  United States Court of Appeals
      for the Federal Circuit
                 ______________________

           KNOWLES ELECTRONICS LLC,
                   Appellant

                            v.

    ANDREI IANCU, UNDER SECRETARY OF
  COMMERCE FOR INTELLECTUAL PROPERTY
   AND DIRECTOR OF THE UNITED STATES
     PATENT AND TRADEMARK OFFICE,
                  Intervenor
            ______________________

                       2016-1954
                 ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 95/001,850.
                  ______________________

                 Decided: April 6, 2018
                 ______________________

    RICHARD L. RAINEY, Covington & Burling LLP, Wash-
ington, DC, argued for appellant. Also represented by
BRIAN GERARD BIELUCH, MICHAEL S. SAWYER, CYRIL
DJOUKENG.

    MOLLY R. SILFEN, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, argued for
intervenor. Also represented by NATHAN K. KELLEY,
THOMAS W. KRAUSE, MEREDITH HOPE SCHOENFELD; MARK
2                               KNOWLES ELECS. LLC v. IANCU




R. FREEMAN, Appellate Staff, Civil Division, United States
Department of Justice, Washington, DC.
                ______________________

    Before NEWMAN, CLEVENGER, and WALLACH, Circuit
                       Judges.
    Opinion for the court filed by Circuit Judge WALLACH.
     Dissenting opinion filed by Circuit Judge NEWMAN.
WALLACH, Circuit Judge.
    Appellant Knowles Electronics LLC (“Knowles”) ap-
peals the inter partes reexamination decision of the U.S.
Patent and Trademark Office’s (“USPTO”) Patent Trial
and Appeal Board (“PTAB”) that affirmed an examiner’s
findings that (1) claims 1–2, 5–6, 9, 11–12, 15–16, and 19
of U.S. Patent No. 8,018,049 (“the ’049 patent”) are un-
patentable as anticipated; and (2) claims 21–23 and 25–26
of the ’049 patent would have been obvious over various
prior art references. Analog Devices, Inc. v. Knowles
Elecs. LLC (Analog Devices I), No. 2015-004989, 2015 WL
5144183, at *7, *9 (P.T.A.B. Aug. 28, 2015); see Analog
Devices, Inc. v. Knowles Elecs. LLC (Analog Devices II),
No. 2015-004989, 2016 WL 675856, at *7 (P.T.A.B. Feb.
17, 2016) (denying request for rehearing). 1 We have
jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A) (2012). 2
We affirm.



     1  Third-party requester Analog Devices, Inc. de-
clined to defend the judgment in its favor. See Letter
from Appellee Analog Devices, Inc. 1, ECF No. 2. Pursu-
ant to 35 U.S.C. § 143 (2012), the Director of the USPTO
intervened and participated at oral argument. See Notice
of Intervention 1, ECF No. 11.
    2   We have an independent obligation to satisfy our-
selves that we have jurisdiction. Bender v. Williamsport
KNOWLES ELECS. LLC v. IANCU                                3



                       BACKGROUND
                     I. The ’049 Patent
    The ’049 patent, entitled “Silicon Condenser Micro-


Area Sch. Dist., 475 U.S. 534, 541 (1986). The Dissent
questions whether the USPTO has Article III standing to
“continue the litigation,” let alone participate, “when it
has asserted no injury to itself.” Dissent at 2. There is no
dispute Knowles has standing since its patent has been
judged unpatentable and therefore it has presented “a
justiciable case or controversy.” ASARCO Inc. v. Kadish,
490 U.S. 605, 618 (1989). The Director of the USPTO has
an unconditional statutory “right to intervene in an
appeal from a [PTAB] decision.” 35 U.S.C. § 143; see
Leahy-Smith America Invents Act, Pub. L. No. 112-29,
§7(e), 125 Stat. 284, 315 (2011) (stating that the Director’s
right to intervene “shall be deemed to extend to inter
partes reexaminations that are requested under section
311 of such title before the effective date” of the America
Invents Act). Our precedent allows the USPTO to inter-
vene to defend a PTAB decision when a petitioner with-
draws on appeal, necessarily implying jurisdiction. See,
e.g., NFC Tech., LLC v. Matal, 871 F.3d 1367, 1371 (Fed.
Cir. 2017); In re NuVasive, Inc., 842 F.3d 1376, 1379 n.1
(Fed. Cir. 2016); In re Cuozzo Speed Techs., LLC, 793 F.3d
1268, 1272 (Fed. Cir. 2015), aff’d sub nom., Cuozzo Speed
Techs., LLC v. Lee, 136 S. Ct. 2131, 2143–44 (2016). We
follow the Supreme Court guidance in Cuozzo that “the
[USPTO] may intervene in a later Judicial proceeding to
defend its decision—even if the private challengers drop
out.” 136 S. Ct. at 2144; cf. Pers. Audio, LLC v. Elec.
Frontier Found., 867 F.3d 1246, 1249 (Fed. Cir. 2017)
(reaffirming that “[w]ith Article III satisfied as to the
appellant, [the appellee] is not constitutionally excluded
from appearing in court to defend the PTAB decision in its
favor”). The Director of the USPTO, thus, has standing.
4                              KNOWLES ELECS. LLC v. IANCU




phone and Manufacturing Method,” generally discloses a
silicon condenser microphone apparatus, including a
housing for shielding a transducer, used in certain types
of hearing aids to protect the transducer from outside
interferences. See ’049 patent, Abstract; id. col. 1 ll. 17–
19, 26–30, 46–51. The components of the microphone
apparatus, i.e., “package,” may specifically be processed
“in panel form” that can be separated later into individual
units. See id. col. 3 ll. 10–19. As a result, the invention
purportedly improves over the prior art’s “drawbacks
associated with manufacturing these housings, such as
lead time, cost, and tooling.” Id. col. 1 ll. 39–41.
    Independent claim 1 is representative of the appa-
ratus claims and discloses:
    A silicon condenser microphone package compris-
    ing:
       a package housing formed by connecting a
       multi-layer substrate comprising at least
       one layer of conductive material and at
       least one layer of non-conductive material,
       to a cover comprising at least one layer of
       conductive material;
       a cavity formed within the interior of the
       package housing;
       an acoustic port formed in the package
       housing; and
       a silicon condenser microphone die dis-
       posed within the cavity in communication
       with the acoustic port;
       where the at least one layer of conductive
       material in the substrate is electrically
       connected to the at least one layer of con-
       ductive material in the cover to form a
       shield to protect the silicon condenser mi-
KNOWLES ELECS. LLC v. IANCU                             5



         crophone die against electromagnetic in-
         terference.
Id. col. 12 ll. 16–31. Independent claim 21 is representa-
tive of the method claims and discloses:
    A method of manufacturing a silicon condenser
    microphone package comprising:
         providing a panel comprising a plurality of
         interconnected package substrates, where
         each of the plurality of package substrates
         comprises at least one layer of conductive
         material and at least one layer of non-
         conductive material;
         attaching a plurality of silicon condenser
         microphone dice to the plurality of pack-
         age substrates, one die to each package
         substrate;
         attaching a plurality of package covers,
         each comprising at least one layer of con-
         ductive material, to the panel, one pack-
         age cover to each of the package
         substrates, where attaching the plurality
         of package covers to the panel comprises
         electrically connecting the at least one
         layer of conductive material in the pack-
         age cover to the at least one layer of con-
         ductive material in the corresponding
         package substrate to form a shield to pro-
         tect the silicon condenser microphone die
         against electromagnetic interference; and
         separating the panel into a plurality of in-
         dividual silicon condenser microphone
         packages.
Id. col. 13 l. 34–col. 14 l. 18.
6                              KNOWLES ELECS. LLC v. IANCU




                       DISCUSSION
    Knowles argues that the PTAB erred in two respects.
First, Knowles argues that the PTAB improperly con-
strued “package,” including by failing to consider this
court’s construction of package for a related patent. See
Appellant’s Br. 58–73. Second, Knowles argues that the
PTAB improperly relied on a new ground of rejection to
sustain the Examiner’s obviousness findings. See id. at
74–80. After stating the applicable standard of review
and legal framework, we address these arguments in
turn. 3
                  I. Claim Construction
        A. Standard of Review and Legal Standard
    “We review the [PTAB]’s ultimate claim construction
in a reexamination de novo.” In re CSB-Sys. Int’l, Inc.,
832 F.3d 1335, 1340 (Fed. Cir. 2016) (citing, inter alia,
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831,
840–41 (2015)). A patent’s specification, together with its
prosecution history, 4 constitutes intrinsic evidence to


    3   Knowles also avers that the PTAB erred in find-
ing certain claims of the ’049 patent anticipated by a prior
art reference. See Appellant’s Br. 74. Because Knowles’s
anticipation argument is conditioned upon its claim
construction argument, see id., which we find unpersua-
sive, we need not separately address it, see GrafTech Int’l
Holdings, Inc. v. Laird Techs. Inc., 652 F. App’x 973, 983
(Fed. Cir. 2016) (“Because we conclude that the PTAB did
not err in its construction of [the disputed limitation], we
need not address [the appellant]’s conditional arguments
as to the PTAB’s [unpatentability] determinations.”
(footnote omitted)).
    4   A patent’s prosecution history “consists of the
complete record of the proceedings before the [US]PTO,”
and “provides evidence of how the [US]PTO and the
KNOWLES ELECS. LLC v. IANCU                                 7



which the PTAB gives priority when it construes claims.
See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292,
1297–98 (Fed. Cir. 2015), overruled on other grounds by
Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017)
(en banc). We review the PTAB’s assessment of intrinsic
evidence de novo. See id. When the PTAB “look[s] beyond
the patent’s intrinsic evidence and . . . consult[s] extrinsic
evidence,” Teva, 135 S. Ct. at 841, such as expert testimo-
ny, dictionaries, and treatises, those underlying findings
amount to factual determinations that we review for
“substantial evidence,” Microsoft Corp., 789 F.3d at 1297.
Substantial evidence means “relevant evidence [that] a
reasonable mind might accept as adequate to support a
conclusion.” Consol. Edison Co. v. NLRB, 305 U.S. 197,
229 (1938) (citations omitted). “If two inconsistent con-
clusions may reasonably be drawn from the evidence in
record, the PTAB’s decision to favor one conclusion over
the other is the epitome of a decision that must be sus-
tained upon review for substantial evidence.” Elbit Sys. of
Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1537
(Fed. Cir. 2018) (internal quotation marks, brackets, and
citation omitted).
     “During reexamination proceedings of unexpired pa-
tents . . . the [PTAB] uses the ‘broadest reasonable inter-
pretation consistent with the specification’ standard, or
BRI.” In re CSB-Sys., 832 F.3d at 1340 (citation omitted);
cf. Cuozzo, 136 S. Ct. at 2145 (acknowledging the PTAB’s
use of BRI during reexamination). “Accordingly, this
court reviews the reasonableness of the [US]PTO’s dis-
puted claim term interpretations.” In re Bigio, 381 F.3d
1320, 1324 (Fed. Cir. 2004) (internal quotation marks and
citation omitted). However, “[e]ven under the [BRI], the



inventor understood the patent.” Phillips v. AWH Corp.,
415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc) (citations
omitted).
8                              KNOWLES ELECS. LLC v. IANCU




[PTAB]’s construction cannot be divorced from the specifi-
cation and the record evidence . . . and must be consistent
with the one that those skilled in the art [(‘PHOSITA’)]
would reach.” Microsoft Corp., 789 F.3d at 1298 (internal
quotation marks and citations omitted).
    B. The PTAB Did Not Err in Its Claim Construction
     On appeal, Knowles maintains that the PTAB has
“failed to resolve critical claim construction disputes
regarding the meaning of the term ‘package.’” 5 Appel-
lant’s Br. 58; see id. at 58–62. Specifically, Knowles avers
that we “should direct the [PTAB] to adopt the definition
of ‘package’ in MEMS Technology and follow the analysis
therein, construing ‘package’ to require a second-level
connection with a mounting mechanism.” 6 Id. at 62


    5    The term “package” appears in the preamble of
the claims. See ’049 patent col. 12 l. 16 (claim 1), col. 13
l. 35 (claim 21). A preamble is limiting when it “recit[es]
additional structure or steps underscored as important by
the specification.” Catalina Mktg. Int’l, Inc. v. Coolsav-
ings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (cita-
tions omitted). The parties do not contest that the term
limits the claims. See generally Appellant’s Br.; Interve-
nor’s Br.
     6   Although Knowles uses the term “mounting
mechanism” on appeal, it argued for only connections
using through-hole or surface mounts below to connect to
an external printed circuit board. See Analog Devices I,
2015 WL 5144183, at *5. Knowles now concedes that
“package” does not require connection to an external
printed circuit board. See Reply Br. 9 (“[Th[e] issue [of
whether a ‘package’ requires a connection to a printed
circuit board] was never disputed before the [PTAB].”);
Oral Arg. at 5:05–18, http://oralarguments.cafc.uscourts.
gov/default.aspx?fl=2016-1954.mp3 (Q: “Neither con-
struction required that the package be connected to a
KNOWLES ELECS. LLC v. IANCU                                 9



(emphasis added) (citing MEMS Tech. Berhad v. Int’l
Trade Comm’n, 447 F. App’x 142, 159 (Fed. Cir. 2011));
see id. at 62–72.
     The PTAB construed “package” as “a structure con-
sisting of a semiconductor device, a first-level intercon-
nect system, a wiring structure, a second-level
interconnection platform, and an enclosure that protects
the system and provides the mechanical platform for the
sublevel.” Analog Devices II, 2016 WL 675856, at *3; see
id. (“[B]ased upon this definition, we construed the claim
term ‘package’ as broad enough to encompass the trans-
ducer assembly . . . of [a prior art reference] Halter[e]n.”);
Analog Devices I, 2015 WL 5144183, at *4 (citing the
same definition of package in the Final Written Decision).
This definition does not require any specific mounting
mechanism or use of mounting in the second-level connec-
tion. The PTAB also specifically rejected Knowles’s
proffered claim construction that “a package is mechani-
cally and electrically connected to a printed circuit board
by either through-hole or surface mounting.” Id. at *7
(internal quotation marks and citation omitted). We
agree with the PTAB’s construction of “package.”
     We begin with the words of the claims themselves.
See Phillips, 415 F.3d at 1314–15. The claims of the ’049
patent do not disclose any particular type of required
second-level interconnection.     See ’049 patent col. 12
ll. 16–31 (claim 1), col. 13 l. 21–col. 14 l. 18 (claim 21).
While dependent claim 15 contains additional limitations
that “include an element” that could be used for mount-


printed circuit board?” A: “[W]e’ve not taken the position
that a printed circuit board . . . is required.”). We thus
interpret Knowles’s proposed claim construction to mean
mounting to any second-level connection (circuit board or
otherwise) by use of the through-hole or surface mount
techniques.
10                              KNOWLES ELECS. LLC v. IANCU




ing, such as “circuitry, ground planes, solder pads, . . .
capacitors[,] and through hole pads,” id. col. 13 ll. 9–13,
these limitations, by the doctrine of claim differentiation,
cannot apply to limit independent claims 1 or 21, see
Phillips, 415 F.3d at 1315 (“[T]he presence of a dependent
claim that adds a particular limitation gives rise to a
presumption that the limitation in question is not present
in the independent claim.”).
     The ’049 patent’s specification similarly does not limit
the invention to any particular type of second-level con-
nection. See ’049 patent col. 1 l. 1–col. 12 l. 13. The
specification describes one embodiment in which micro-
phone packages are not mounted via through-hole or
surface mount but instead are “coupled” together without
mention of a mounting mechanism. See id. col. 11 l. 62–
col. 12 l. 7 (describing a package in which “conductive
traces may be formed in the various layers of either the
top or bottom portion thus allowing multiple microphones
to be electrically coupled”); see also J.A. 2903 (explaining
by Analog Devices’ expert that through-hole and surface
mounting “are merely two of many other ways for making
[an] interconnection”). Knowles’s proffered construction
would improperly read this embodiment out of the patent.
See Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313,
1320 (Fed. Cir. 2005) (“A claim construction that does not
encompass a disclosed embodiment is . . . rarely, if ever,
correct.” (alteration in original) (internal quotation marks
and citation omitted)). Finally, the parties do not identify
any disclosures in the prosecution history that would aid
in the construction of the term. See generally Appellant’s
Br.; Intervenor’s Br.
    We have held that, in some circumstances, previous
judicial interpretations of a disputed claim term may be
relevant to the PTAB’s later construction of that same
disputed term. See Power Integrations, Inc. v. Lee, 797
F.3d 1318, 1327 (Fed. Cir. 2015). While “the [PTAB] is
not generally bound by a previous judicial interpretation
KNOWLES ELECS. LLC v. IANCU                               11



of a disputed claim term[, this] does not mean . . . that it
has no obligation to acknowledge that interpretation or to
assess whether it is consistent with the [BRI] of the
term.” Id. at 1326 (footnote omitted). Here, contrary to
Knowles’s arguments, the PTAB considered a previous
interpretation of the term and properly determined its
claim construction was consistent with the term’s BRI. In
fact, the PTAB explained that it “adopt[ed] a claim con-
struction nearly identical to the construction adopted by
the Federal Circuit in MEMS Technology.” Analog Devic-
es II, 2016 WL 675856, at *3 (citation omitted). While we
note that there were different claims at issue in MEMS
Technology, (i.e. the patent, in part, explicitly claimed a
“surface mountable package”), the construction reviewed
by our court in our affirmance of the U.S. International
Trade Commission’s anticipation and obviousness find-
ings still did not require “package” to be limited to con-
structions with through-hole or surface mounting. See
447 F. App’x at 159 (“[A PHOSITA] would know that a
‘package’ is a self-contained unit that has two levels of
connection, to the device and to a circuit (or other system)”
(emphasis added) (internal quotation marks and citation
omitted)). The addition of “or other system” used to
evaluate the disputed claims in MEMS Technology com-
ports with the construction of “package” with a broad
“second-level connection” as adopted by the PTAB in this
case. 7
    Finally, we turn to the extrinsic evidence. See Phil-
lips, 415 F.3d at 1317−19. Knowles asks us to look to one



    7   Knowles’s argument that the PTAB did not ad-
dress MEMS Technology until its rehearing decision, see
Appellant’s Br. 64, does not change this result. Power
Integrations did not require the PTAB to evaluate prior
constructions at any particular stage of review. See 797
F.3d 1318.
12                             KNOWLES ELECS. LLC v. IANCU




particular piece of evidence that states that “[i]n general,
[integrated circuit] packages can be classified into two
categories:    1) through-hole, and 2) surface mount.”
Appellant’s Br. 70 (first emphasis added) (quoting J.A.
750). The PTAB found the use of the phrase “in general”
“permits for possible exceptions” because it describes
integrated packages in a non-limiting fashion. Analog
Devices I, 2015 WL 5144183, at *5. We find that the
PTAB’s interpretation of this piece of extrinsic evidence is
reasonable. Knowles further asks the court to look to
extrinsic evidence such as certain treatise references
describing common categories for mounting in microphone
apparatuses to form second-level connections as through
the hole and surface mount components. See Appellant’s
Br. 69−72. This extrinsic evidence cannot overcome the
intrinsic evidence. See Phillips, 415 F.3d at 1318–19.
               II. New Ground of Rejection
       A. Standard of Review and Legal Standard
    “Whether the [PTAB] relied on a new ground of rejec-
tion is a legal question that we review de novo.” In re
Stepan Co., 660 F.3d 1341, 1343 (Fed. Cir. 2011). “When
considering whether the [PTAB] issued a new ground of
rejection, the ultimate criterion of whether a rejection is
considered new in a decision by the [PTAB] is whether
applicants have had fair opportunity to react to the thrust
of the rejection.” In re Biedermann, 733 F.3d 329, 337
(Fed. Cir. 2013) (internal quotation marks and citation
omitted). The PTAB is not limited to “recit[ing] and
agree[ing] with the examiner’s rejection in haec verba”;
indeed, it may “further explain[] the examiner’s rejection”
and thoroughly “respond[] to an applicant’s argument.”
Id. (internal quotation marks and citation omitted).
However, if the PTAB “finds facts not found by the exam-
iner regarding the differences between the prior art and
the claimed invention, and these facts are the principal
evidence upon which the [PTAB]’s rejection was based,”
KNOWLES ELECS. LLC v. IANCU                                13



then the PTAB improperly enters a new ground of rejec-
tion. In re Leithem, 661 F.3d 1316, 1320 (Fed. Cir. 2011)
(citation omitted).
B. The PTAB Did Not Rely on a New Ground of Rejection
    Knowles argues that the PTAB erred in affirming the
Examiner’s determination that claims 21–23 and 25–26
would have been obvious over U.S. Patent No. 6,594,369
(“Une”) in view of U.S. Patent No. 6,327,604 (“Halteren”).
See Appellant’s Br. 74–80. Specifically, Knowles contends
that the PTAB’s finding regarding the motivation to
combine Une with Halteren “does not appear anywhere in
the Examiner’s decision,” such that “[t]he Examiner never
compared Halteren’s and Une’s modes of operations in his
obviousness determination.” Id. at 77. 8 Knowles there-
fore contends the PTAB has relied upon a new ground of
rejection because “the [PTAB]’s new modes-of-operation
rationale” set forth on appeal “was not previously raised
to the applicant by the Examiner.” Reply Br. 30 (capitali-
zation modified); Appellant’s Br. 77–78 (internal quota-
tion marks and citation omitted).
     Having reviewed the record below, we hold that the
PTAB did not rely upon a new ground of rejection in its
motivation to combine analysis. When rejecting the
claims, the Examiner stated, in relevant part, that: “Une
does not disclose that the condenser microphone is a
silicon condenser microphone.              However, Hal-
teren . . . shows a package including a silicon condenser
microphone . . . .” J.A. 69–70 (citing Halteren col. 5 ll. 10–
13). The Examiner went on to state that “[i]t would have
been obvious to [a PHOSITA] at the time . . . the inven-
tion was made to use the silicon condenser microphone of



    8  Knowles does not dispute the findings made by
the PTAB that Une and Halteren together teach all of the
claimed steps. See Appellant’s Br. 56–74.
14                             KNOWLES ELECS. LLC v. IANCU




Halteren in Une’s invention because the substitution of
one known element for another would have yield[ed]
predictable results.” J.A. 70 (citing KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 416 (2007)).
     In reaching its decision, the PTAB also relied on the
similarities between Une’s capacitor microphone and
Halteren’s silicon condenser microphone. The PTAB
found that both types of microphones operate using the
movement of a diaphragm with respect to a fixed elec-
trode. See Analog Devices I, 2015 WL 5144183, at *7
(discussing Une as “including diaphragm 4 and fixed
electrode 6, and solid state device 8,” where sound is
measured by this solid state device, which “converts
changes in capacity caused by a sound wave vibration into
a voltage or current” (citations omitted)); id. (discussing
Halteren’s silicon microphone as “send[ing] output signals
to [integrated circuit] 62” and finding that, in combination
with “solid state device 8 of Une convert[ing] capacitance
measured from electret capacitor microphone,” “both
Halteren and Une apply similar modes of operation by
converting measured vibration into electrical signals”).
Therefore, the PTAB found that a PHOSITA would un-
derstand it was possible to switch the microphone dis-
closed in Une for that in Halteren to achieve the claimed
invention. See id.
    The PTAB’s rejection relied on the same reasons pro-
vided by the Examiner, albeit using slightly different
verbiage. Compare id. (“We agree with the Examiner’s
determination. . . . Combining Une and Halteren is no
more than the simple substitution of the known silicon
microphone 61 of Halteren for the known electret capaci-
tor microphone of Une, to yield predictable results.”), with
J.A. 70 (“It would have been obvious to [a PHOSITA] to
use the silicon condenser microphone of Halteren in Une’s
invention because the substitution of one known element
for another would have yield[e]d predictable results.”).
Thus, it is not the case that the PTAB “f[ound] facts not
KNOWLES ELECS. LLC v. IANCU                             15



found by the [E]xaminer regarding the differences be-
tween the prior art and the claimed invention,” In re
Leithem, 661 F.3d at 1320 (citation omitted), and, as such,
the PTAB’s decision does not contain a new ground of
rejection.
    Moreover, Knowles had a fair opportunity to respond
to this rejection, which is the “ultimate criterion” for
finding no new ground of rejection. Id. at 1319 (internal
quotation marks and citation omitted). Knowles respond-
ed in its appeal to the PTAB that the Examiner’s rejection
based on “substitution with predictable results” was
incorrect because, inter alia, the capacitor microphone of
Une would not be understood by a PHOSITA as a substi-
tute for Halteren’s condenser microphone. See J.A. 2793.
Knowles’s response demonstrates that it had sufficient
notice of this particular rejection and took advantage of
its opportunity to respond. See In re Adler, 723 F.3d
1322, 1328 (Fed. Cir. 2013) (finding no new ground of
rejection “[b]ecause [appellant] had the opportunity to
respond, and in fact did respond, to the thrust of the
examiner’s basis for rejecting the claims”). 9



   9     Knowles argues that the PTAB erred in denying
its request for rehearing because the PTAB improperly
deemed Knowles to have waived its arguments related to
differences between electret microphones and MEMS
microphones due to Knowles’s failure to raise them before
the PTAB. See Appellant’s Br. 79–80; see also Analog
Devices II, 2016 WL 675856, at *5. The PTAB did not err
in finding these arguments waived. See In re Watts, 354
F.3d 1362, 1367 (Fed. Cir. 2004) (“[O]ur review of the
[PTAB]’s decision is confined to the ‘four corners’ of that
record [below]. . . . [I]t is important that the applicant
challenging a decision not be permitted to raise argu-
ments on appeal that were not presented to the [PTAB].”
(citation omitted)).
16                         KNOWLES ELECS. LLC v. IANCU




                    CONCLUSION
    We have considered Knowles’s remaining arguments
and find them unpersuasive. Accordingly, the Final
Written Decision of the U.S. Patent and Trademark
Office’s Patent Trial and Appeal Board is
                    AFFIRMED
  United States Court of Appeals
      for the Federal Circuit
                ______________________

          KNOWLES ELECTRONICS LLC,
                  Appellant

                           v.

    ANDREI IANCU, UNDER SECRETARY OF
  COMMERCE FOR INTELLECTUAL PROPERTY
   AND DIRECTOR OF THE UNITED STATES
     PATENT AND TRADEMARK OFFICE,
                  Intervenor
            ______________________

                      2016-1954
                ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 95/001,850.
                ______________________
NEWMAN, Circuit Judge, dissenting.
    On this appeal, there is no appellee. The Petitioner,
Analog Devices, Inc., prevailed in the PTO, where the
Patent Trial and Appeal Board (PTAB) invalidated all of
the challenged claims. 1 On appeal by Knowles Electron-


   1   Analog Devices, Inc. v. Knowles Elecs. LLC,
No. 2015-004989, 2015 WL 5144183 (P.T.A.B. Aug. 28,
2015); Analog Devices Inc. v. Knowles Elecs. LLC,
No. 2015-004989, 2016 WL 675856 (P.T.A.B. Feb. 17,
2016).
2                                KNOWLES ELECS. LLC v. IANCU




ics LLC (“Knowles”), the petitioner declined to appear,
filed no brief and offered no argument. Dkt. No. 2 (Letter
from Analog Devices, Inc., May 4, 2016). The PTO Direc-
tor intervened in the appeal “as of right,” filed a brief in
support of the petitioner’s position, and appeared at oral
argument as “intervenor.”
    However, in the rare situation where there is no re-
maining appellee and the intervenor has asserted no
injury to itself, the intervenor of right does not have
independent standing to continue the litigation. And even
when a party with standing remains on the side in which
the intervenor joins, “an intervenor of right must have
Article III standing in order to pursue relief that is differ-
ent from that which is sought by a party with standing.”
Town of Chester v. Laroe Estates, Inc., 137 S. Ct. 1645,
1651 (2017). The “requirement of injury in fact is a hard
floor of Article III jurisdiction that cannot be removed by
statute.” Summers v. Earth Island Inst., 555 U.S. 488,
498 (2009). I raise this concern in this case, for this
appeal was abandoned by the prevailing party, leaving no
platform for the intervenor to continue the litigation.
From my colleagues’ contrary ruling, I respectfully dis-
sent.
The Statutory Authorization to Intervene
    The America Invents Act authorizes the PTO Director
to intervene in appeals to the Federal Circuit from desig-
nated classes of inter partes proceedings:
    The Director shall have the right to intervene in
    an appeal from a decision entered by the Patent
    Trial and Appeal Board in a derivation proceeding
    under section 135 or in an inter partes or post-
    grant review under chapter 31 or 32.
KNOWLES ELECS. LLC v. IANCU                               3



35 U.S.C. § 143 (2012). 2 An administrative agency’s
intervention in judicial proceedings enables exploration of
matters of agency concern such as the agency’s jurisdic-
tion or procedures or regulations. The legislative record
provides no hint that Congress and the interested public
may have contemplated intervention beyond the protocols
established in law and precedent.
    If it were indeed intended that the Director would en-
ter the appeal and litigate the merits of the appellee’s
case although the appellee has quit the contest, surely
some mention of this irregular purpose would have ap-
peared in the legislative record. See Whitman v. Am.
Trucking Ass’ns, Inc., 531 U.S. 457, 468 (2001) (“Con-
gress, we have held, does not alter the fundamental
details of a regulatory scheme in vague terms or ancillary
provisions—it does not, one might say, hide elephants in
mouseholes.”).
     Following argument of this appeal, we requested ad-
ditional briefing on this aspect. Knowles’ brief accepts the
PTO Director’s intervention, but objects to the Director’s
filing of thirty-four pages of additional evidence upon
intervening. The Director states that he does not need
Article III standing to intervene, and that in all events he
has Article III standing. The panel majority bases the
Director’s Article III standing on the America Invents Act
provision that authorizes the Director to intervene.
Maj. Op. 2 n.2. However, as I shall discuss, when no
party remains on the side taken by the intervenor, and
the intervenor asserts no injury of its own, an intervenor
does not meet the requirements of Article III jurisdiction.


   2     Inter partes reexaminations requested before the
effective date of the America Invents Act are grandfa-
thered therein. Leahy–Smith America Invents Act, Pub.
L. No. 112-29 § 7(e)(4), 125 Stat. 284, 315 (2011). The
instant action is in that category.
4                              KNOWLES ELECS. LLC v. IANCU




The AIA, in authorizing intervention, did not and could
not create Article III jurisdiction in circumstances where
Article III jurisdiction is absent.
    “Federal courts are not courts of general jurisdiction;
they have only the power that is authorized by Article III
of the Constitution and the statutes enacted by Congress
pursuant thereto.” Bender v. Williamsport Area Sch.
Dist., 475 U.S. 534, 541 (1986) (citing Marbury v. Madi-
son, 5 U.S. (1 Cranch) 137, 173–180 (1803)). A defect in
standing is a defect in subject matter jurisdiction, for
“standing in its most basic aspect can be one of the con-
trolling elements in the definition of a case or controversy
under Article III.” ASARCO Inc. v. Kadish, 490 U.S. 605,
613 (1989); see Hollingsworth v. Perry, 570 U.S. 693, 705
(2013) (stating that “standing ‘must be met by persons
seeking appellate review, just as it must be met by per-
sons appearing in courts of first instance.’” (quoting
Arizonans for Official English v. Arizona, 520 U.S. 43, 64
(1997))); United States v. Cotton, 535 U.S. 625, 630 (2002)
(“[S]ubject-matter jurisdiction . . . can never be forfeited
or waived.”).
    It seems clear that the statutory authorization to the
PTO Director to intervene was not intended to change the
rules of intervenor standing. In an article following
enactment of the AIA, former Director Matal observed
that this provision received scant legislative attention.
See Joe Matal, A Guide to the Legislative History of the
America Invents Act: Part II, 21 Fed. Cir. B.J. 539, 543
(2012) (“Section 7(c)(3) of the AIA amends § 143 of title 35
to allow the Director to intervene in a Federal Circuit
appeal of the PTAB’s decision in a derivation proceeding
or in an inter partes or post-grant review. Senator Kyl
noted this provision in passing during the March 2011
debates on the bill.” (citing 157 Cong. Rec. S1377 (daily
ed. Mar. 8, 2011))).
KNOWLES ELECS. LLC v. IANCU                                5



    This silence in the legislative record suggests that the
intervenor proposal was not viewed as controversial, or as
changing the intervenor’s role. I doubt that Congress and
the public intended silently to cast aside Constitution-
based precedent such as Diamond v. Charles, where the
Supreme Court explained that “an intervenor’s right to
continue a suit in the absence of the party on whose side
intervention was permitted is contingent upon a showing
by the intervenor that he fulfills the requirements of
Article III.” 476 U.S. 54, 68 (1986).
    The America Invents Act’s grant to the PTO Director
of the right of intervention is consistent with the general
rule that litigation solely by an intervenor is not permit-
ted unless the intervenor is itself injured by the conduct
at issue. “Injury in fact is a constitutional requirement,
and ‘[i]t is settled that Congress cannot erase Article III’s
standing requirements by statutorily granting the right to
sue to a plaintiff who would not otherwise have stand-
ing.’” Spokeo, Inc. v. Robins 136 S. Ct. 1540, 1547–48
(2016) (alteration in original) (quoting Raines v. Byrd, 521
U.S. 811, 820 n.3 (1997)). The principle that a plaintiff
“must demonstrate standing for each claim he seeks to
press and for each form of relief that is sought” also
“applies to intervenors of right.” Town of Chester, 137 S.
Ct. at 1650–51 (quoting Davis v. Fed. Election Comm’n,
554 U.S. 724, 734 (2008)).
    In elaborating on whether an intervenor may continue
the litigation when no party remains on that side of the
case, the Court has explained:
    The presence of a disagreement, however sharp
    and acrimonious it may be, is insufficient by itself
    to meet Art. III’s requirements. This Court con-
    sistently has required, in addition, that the party
    seeking judicial resolution of a dispute “show that
    he personally has suffered some actual or threat-
6                              KNOWLES ELECS. LLC v. IANCU




    ened injury as a result of the putatively illegal
    conduct” of the other party.
Diamond, 476 U.S. at 62 (quoting Gladstone Realtors v.
Vill. of Bellwood, 441 U.S. 91, 99 (1979)).
    Precedent is clear, that when an intervenor is the only
entity remaining on its side of the dispute, the intervenor
must have an interest sufficient to satisfy Article III in
order to continue the litigation. Where, as here, the PTO
Director as intervenor is requesting this court to affirm
the PTAB decision, although no party is requesting this
action, an independent PTO interest or injury is required,
such as a challenge to PTO jurisdiction or procedure. 3 As


    3   An example of appropriate intervention is seen in
In re Cuozzo Speed Techs., LLC, 793 F.3d 1268
(Fed. Cir. 2015), where the PTO Director intervened
although the appellee had withdrawn. The PTO defended
the PTAB’s decision on the merits, defended its regulation
authorizing application of the “broadest reasonable inter-
pretation” in post-grant proceedings, and also argued in
support of the AIA provision barring judicial review of
PTO institution decisions. On Cuozzo’s petition, the
Supreme Court granted certiorari to review these general
aspects, and recaptioned the case to include the Director
as respondent, viz., Cuozzo Speed Techs., LLC v. Lee, 136
S. Ct. 2131 (2016) (deciding the regulatory and statutory
aspects).
    The majority here notes that it is “follow[ing] the Su-
preme Court guidance in Cuozzo” on PTO intervention.
Maj. Op. 2, n.2. I note, however, that the Supreme Court
did not address intervenor standing in Cuozzo; the Court
mentioned PTO intervention solely in the context of
comparing inter partes review to district court litigation,
in discussing the PTO’s adoption of the “broadest reason-
able interpretation.” See Cuozzo, 136 S. Ct. at 2144. Nor
did Personal Audio, LLC v. Electronic Frontier Founda-
KNOWLES ELECS. LLC v. IANCU                                7



stated in Phigenix, Inc. v. Immunogen, Inc., the “‘irreduci-
ble constitutional minimum of standing’ consists of ‘three
elements’”: (1) injury-in-fact, (2) causation, and (3) re-
dressability. 845 F.3d 1168, 1171 (Fed. Cir. 2017) (quot-
ing Lujan v. Defs. of Wildlife, 504 U.S. 555, 560 (1992)).
The PTO has not met this minimum, or attempted to do
so. The PTO intervenor brief simply argues the un-
patentability of the Knowles claims; the PTO asserts no
injury or threatened injury to itself.
     It is not disputed that Knowles, the losing party in the
PTAB inter partes proceeding, has experienced injury and
has standing to appeal. The Director states in its sup-
plemental brief that this alone suffices for PTO intervenor
standing to continue the appeal when there is no appellee.
PTO Suppl. Br. 6 (stating that “Knowles [ ] has a concrete,
personalized stake in the outcome” and as such, “[n]othing
more is required under Article III”). It is correct that
Knowles has a stake in the outcome, and the right to
appeal. However, the PTO errs in stating that Knowles’
stake provides Article III standing to the PTO as interve-
nor. In Diamond v. Charles the Court was explicit in
stating “an intervenor’s right to continue a suit in the
absence of the party on whose side intervention was
permitted is contingent upon a showing by the intervenor
that he fulfills the requirements of Article III.” 476 U.S.
at 68. Here no party to the PTO proceeding remains on
the intervenor’s side of the appeal. Precedent requires
that unless the intervenor itself has a sufficient interest
in the outcome, the intervenor does not have “standing to
litigate” and continue the action. Arizonans, 520 U.S. at
64.



tion concern intervenor standing, for Electronic Frontier
Foundation was a party in the PTAB and the appellee on
appeal, not an intervenor. 867 F.3d 1246, 1249–50 (Fed.
Cir. 2017).
8                                KNOWLES ELECS. LLC v. IANCU




     The Director states that “[t]he courts do not inquire
into the standing of a party that is not seeking separate
affirmative relief.” PTO Suppl. Br 1. However, the Direc-
tor is not a “party.” “A ‘party’ to litigation is ‘[o]ne by or
against whom a lawsuit is brought.’” U.S. ex rel. Eisen-
stein v. City of N.Y., 556 U.S. 928, 933–34 (2009) (quoting
Black’s Law Dictionary 1154 (8th ed. 2004)). Although
“[a]n individual may also become a ‘party’ by intervening
in the action,” id., party status does not flow from the act
of intervening, but from the requirements of Article III
standing. An entity may not “invoke the authority of a
federal court” unless it has standing. DaimlerChrysler v.
Cuno, 547 U.S. 332, 342 (2006). The statutory grant of
intervention does not alone provide party status to the
intervenor. See Town of Chester, 137 S. Ct. at 1650–51;
Spokeo, 136 S. Ct. at 1547–48 (“Congress cannot erase
Article III’s standing requirements by statutorily granting
the right to sue to a plaintiff who would not otherwise
have standing.”).
    The question is not whether the PTO Director is au-
thorized to intervene in appeals under the America In-
vents Act.       The question is whether, with that
authorization, the PTO intervenor can continue to litigate
the appellee’s position when the appellee has dropped out
and the intervenor has no independent interest or injury.
Precedent answers in a clear negative: when no party
remains on that side of the case, the intervenor must have
independent standing in order to “continue a suit in
the[ir] absence.” Diamond, 476 U.S. at 68; see Lujan, 504
U.S. at 576-77 (“[T]here is absolutely no basis for making
the Article III inquiry turn on the source of the asserted
right. Whether the courts were to act on their own, or at
the invitation of Congress, in ignoring the concrete injury
requirement described in our cases, they would be dis-
carding a principle fundamental to the separate and
distinct constitutional role of the Third Branch.”).
KNOWLES ELECS. LLC v. IANCU                                 9



    The Director argues that “[t]he presence of one party
with standing is sufficient to satisfy Article III’s case-or-
controversy requirement” and states that although an
appellant must have Article III standing, “[o]ther parties,
such as defendants, appellees, or intervenors who are not
seeking affirmative relief, need not have constitutional
standing for a case to proceed.” PTO Suppl. Br. 4. That is
not the situation before us. Here there is no party on the
petitioner’s side of the litigation, no appellee to defend the
PTAB decision in its favor. Thus, constitutional standing
is required of the intervenor. The Director’s citation of
Rumsfeld v. Forum for Academic and Institutional Rights,
Inc., 547 U.S. 47, 52 n.2 (2006) is inapt, for Rumsfeld does
not deal with whether an intervenor without an interest
can continue the case when there is no appellee.
Rumsfeld addressed whether an association of law schools
had constitutional standing to bring suit on behalf of its
members; intervenor standing was not an issue.
    The PTO also cites ASARCO Inc. v Kadish, 490 U.S.
605, 618 (1989) to support the position that standing for
the Director as intervenor is not required. PTO Suppl.
Br. 5. ASARCO too is inapt; that action was brought by
“various individual taxpayers and the Arizona Education
Association” who sought “a declaration that the state
statute governing mineral leases on state lands is void,
and also seeking appropriate injunctive relief.” Id. at 610
(internal citation omitted). The question was whether
“the case should be dismissed for lack of standing, since
neither respondent taxpayers nor respondent teachers
association, who were the original plaintiffs, would have
satisfied the requirements for bringing suit in federal
court at the outset.” Id. at 612. There was no issue of
intervenor standing, for the mineral lessees who inter-
vened had, without dispute, sufficient interest and injury
for constitutional standing. The question of standing in
ASARCO related to federal/state jurisdiction, for the
action originated in the Arizona state courts. Id. at 610,
10                              KNOWLES ELECS. LLC v. IANCU




618. That case does not support intervenor standing in
the absence of any appellee, and when there is no injury
to the intervenor.
    The PTO states that “even if the USPTO had to show
Article III standing, for example if it were to seek relief
from a decision of this court, it has Article III standing to
participate in this case as the agency that made the
decision . . . .” PTO Suppl. Reply Br. 2–3. But the agency
that adjudicated a dispute between private parties does
not automatically have standing to continue to litigate the
appeal as intervenor, after the appellee has quit the
contest. For the agency to continue to litigate a terminat-
ed dispute, it must have standing as a disputant.
    The PTO cites Ingalls Shipbuilding, Inc. v. Director,
Office of Workers’ Compensation Programs, Department of
Labor, 519 U.S. 248 (1997), for the proposition that an
agency may participate in an appeal from its own deci-
sion. PTO Suppl. Br. 8–9. However, Ingalls was not a
question of intervention. In Ingalls the Director of the
Office of Workers’ Compensation Programs was the
respondent in an appeal to the court by “[a]ny person
adversely affected or aggrieved by a final order of the
Board.” Id. at 263 (quoting 33 U.S.C. § 921(c)). In con-
trast, here the PTO Director is not the respondent.
    The Director also argues that the public interest pro-
vides the PTO with “Article III standing to appear in this
Court to advocate for the correct application of the federal
patent laws.” PTO Suppl. Br. 9–11. The Director quotes
from In re Debs, 158 U.S. 564, 584 (1895): “As the Su-
preme Court has recognized, ‘[t]he obligations which [the
United States] is under to promote the interest of all, and
to prevent the wrongdoing of one resulting in injury to the
general welfare, is often of itself sufficient to give it a
standing in court.’” PTO Suppl. Br. 9 (alteration in origi-
nal). In re Debs was a petition to the Supreme Court for a
writ of habeas corpus from contempt charges originating
KNOWLES ELECS. LLC v. IANCU                                11



in violations of a district court’s injunction that prohibited
railroad union officers from, among other actions, “at-
tempting to compel or induce” employees to “refuse or fail
to perform any of their duties” with the railroads. Id. at
570–71. The Court upheld the injunction as a constitu-
tional exercise of power by the federal government in
preventing obstruction of interstate commerce. Id. at
599–600. There are no parallels to the case at hand.
    Applying the established rules, unless the Director as
intervenor has a concrete and particularized interest such
as responding to a challenge to agency jurisdiction or
regulations or procedures, the PTO does not have authori-
ty as intervenor to litigate when there is no appellee or
respondent. If a purpose of the America Invents Act were
to enlarge the government’s authority to challenge patent
validity, such a dramatic change cannot be inferred from
legislative silence.
New Evidence Submitted by the PTO as Intervenor
    Knowles challenges the PTO’s position that as inter-
venor it can submit “significant new evidence discussing
extra-record technology.” Knowles Suppl. Br. 1; 5–10.
The Director, on intervening, filed a Supplemental Ap-
pendix containing thirty-four pages of documents not
previously in evidence, from various textbooks and refer-
ence works that had been cited by Knowles at the PTAB
hearing.
    Knowles cites Michigan v. EPA for the “foundational
principle of administrative law that a court may uphold
agency action only on the grounds that the agency in-
voked when it took the action.” 135 S. Ct. 2699, 2710
(2015) (citing S.E.C. v. Chenery Corp., 318 U.S. 80, 87
(1943) (“Chenery I”)). For administrative proceedings,
“the focal point for judicial review should be the adminis-
trative record already in existence, not some new record
made initially in the reviewing court.” Camp v. Pitts, 411
12                             KNOWLES ELECS. LLC v. IANCU




U.S. 138, 142 (1973). These thirty-four pages were not in
the administrative record.
     The PTO states that since these textbooks and refer-
ence works were referred to by Knowles, who placed some
pages in evidence, the Director “should be able to respond
to those assertions based on the entire books and not be
forced to rely on that party’s characterization of thou-
sands of pages of text.” Intervenor’s Opp’n to Appellant’s
Mot. to Strike Portions of Suppl. App. 7. Knowles states
that these books indeed contain thousands of pages, and
that the filing of thirty-four newly selected pages by the
Director intervening on appeal leaves Knowles with “no
opportunity to introduce rebuttal factual and expert
evidence and with this Court having to act as a court of
first instance in the Board’s stead.” Knowles Suppl. Br. 1.
    No reading of the America Invents Act signals a legis-
lative intent to depart from the principle of administra-
tive review set forth in Chenery I. See S.E.C. v. Chenery
Corp., 332 U.S. 194, 196 (1947) (“Chenery II”) (stating the
principle that review is based on the record before the
agency is “a simple but fundamental rule of administra-
tive law”). The Patent Act is explicit that the Federal
Circuit must “review the decision from which an appeal is
taken on the record before the Patent and Trademark
Office.” 35 U.S.C. § 144; see Fla. Power & Light Co. v.
Lorion, 470 U.S. 729, 743–44 (1985) (“The task of the
reviewing court is to apply the appropriate APA standard
of review, 5 U.S.C. § 706, to the agency decision based on
the record the agency presents to the reviewing court.”).
    If new evidence is deemed important for consideration
on appeal, the proper course is to request remand to the
agency tribunal, to assure that there is an appropriate
opportunity to respond.
KNOWLES ELECS. LLC v. IANCU                           13



                      CONCLUSION
    I respectfully dissent from my colleagues’ position.
Intervention is designed to permit participation by enti-
ties with interests in the matter before the court. When
the intervenor does not have an independent interest or
injury, and no party remains as appellee on the side
favored by the intervenor, the requirements of intervenor
status are not met.
