Federal Circuit Reverses PTAB Anticipation Decision and Clarifies Kennameta

Federal CircuitNidec Motor Corp. v. Zhongshan Broad Ocean Motor Co
 (Fed. Cir. Mar. 14, 2017) (Before Lourie, Moore, and Taranto, J.) (Opinion for the court, Moore, J.)

In a March 14, 2017, decision, the Federal Circuit reversed the Patent Trial and Appeal Board’s finding of anticipation in an inter partes review (IPR) proceeding.

Nidec Motor Corp. (“Nidec”) owns the ’895 patent, which discloses a system for controlling the torque of an electromagnetic motor. Zhongshan Broad Ocean Motor Co. Ltd. And others (collectively “Broad Ocean”) petitioned for review of claim 21 of the patent. Claim 12, from which claim 21 depends on requires “combining the IQr demand and the dr-axis injection current [Idr] demand to produce an IQdr demand.” The Board found that claim 21 was anticipated by the ’995 patent (“Kusaka”), which disclosed the “IQr demand” and “dr-axis injection current demand” limitations. (“[T]he set of Iu*, Iv*, and Iw* is an IQdr demand as [the Board has] construed the term.”) From these disclosures, the Board found that Kusaka anticipated claim 21 of the ’895 patent. Nidec appealed.

Nidec argued that Kusaka does not anticipate because it does not disclose “produc[ing] an IQdr demand.” Kusaka discloses three separate phase currents in a stationary frame of reference, rather than an IQdr demand, which must be in a rotating frame of reference.

The Court found that both Nidec and Broad Ocean took the position that the IQdr demand must be a signal in the rotating frame of reference, which was consistent with the ’895 patent’s specification. Further, the information comprising the IQdr demand signal is ultimately converted from the rotating frame to the stationary frame, so that the IQdr demand itself must be in the rotating frame of reference. Because Kusaka does not disclose a signal in the rotating frame of reference, it does not disclose an IQdr demand. Consequently, the Board’s finding of anticipation was unsupported. (The Court addressed anticipation, not whether the missing limitation was obvious.)

The Court then addressed the Board’s holding that anticipation could be found anyway, because a skilled artisan reading the reference would “at once envisage” the claimed arrangement. The Court decided this was a misapplication of Kennametal, Inc. v. Ingersoll Cutting Tool Co.

In Kennametal, the challenged claim required a ruthenium binding agent and a PVD coating to be used together. The prior art reference disclosed five binding agents (including ruthenium) and three coating techniques (including PVD), and taught that any binding agents could be used with any coatings. Thus, Kennametal held that the reference effectively taught fifteen combinations, one of which anticipated the challenged claim. A limited number of possible combinations effectively disclosed one of them. Kennametal does not hold that a reference can anticipate a claim if a skilled artisan would “at once envisage” the missing limitation. As a result, the Court reversed the Board’s finding of anticipation.

Anticipation can arise when the disclosure of a limited number of alternative combinations discloses the one that is claimed. However, a reference does not anticipate because an artisan would immediately envision a missing limitation.



The Author

Joseph Robinson

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Joseph Robinson

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

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 No Comments comments.