of the ’876 patent, when read in
light of the specification and surrounding claim language,
required that two circuits be connected in a manner “such
that voltage, current, or control signals pass from one to
another.” Id. at 455. It further contended that the “recit-
ed coupling” between the counter and the digital to analog
converter must be “present for the purposes of control.”
Id. (citations and internal quotation marks omitted).
Power Integrations made clear, however, that its pro-
4 POWER INTEGRATIONS, INC. v. LEE
posed construction did not require a direct connection
between circuit elements. Id. The district court adopted
Power Integrations’ proposed claim construction, conclud-
ing that it was “consistent with the claim language and
the context of the specification which describes the pur-
pose for which various parts of the claimed invention are
coupled.” Id. at 456. The court emphasized, moreover,
that its construction of the term “coupled” did not “require
a direct connection or . . . preclude the use of intermediate
circuit elements.” Id. In the wake of the trial court’s
claim construction, Fairchild withdrew its anticipation
defense, instead arguing at trial that U.S. Patent No.
4,638,417 (“Martin”) rendered claim 1 obvious.
In 2006, the trial court bifurcated the litigation,
separating issues of infringement and damages from
issues related to patent validity. A first jury found that
Fairchild had willfully infringed claim 1 of the ’876 pa-
tent, as well as several claims of the other asserted pa-
tents. After a trial on validity, a second jury returned a
verdict that claim 1 of the ’876 patent was not obvious in
view of Martin.
On appeal, this court affirmed the jury’s finding that
claim 1 of the ’876 patent was not invalid for obviousness.
See Power Integrations, Inc. v. Fairchild Semiconductor
Int’l, Inc., 711 F.3d 1348, 1366–69 (Fed. Cir. 2013) (“Pow-
er Integrations II”). We noted that the “salient difference”
between the ’876 patent and Martin is Martin’s inclusion
of an erasable programmable read only memory
(“EPROM”). Id. at 1366. We explained that Martin
always includes an EPROM between the counter and the
digital to analog converter and “does not teach removing
the EPROM . . . as in the ’876 Patent.” Id. at 1367. We
concluded, moreover, that “substantial evidence of objec-
tive considerations of non-obviousness [supported] the
jury’s conclusion that claim 1 of Power Integrations’ ’876
Patent would not have been obvious to the ordinarily
skilled artisan.” Id. at 1369.
POWER INTEGRATIONS, INC. v. LEE 5
In December 2006, while district court proceedings
were pending, the United States Patent and Trademark
Office granted Fairchild’s request for ex parte reexamina-
tion of claims 1, 17, 18, and 19 of the ’876 patent. J.A.
165–73. The board affirmed the examiner’s rejection of
claim 1 as anticipated by Martin, as well as by two addi-
tional references: (1) Thomas G. Habetler & Deepakraj
M. Divan, Acoustic Noise Reduction in Sinusoidal PWM
Drives Using a Randomly Modulated Carrier, 6 IEEE
TRANSACTIONS ON POWER ELECS. 356–63 (1991)
(“Habetler”); and (2) Andrew C. Wang & Seth R. Sanders,
Programmed Pulsewidth Modulated Waveforms for
Electromagnetic Interference Mitigation in DC-DC Con-
verters, 8 IEEE TRANSACTIONS ON POWER ELECS. 596–
605 (1993) (“Wang”). The board stated that Power Inte-
grations “appear[ed] to argue that one of ordinary skill in
the art would understand the term ‘coupled to’ to restrict
device connections to exclude intervening components.”
Power Integrations III, 2010 WL 5244756, at *4. The
board concluded, however, that the term meant simply to
“join[] devices into a single circuit,” and did not preclude
the presence of intervening components. Id. In addition,
the board rejected Power Integrations’ argument “that the
respective counters in Martin, Wang, and Habetler are
not coupled to the respective digital to analog converters
because all [Martin, Wang, and Habetler] disclose a [read
only memory (“ROM”)] separating a counter from a digital
to analog converter.” Id. (citations and internal quotation
marks omitted). In the board’s view, Martin, Wang, and
Habetler disclosed the limitations of claim 1 because they
joined a counter and a digital to analog converter in a
single circuit, and the counter “produce[d] a signal that
causes a digital to analog converter to adjust control input
by utilizing a corresponding memory, the counter (with
the corresponding memory) being ‘coupled to’ the digital
to analog converter.” Id.
6 POWER INTEGRATIONS, INC. v. LEE
The board also affirmed the examiner’s rejection of
claims 17, 18, and 19 as anticipated by Habetler. In light
of its construction of the term “coupled to” in claim 1, the
board rejected Power Integrations’ argument that
Habetler did not anticipate claims 17, 18, and 19 because
it contains an EPROM between the counter and the
digital to analog converter. Id. at *5. The board likewise
rejected Power Integrations’ argument that Habetler fails
to disclose primary and secondary voltage sources. Id. at
*6. According to the board, both the output from the
digital to analog converter and the “average slope” of
Habetler are voltage signals. Id. The board asserted that
“Habetler discloses that [pulse width modulator (“PWM”)]
schemes utilize discrete tones in the voltage spectrum and
that the output from PWM circuitry are waveforms with
voltage amplitudes . . . thus confirming that the PWM
circuitry processes voltage waveforms to obtain output
voltage waveforms.” Id. (citations and internal quotation
marks omitted).
In February 2011, Power Integrations filed a request
for rehearing with the board pursuant to 37
C.F.R. § 41.52. It argued that the board had “misappre-
hended” its argument regarding the proper construction
of the term “coupled to” in claim 1 of the ’876 patent,
explaining that it had never contended that the term
precluded the presence of intermediate circuit elements
between the counter and the digital to analog converter.
J.A. 935. Power Integrations further asserted that the
board erred in finding that claims 17, 18, and 19 were
anticipated by Habetler because that reference did not
“disclose, teach or fairly suggest that the output of the
[digital to analog] converter of FIG. 5 is a voltage, that the
‘average slope’ signal of FIG. 5 is a voltage, or that the
input of the Triangle Generator of FIG. 5 is a voltage.”
J.A. 952. Power Integrations argued, moreover, that the
board had improperly shifted the burden of proof by
POWER INTEGRATIONS, INC. v. LEE 7
applying a presumption that Habetler’s average slope
was a voltage. J . A. 9 5 1 .
In May 2011, the board denied Power Integrations’
request for rehearing. See Ex parte Power Integrations,
Inc., No. 2010-011021, 2011 WL 1821718 (B.P.A.I. May
10, 2011) (“Power Integrations IV”). It rejected the con-
tention that it had misapprehended Power Integrations’
argument about the proper construction of the term
“coupled.” Id. at *1. The board stated that “even assum-
ing that [Power Integrations’] contention that elements
are ‘coupled’ with the presence of ‘intervening compo-
nents’ is true, and further assuming that [Power Integra-
tions’] 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 Integra-
tions’] proposed analysis.” Id. As to claims 17, 18, and
19, the board withdrew any statements implying that it
had shifted the burden to Power Integrations to prove
that Habetler’s average slope was not a voltage source.
Id. at *2. The board reiterated, however, its previous
conclusion that Habetler discloses output data that are
voltage waveforms with voltage amplitudes. Id. at *2–3.
Power Integrations then filed suit in the United
States District Court for the District of Columbia chal-
lenging the board’s decision. See Power Integrations, Inc.
v. Kappos, 6 F. Supp. 3d 11 (D.D.C. 2013) (“Power Integra-
tions V”). After correctly determining that it lacked
subject matter jurisdiction, see In re Teles AG Infor-
mationstechnologien, 747 F.3d 1357, 1364–66 (Fed. Cir.
2014), the district court transferred the case to this court
pursuant to 28 U.S.C. § 1631, see Power Integrations V, 6
F. Supp. 3d at 24. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
8 POWER INTEGRATIONS, INC. v. LEE
DISCUSSION
A. Standard of Review
We review the legal conclusions of the board de novo.
In re Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004). In an
appeal from the board, anticipation is a question of fact
which we review for substantial evidence. In re Antor
Media Corp., 689 F.3d 1282, 1287 (Fed. Cir. 2012); In re
Gleave, 560 F.3d 1331, 1334–35 (Fed. Cir. 2009). In
assessing whether a claim is anticipated under 35 U.S.C.
§ 102, “[a] single prior art reference that discloses, either
expressly or inherently, each limitation of a claim invali-
dates that claim by anticipation.” Perricone v. Medicis
Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005).
B. The Board’s Anticipation Rejections
Proceedings of the board are governed by the Admin-
istrative Procedure Act (“APA”), 5 U.S.C. §§ 702, 704,
which “establishes a scheme of reasoned decisionmaking,”
Allentown Mack Sales & Serv., Inc. v. NLRB, 522 U.S.
359, 374 (1998) (citations and internal quotation marks
omitted); see Dickinson v. Zurko, 527 U.S. 150, 154–65
(1999). Under the APA, the board is obligated not only to
come to a sound decision, but to fully and particularly set
out the bases upon which it reached that decision. In re
Sang-Su Lee, 277 F.3d 1338, 1342 (Fed. Cir. 2002); see
Gechter v. Davidson, 116 F.3d 1454, 1457 (Fed. Cir. 1997).
To permit effective appellate review, the board’s patenta-
bility analyses must be both “clearly disclosed and ade-
quately sustained.” Sec. & Exch. Comm’n v. Chenery
Corp., 318 U.S. 80, 94 (1943); see In re Thrift, 298 F.3d
1357, 1364 (Fed. Cir. 2002) (emphasizing that the board is
required to “document its reasoning on the record to allow
accountability” and to facilitate “effective judicial re-
view”); Gechter, 116 F.3d at 1457 (explaining that the
board’s reasoning must be set out with sufficient specifici-
ty to enable this court, “without resort to speculation,” to
effectively evaluate an anticipation rejection); Mullins v.
POWER INTEGRATIONS, INC. v. LEE 9
Dep’t of Energy, 50 F.3d 990, 992 (Fed. Cir. 1995) (“It is
well established that agencies have a duty to provide
reviewing courts with a sufficient explanation for their
decisions so that those decisions may be judged against
the relevant statutory standards, and that failure to
provide such an explanation is grounds for striking down
the action.”).
Here, however, the board fundamentally miscon-
strued Power Integrations’ principal claim construction
argument and failed to provide a full and reasoned expla-
nation 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 sur-
rounding claim language, requires that the counter it-
self—not a pre-programmed memory—controls the digital
to analog converter’s output to vary the switching fre-
quency. 1 Br. of Plaintiff-Appellant 9, 18–20; Power Inte-
grations 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 volt-
age, current, or control signals to instruct the digital to
analog converter. See Power Integrations I, 422 F. Supp.
2d at 455 (“Power Integrations contends that two circuits
are coupled when they are connected such that voltage,
current, or control signals pass from one to another,” with
“the recited coupling . . . present for the purposes of
control” (citations and internal quotation marks omitted));
J.A. 896 (“[Power Integrations] respectfully submits that
1 In Habetler, Wang, and Martin, the prior art ref-
erences cited by the board, a memory (either a ROM or an
EPROM) separates the digital to analog converter and the
counter. See Power Integrations III, 2010 WL 5244756, at
*3–5.
10 POWER INTEGRATIONS, INC. v. LEE
the proper claim interpretation by one skilled in the art of
the term ‘coupled to’ in the context of the surrounding
claim language and the specification would result in two
circuits being coupled when they are connected such that
voltage, current or control signals pass from one to anoth-
er for the purposes of control.”). Power Integrations has
repeatedly made clear, however, that its proposed claim
construction does not preclude the presence of intervening
components between the counter and the digital to analog
converter. See Power Integrations I, 422 F. Supp. 2d at
455 (emphasizing that Power Integrations’ proposed
interpretation of the term “coupled” did not require a
“direct connection” between the counter and the digital to
analog converter); J.A. 897 (“[Power Integrations] wishes
to clarify that [its] construction of the term ‘coupled’
should not be read to imply or necessitate a direct, physi-
cal connection, as . . . the specification [does not] require a
direct connection or . . . preclude the use of intermediate
circuit elements.”).
The district court adopted Power Integrations’ pro-
posed construction of the term “coupled,” concluding that
it was “consistent with the claim language and the con-
text of the specification which describes the purpose for
which various parts of the claimed invention are coupled.”
Power Integrations I, 422 F. Supp. 2d at 456. During
reexamination, however, the board failed to acknowledge
the district court’s claim construction or to assess whether
its interpretation of the term “coupled” was consistent
with the broadest reasonable construction of the term.
Instead, the board devoted a substantial portion of its
analysis to resolving the question of whether the term
“coupled” requires a direct connection between the coun-
ter and the digital to analog converter. Power Integra-
tions III, 2010 WL 5244756, at *3–5. Relying on a
generalist dictionary definition, the board concluded that
no such direct connection is required because “the plain
POWER INTEGRATIONS, INC. v. LEE 11
and customary meaning” of the term “couple” is simply to
“join[] devices into a single circuit.” Id. at *4.
As noted above, however, when Power Integrations
was before the board it repeatedly acknowledged that the
term “coupled” does not preclude the presence of interven-
ing components between the counter and the digital to
analog converter. Thus, a significant portion of the
board’s opinion is devoted to rejecting an argument that
Power Integrations not only never made, but instead
expressly disavowed. Because so much of the board’s
analysis is focused on a red herring—the issue of whether
there can be intervening components between the counter
and the digital to analog converter—it failed to adequate-
ly evaluate Power Integrations’ primary argument, which
is that the “coupled” limitation requires that the counter
pass control signals, voltage, or current to the digital to
analog converter to control it, and that the presence of a
memory programmed with data specifying how to vary
the switching frequency “uncouples” the counter and the
digital to analog converter and severs the requisite con-
trol relationship between them. 2 See J.A. 782–83; 814–17,
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 summar-
ily rejected this argument, however, stating that even
accepting Power Integrations’ “contention that elements
are ‘coupled’ with the presence of ‘intervening compo-
nents’ . . . and further assuming that [Power Integra-
tions’] assertion that Habetler discloses an intervening
element (i.e., an EPROM) between a counter and a con-
12 POWER INTEGRATIONS, INC. v. LEE
828, 858. In short, the board failed to straightforwardly
and thoroughly assess the critical issue of whether claim
1, when viewed in light of the specification and the sur-
rounding claim language, requires the counter itself—and
not the counter and a memory functioning together—to
drive the digital to analog converter to adjust the control
input and to vary the switching frequency of the power
supply. 3 See J.A. 817–19, 823; see also ’876 patent col.1
ll.62–63 (explaining that adding “extra components” to
reduce electromagnetic interference is “undesirabl[e]”
because it “increase[s] the size and weight of the power
supply”). Because the board’s opinion provides us with an
inadequate predicate upon which to evaluate its decision
to reject claim 1 of the ’876 patent as anticipated, we
vacate and remand. See Sec. & Exch. Comm’n v. Chenery
Corp., 332 U.S. 194, 196–97 (1947) (“It will not do for a
court to be compelled to guess at the theory underlying
the agency’s action.”); Thrift, 298 F.3d at 1366 (vacating a
verter is also true, it follows that Habetler would disclose
a counter ‘coupled to’ a converter under [Power Integra-
tions’] proposed analysis.” Power Integrations IV, 2011
WL 1821718, at *2.
3 Before the board, Power Integrations argued that
in the prior art the counter itself does not send any sig-
nals to the digital to analog converter. J.A. 818–29.
Instead, the counter’s signals are sent to the memory.
Thus, in Power Integrations’ view, in prior art systems
the digital to analog converter is “coupled to” receive the
output of the memory, not the output of the counter. J.A.
352, 358. The board, however, failed to adequately ad-
dress whether the counter can be deemed “coupled to” the
digital to analog converter to “caus[e]” it to adjust the
control input and to vary the switching frequency of the
power supply, ’876 Patent col.8 ll.51–53, even if the coun-
ter does not directly—or even primarily—control the
digital to analog converter’s output.
POWER INTEGRATIONS, INC. v. LEE 13
board decision because it “failed to provide an adequate
ground” for rejecting a claim); see also Walls v. United
States, 582 F.3d 1358, 1368 (Fed. Cir. 2009) (remanding a
personnel decision to the military board and requiring it
to act on a completed record).
Relying in part upon its construction of the term “cou-
pled” in claim 1, the board determined that claims 17, 18,
and 19 were anticipated by Habetler. See Power Integra-
tions III, 2010 WL 5244756, at *5. Because we vacate the
board’s construction of the “coupled” limitation in claim 1,
we likewise vacate and remand its anticipation rejections
of claims 17, 18, and 19.
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 deter-
mination 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”).
We conclude, moreover, that under the circumstances
presented here, the board erred in failing to address the
district court’s previous interpretation of the term “cou-
14 POWER INTEGRATIONS, INC. v. LEE
pled.” There is no dispute that the board is not generally
bound by a prior judicial construction of a claim term. See
In re Trans Tex. Holdings Corp., 498 F.3d 1290, 1298
(Fed. Cir. 2007). Indeed, in reexamination it applies a
different claim construction standard than that applied by
a district court, affording claims “their broadest reason-
able interpretation consistent with the specification.” In
re NTP, Inc., 654 F.3d 1279, 1287 (Fed. Cir. 2011) (cita-
tions 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 repeat-
edly argued that the district court’s claim construction
was the only reasonable interpretation of claim 1’s “cou-
pled” limitation when it was viewed in light of the sur-
rounding claim language and the specification. J.A. 817
(“[T]he patent owner respectfully submits that a reasona-
ble person having ordinary skill in the art would under-
stand that when the claim is interpreted [in] the context
of the specification and surrounding claim language, as
required, two circuits are ‘coupled to’ each other when
there is a connection defined between the two circuits
such that a voltage, current or control signal passes from
one circuit to the other[,] which is the manner in which
4 Fairchild did not appeal the district court’s con-
struction of the term “coupled” in claim 1 of the ’876
patent. In 2013, after the board had denied Power Inte-
grations’ request for rehearing, this court affirmed a jury
verdict finding, based on the district court’s claim con-
struction, that claim 1 of the ’876 patent was not invalid
for obviousness. See Power Integrations II, 711 F.3d at
1366–68.
POWER INTEGRATIONS, INC. v. LEE 15
the claim terms were construed by the District Court.”);
see also J.A. 720, 722, 808, 818, 821, 832, 876–77. The
board, however, declined to address—or even
acknowledge—the district court’s claim construction.
Given that Power Integrations’ principal argument to the
board about the proper interpretation of the term “cou-
pled” was expressly tied to the district court’s claim
construction, we think that the board had an obligation,
in these circumstances, to evaluate that construction and
to determine whether it was consistent with the broadest
reasonable construction of the term.
We do not hold that the board must in all cases assess
a previous judicial interpretation of a disputed claim
term. Nor do we express any view on the merits of Power
Integrations’ proposed construction of the term “coupled
to.” We hold only that the board on remand should care-
fully 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 appel-
late 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 suffi-
cient for a meaningful review”).
CONCLUSION
Accordingly, the decision of the Board of Patent Ap-
peals and Interferences is vacated and the case is re-
manded for further proceedings consistent with this
opinion.
COSTS
Power Integrations shall have its costs.
16 POWER INTEGRATIONS, INC. v. LEE
VACATED AND REMANDED