Federal Circuit invalidates another patent upheld at PTAB after IPR

By Steve Brachmann & Gene Quinn
August 9, 2017

Judge Dyk

Judge Dyk

On Friday, August 4th, the U.S. Court of Appeals for the Federal Circuit issued a decision in Homeland Housewares, LLC v. Whirlpool Corporation, which ought to be completely unnerving to every owner of a U.S. patent grant. Hearing an appeal from a decision of the Patent Trial and Appeal Board (PTAB), the panel voted 2-1 in favor of Homeland Housewares and overturned a final written decision that had confirmed that challenged claims from a Whirlpool patent were valid. So even when a patent owner manages to escape the clutches of the PTAB and prevails no patent is ever truly safe any longer.

The Whirlpool patent before the Federal Circuit, which had the validity of the claims upheld at PTAB, is U.S. Patent No. 7581688, titled Blender with Crushed Ice Functionality. The ‘688 patent claims a cycle of operation for a blender having a motor, a container and a cutter assembly in which the motor automatically controls the cutter assembly’s rotational speed to effect a pulsing, each pulse having a constant speed phase, a deceleration phase and an acceleration phase. The resulting invention addressed shortcomings in conventional blender devices with a crushed ice functionality as those other prior art devices would often result in ice that was either over or under crushed. Further, conventional devices had difficulties mixing crushed ice with other contents to an even consistency.

Whirlpool’s ‘688 patent faced one petition for inter partes review (IPR) at the PTAB, challenged by both Homeland Housewares and Capital Brand, LLC, in June 2014; Capital Brand is described as the parent company of Homeland Housewares in the original petition for inter partes review. Petitioner Homeland Housewares argued that claims 1 through 16 (i.e., all of the claims of the ‘688 patent) were invalid as anticipated subject matter under pre-America Invents Act (AIA) 35 U.S.C. § 102(b) governing the patentability of inventions based on novelty. The petition charged that the claims of the ‘688 patent were anticipated by a series of patents, including U.S. Patent No. 6609821, titled Blender Base with Food Processor Capabilities. Issued in August 2003 and assigned to Sunbeam Products of Boca Raton, FL, it claims a blender base with a reversible motor, a user interface and a microcontroller having memory including preprogrammed motor routines associated with different sequences of motor functions. The ‘821 patent describes shortcomings in conventional blending devices, including difficulties in achieving a satisfactory mixing of ice contents, which the invention was designed to address.

The final written decision in the IPR, which was issued in October 2015, found that petitioner Homeland Housewares did not prove that the challenged claims of the ‘688 patent were invalid. The final written decision notes that, during the trial, Whirlpool had challenged the PTAB panel’s construction of the term “settling speed,” arguing that the PTAB’s construction was incomplete because “it does not reflect the mechanism which allows the blender contents to be processed again.” In light of Whirlpool’s argument, supported by unrebutted testimony from an engineer of blender devices, the PTAB decided not to adopt any explicit construction of the term “settling speed” for the final written decision upholding validity of the challenged claims.

“Claim construction is an issue of law that we review de novo where, as here, there is no relevant extrinsic evidence,” the recent Federal Circuit decision reads, citing to the U.S. Supreme Court’s 2015 decision in Teva Pharmaceuticals USA v. Sandoz, Inc. The Federal Circuit majority opinion (written by Judge Dyk and joined by Chief Judge Prost) disagreed with the constructions of the “settling speed” claim offered by both Whirlpool and Homeland Housewares. The Federal Circuit held that the proper construction of the claim was a “speed that slows significantly enough to allow the contents to reach the ‘settled’ condition to be processed again.” The Federal Circuit majority found this to be the broadest reasonable construction of the claim consistent with the patent’s specification:

“Here… our claim construction is not new, but simply represents a midpoint between the two opposing constructions now urged by the parties. Significantly, this construction is also practically identical to the construction utilized by the Board in its Institution Decision.”

Using its construction of “settling speed,” the Federal Circuit majority opinion held that PTAB erred in finding that figure 25 of the ‘821 patent did not anticipate Whirlpool’s ‘688 patent. Analysis of “low speed” options depicted by figure 25 of the ‘821 patent led the Federal Circuit majority to find that the settling speed limitation depicted by the figure was consisted with the court’s construction as well as elements of the pulsing cycle claimed in Whirlpool’s ‘688 patent. As for the unrebutted testimony presented by Whirlpool, the Federal Circuit found that “we must disregard the testimony of an expert that is plainly inconsistent with the record.” Thus, all of the claims of Whirlpool’s ‘688 patent were invalidated by the Federal Circuit as anticipated by the ‘821 patent.

A dissenting opinion was given by Circuit Judge Pauline Newman:

The court today rewrites the claims of the ’688 patent, adopting a “claim construction” that states the invention more broadly than did the patentee. The court then holds its broadened claims anticipated by the prior art, on which the patentee has provided an improvement that is not shown in the prior art.

The court errs in its analysis of the subject matter that is claimed, and strays from the substantial evidence standard of review of PTAB findings of fact.

Judge Newman, in her dissent, stated that the PTAB correctly found that the claims of the ‘688 patent were not anticipated by the prior art. The anticipation finding in the court’s majority opinion “ignored the limitations in the ‘688 claims,” Newman wrote. “As the Board discussed, [the ‘821 patent] does not show the ’688 method whereby each pulse includes a predetermined operating speed, a deceleration phase to the settling speed, and an acceleration from the settling speed to the operating speed—all limitations in claim 1.”

While Judge Newman may be rightly disappointed in the how the majority ruled in this patent case, patent owners across the country ought to be downright mortified at the outcome. This case calls into question any idea that patent claims are considered valid even if they escape a final written decision by the PTAB. In recent months, we’ve raised the question as to whether 90 percent of patents challenged at the PTAB are invalid. In light of the Federal Circuit’s decision to overturn a final written decision after using a different claim construction, that 90 percent figure is starting to look generous. And this is the second time in less than one month that the Federal Circuit has saw fit to step in and overturn a final written decision issued by the PTAB that upheld the validity of patent claims.

The story told by this Whirlpool tale, which is becoming too common, is truly mind-boggling. An informed observer could easily conclude that both the Executive and Judicial branches of the federal government are doing their best to dismantle what should be Constitutionally-valid private property rights.

The Author

Steve Brachmann

Steve Brachmann is a writer located in Buffalo, New York. He has worked professionally as a freelancer for more than a decade. He has become a regular contributor to IPWatchdog.com, writing about technology, innovation and is the primary author of the Companies We Follow series. His work has been published by The Buffalo News, The Hamburg Sun, USAToday.com, Chron.com, Motley Fool and OpenLettersMonthly.com. Steve also provides website copy and documents for various business clients.

Steve Brachmann

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 11 Comments comments. Join the discussion.

  1. Tesia Thomas August 9, 2017 12:27 pm

    Ri-Dyk-ulous.
    Dyk move.
    What a Dyk!

    Ok. I’m done.
    This is disgusting.
    If IPR isn’t declared unconstitutional then there’s no hope left and we inventors all have to move if we want to be able to invent (predicated on valid patent rights.)

  2. Night Writer August 9, 2017 1:23 pm

    @1 I tend to agree.

    My prediction: 25% decline in US patents filed in the next recession.

  3. Name withheld to protect the innocent August 9, 2017 2:01 pm

    The Federal Circuit majority opinion (written by Judge Dyk
    For those of us familiar with the Federal Circuit and the individual judges, the above statement is all one needs to know before realizing that the Patentee is going to get screwed. Dyk is notorious for being anti-patent.

    Here is a snippet from a Law360 article: “In contrast, U.S. Circuit Judge Timothy B. Dyk voted to affirm about 96 percent of the AIA appeals.” Apparently, he will reverse if the Patentee happens to win (an improbable occurrence at PTAB, but not unheard of).

  4. Charlie Jones August 10, 2017 5:02 am

    Look, it’s an opinion and people differ, as is illustrated. This happens all the time in other countries outside the US and saves a lot of people from frivolous litigation and all the costs involved. The US needs to get in shape and bring the system back on track. This constitutional right is a load of BS. Just because a patent examiner grants the right it should not mean that invalidity is automatic – that’s totally unfair on everyone. The constitutional right to challenge a patent for invalidity also needs to be observed. Stop crying into your teacup and man up y’all. This blog is just turning into a space for a bunch of attorneys to generate more work….DRAIN THE SWAMP….

  5. Night Writer August 10, 2017 7:28 am

    It is just unbelievable just how bad the judges are at the CAFC. There are only a couple that are qualified to sit on the CAFC. All the judges since O’Malley were select by Google (presumably with pledges to burn the patent system down, i.e., to get it under control.)

    It is a goon squad of loons that often don’t even have science degree and don’t have any experience with innovation or the real world. Some give us proclamations about science that are counter to what scientists say. Some openingly go against the laws. Most are judicial activist that hate patents and want to end the patent system.

    And be clear. What bothers me is they do not apply the law and that they are unqualified in that they don’t have science backgrounds with experience in patents and innovation.

    We are a third-world country. I strongly advocate disbanding the CAFC.

    Yes, there are a few that are respectable. Newman, O’Malley (not qualified, but a respectable person that tries to apply the law), and Chen.

  6. Anon August 10, 2017 7:47 am

    I have personally met and talked with Judge O’Malley in a non-courtroom setting.

    She would make a much better Chief Judge than the current Chief Judge Prost.

  7. Valuationguy August 10, 2017 10:08 am

    Actually…the division at the CAFC over the anti- and pro-patent factions is not quite as bad as some here might think. (I would say its about 7-5 anti-patent if you include judges on senior status….so individual panels are still a toss-up until you know who is on your panel.) Yes, recent appointments have been of the Google-approved anti-patent faction….but even some of them seem to be having second thoughts on how badly they have screwed up the patent system in the U.S. in record time.

    This particular decision is especially bad primarily due to the fact that both Prost & Dyk are the two most anti-patent Judges on the CAFC and both would rather MAKE NEW PRECEDENCE than utilize previous precedence.

    When Prost engineered the leak of Rader’s email that led to his resignation (and her own elevation to Chief Judge)….it allowed the CAFC to become highly top-heavy in the anti-patent faction (Rader was generally pro-patent) as most of the judges (except Newman…who knows more about patent law than the rest of the CAFC combined) read the prevailing political winds (of Congress and Obama) and supported Prost’s virulent anti-patent owner and NPE agenda. This resulted in dozens of highly bad precedence decisions that demolished the patent rights of owners.

    The damage is finally being recognized (U.S. global competitiveness and leadership in patent filings is being successfully challenged)….but biases still exist and the bad precedence set will take over a decade (or more) to fix.

    PS – concur that Prost (or Dyk) have proven themselves unqualified…but like the clearly anti-patent biased Justice Breyer on the SCOTUS…there is nothing we can apparently do when their judicial colleagues fail to discipline them for their highly visible biases.

  8. Anon August 10, 2017 10:35 am

    When Prost engineered the leak of Rader’s email that led to his resignation (and her own elevation to Chief Judge)….

    Not to sound too much like Benny, but THAT strikes me as a particular insinuation of the type that needs a higher level of proof to brandish such a remark.

    As to “there is nothing we can apparently do when their judicial colleagues fail to discipline them for their highly visible biases” – the problem here is that the Chief Judge in charge of that chicken coop is the predatory animal herself of Prost.

  9. Eric Berend August 10, 2017 11:42 am

    Just what is the CAFC doing, applying BRI as any sort of “standard”? Wasn’t that supposed to be the PTAB ‘standard’? What happened to the prior limitations of claim construction, presumed of that Court?

    I wonder if the CAFC is aware of their rapidly accruing reputation of “screw the inventor – no matter WHAT it takes”?

  10. Night Writer August 10, 2017 11:57 am

    >> wonder if the CAFC is aware o

    I wonder if the judges on the CAFC realize just how bad their reputation is. They are considered to be unqualified people with no morals or ethics. Purchased by Google. Lowlife that are not fit to be lawyers much less judges.

  11. Anon August 10, 2017 4:13 pm

    Mr. Jones at 4 (“This constitutional right is a load of BS.“)

    Please refrain from making comments to which you clearly lack the intelligence to recognize the issues.

    If there is a “manning up” to be had, it is in following the precepts of the Constitution, and the protections afforded under that Constitution for property rights, of which a granted patent is.

    You may “feel” otherwise. You may “feel” that granted patents should not be treated with the protections of the Constitution.

    Those are feelings that you have every right to have.
    Those are also feelings that do not give you a right to pretend that the law is something that it is not.

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