KNOWLES ELECTRONICS LLC v. ANDREI IANCU, 16-1954, decided April 6, 2018

U.S. Patent No. 8,018,049, directed to a silicon condenser microphone creatable as a panel with later separation.

 “Package” of the claims is argued to include a mounting mechanism based on an unrelated Fed. Cir. decision interpreting silicon related “package” for a different patent (pages 8-9).  According to the Fed. Cir., the claims themselves do not require the package to have such an interconnection, and claim differentiation indicates that the independent claims do not include the interconnection (pages 9-10).  The specification includes an embodiment without mounting, so reading this embodiment out of the patent is not desired (page 10).  Consideration of other interpretation in another case is acceptable, but is done in light of differences in the claims and specification (pages 10-11).

Hindsight: The use of the other decision was likely one of expediency in an attempt to define a term in the patent.  The prosecutor would not have had control over that decision.  This may be worth an attempt before the appeal board or examiner though.  The commonality of the two decisions seems to indicate that prosecutors for semiconductor-related applications should include disclosure related to mounting of any package and include dependent claims directed to mounting of the packaging.  Such a dependent claim was included in this case, but apparently not in a way that would be useful.  In general, it is good to address even known uses directly related to the invention in the specification and claims.  In this case, the invention is really directed to creating the silicon condenser microphones as a panel, so the mounting upon separation is a little removed.