Federal Circuit reverses PTAB anticipation holding because not every element present in prior art

By Gene Quinn
March 16, 2017

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.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. 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.

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Discuss this

There are currently 8 Comments comments.

  1. ac March 16, 2017 1:08 pm

    In answer to your final rhetorical question: because they can, most of the time, get away with it. They need a scintilla of evidence to be upheld. For some CAFC panels, not even that.

    If recent events have caused some to ponder the meaning of “facts,” one thing is for sure – power is all. Admittedly a rather bleak worldview, but in light of the times, one I think is not unwarranted.

  2. Bemused March 16, 2017 1:50 pm

    “Close don’t count in baseball. Close only counts in horseshoes and grenades.”
    Author: Frank Robinson

    “Close only counts in horseshoes, grenades and at the PTAB”
    Author: Bemused

  3. Valuationguy March 16, 2017 5:02 pm


    For a majority of CAFC panels in fact. The patent owner had a favorable panel here in my view. If Prost, Dyk or Mayer had been on the panel…instead of either Moore or Lourie…the decisions would could easily have gone the other way (though it does seem that recently Taranto is finally starting to realize the mess the philosophical majority has created).

  4. Eric Berend March 17, 2017 6:27 am


    Any possible notion of hindsight that the patent death squad can possibly drag in, frequently to the point of ultra vires; it will. This renegade travesty of a Federal agency should be repealed for having failed its intended purpose and instead, causing nothing but harm to intellectual property and American innovation. It is, without a doubt, the captive creature of captive special interests; and for that, at the very least, should be suspended pending major Congressional inquiry.

  5. Night Writer March 17, 2017 8:04 am

    So, they had to reverse because the PTAB was acting way outside the bounds and it was a bright line rule. So, that is what it takes now at the CAFC to get justice. Someone has to clearly violate a bright line rule otherwise you can kiss your claims good-bye.

  6. Name withheld to protect the innocent March 17, 2017 9:40 am

    The PTAB seems to be of the belief that one of skill in the art can fill in missing evidence.
    The PTAB is out of control — has been for years and years and year. I have never seen a group of attorneys so consistently misrepresent the law as I have with the PTAB. There is almost no Federal Circuit decision that they cannot twist the words to stand for things not contemplated by the Federal Circuit.

    It would be refreshing if the attorneys at the PTAB actually read some of the decisions they cited instead of relying upon the one or two sentence blurb found in the MPEP

  7. Curious March 17, 2017 9:43 am

    So, that is what it takes now at the CAFC to get justice. Someone has to clearly violate a bright line rule otherwise you can kiss your claims good-bye.
    You pretty much nailed it. You’ve got to show that that the Board has committed an egregious error as to the law. However, that is how you have to do it — arguing that the Board got it wrong on the facts is a surefire loser of an argument. Fortunately, if you know what you are looking for, the Board gets it wrong on the law many times as well.

  8. respoding March 17, 2017 9:44 am

    Haven’t read the Petition, but I feel that this should have been at least argued as both 102 and 103, if not exclusively as 103. Seems like (conceptually) a slam dunk as 103, but as a 102 it clearly had some problems.