Discussion Board

Federal Circuit Reverses PTAB, Reaffirms Requirement That Anticipating Reference Disclose Every Element of Claimed Invention

Team Contact: John P. Rondini

Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., Case No. 2016-1900 (Fed. Cir. Mar. 14, 2017).

The Federal Circuit reversed the Patent Trial and Appeal Board’s final written decision that a challenged claim in a patent relating to systems for controlling torque in electromagnetic motors was unpatentable due to anticipation.

The petitioner, Zhongshan Broad Ocean Motor Co., Ltd. (“Broad Ocean”), filed a petition for inter partes review of claim 21 of U.S. Patent No. 7,208,895 owned by Nidec Motor Corporation. The PTAB instituted review and ruled in a final written decision that claim 21 of the ‘895 patent was unpatentable over a prior art patent.

The challenged claim recites signals defined in a rotating frame of reference. The cited reference, on the other hand, disclosed signals only in a stationary frame of reference. Nonetheless, Broad Ocean argued and the PTAB agreed that the prior art patent anticipated claim 21, based on the Federal Circuit’s decision in Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376 (Fed. Cir. 2015). According to the Board, the reference disclosed the invention in claim 21 because a person skilled in the art would “at once envisage” the claimed inputs in a rotating frame of reference. 780 F.3d at 1381.

Nidec appealed this decision and the Federal Circuit, in a decision written by Circuit Judge Moore, rejected the Board’s reliance on Kennametal and reversed the unpatentability decision. The court noted that Kennametal involved a reference that disclosed a finite number of combinations of two parameters, one of which was recited in the claimed invention. The court agreed with the PTAB in that case that the reference disclosed the claimed invention because a person skilled in the art would “at once envisage” that the claimed combination was among the fifteen possible combinations taught by the reference.

In contrast, the reference cited by Broad Ocean failed to disclose inputs in the rotating frame of reference at all. The Federal Circuit held that, “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.” Slip op. at 7. Thus, the case does not eliminate the need for an anticipating reference to disclose each element of the invention, either expressly or inherently. The court clarified its prior holding and stated “Kennametal does not permit the Board to fill in missing limitations simply because a skilled artisan would immediately envision them.” Id.