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.

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