The Federal Circuit has been criticized in some circles for showing too much deference to the Patent Trial and Appeal Board (PTAB) at the United States Patent and Trademark Office. In recent months, however, the Federal Circuit has shown a greater willingness to take issue with PTAB decisions. This newfound willingness to play a more meaningful supervisory role, as is proper, was on display earlier this week in Nidec Motor v. Zhongshan Broad Ocean Motor.
The case presented to the Federal Circuit as an appeal from an inter partes review (“IPR”) involving Zhongshan Broad Ocean Motor Co. Ltd., Broad Ocean Motor LLC, and Broad Ocean Technologies, LLC (collectively “Broad Ocean”) and Nidec Motor Corp. (“Nidec”). Broad Ocean petitioned for IPR of claim 21 of Nidec’s U.S. Patent No. 7,208,895 (the “’895 patent”). The PTAB instituted the IPR and found that claim 21 was anticipated by U.S. Patent No. 5,569,995 (“Kusaka”). Nidec appealed. In an opinion authored by Judge Moore and joined by Judges Lourie and Taranto, the Federal Circuit determined the Board’s decision was not supported by substantial evidence and, therefore, reversed.
Nidec argued that not every element of claim 21 could be found in the Kusaka patent. The Federal Circuit agreed. Indeed, so too did the PTAB, at least to some extent.
The PTAB held that anticipation can be found even when a prior art reference does not disclose each and every claim element as long as one of skill in the relevant art would “at once envisage” the claimed arrangement, citing Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015). The Federal Circuit explained the PTAB fundamentally misinterpreted and misapplied the Court’s holding in Kennametal.
The Federal Circuit explained:
Kennametal does not stand for the proposition that a reference missing a limitation can anticipate a claim if a skilled artisan viewing the reference would “at once envisage” the missing limitation. Rather, Kennametal addresses whether the disclosure of a limited number of combination possibilities discloses one of the possible combinations. As we explained, the relevant question was “whether the number of categories and components disclosed in [the prior art reference] is so large that the combination of ruthenium and PVD coatings would not be immediately apparent to one of ordinary skill in the art.” Id. at 1382 (quoting Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1361 (Fed. Cir. 2012)) (quotations omitted). Kennametal does not permit the Board to fill in missing limitations simply because a skilled artisan would immediately envision them.
The PTAB’s decision in Nidec Motor represents a disturbing trend. The PTAB seems to be of the belief that one of skill in the art can fill in missing evidence. Here it was a missing element required to make up an anticipation rejection under 35 U.S.C. 102, previously the PTAB has allowed for missing evidence to be supplied by common sense. In both instances the Federal Circuit stepped in to reign in the PTAB. But how is it possible that the PTAB is managing to fundamentally misunderstand extremely basic patent law concepts? For there to be anticipation each and every element must be present, period. Close is not the same and PTAB judges should know that.