Addressing the evidentiary standard for proving anticipation, the US Court of Appeals for the Federal Circuit reversed the Patent Trial and Appeal Board (PTAB) in two separate cases, finding that the PTAB’s conclusion of anticipation in both cases was not supported by substantial evidence. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., Case No. 16-1900 (Fed. Cir., Mar. 14, 2017) (Moore, J); In re Chudik, Case No. 16-1817 (Fed. Cir., Mar. 27, 2017) (Reyna, J).
In Nidec Motor, the patent at issue related to a system for controlling the torque of an electromagnetic motor. Broad Ocean petitioned for inter partes review (IPR) of the patent. After institution, the PTAB construed the claim term “IQdr demand” to mean “a current demand that includes Q-axis and d-axis current demands.” The patent owner argued that the prior art failed to anticipate because it taught the currents in a stationary frame of reference rather than a rotating frame of reference, as required by the construction of the term “IQdr demand.” The PTAB acknowledged the difference but nevertheless found the claim to be anticipated, citing the Federal Circuit’s 2015 decision in Kennametal v. Ingersoll Cutting Tool (IP Update, Vol. 18, No. 4) for the proposition that anticipation can be found even when a prior art reference fails to disclose a claim element, as long as a skilled artisan reading the reference would “at once envisage” the claimed arrangement. Nidec appealed to the Federal Circuit.
The Federal Circuit agreed with the PTAB’s construction of the term “IQdr demand.” However, the Court disagreed that the claim at issue was anticipated even if the prior art only disclosed currents in the stationary, rather than rotating, frame of reference. As the Court explained, Kennametal does not permit the PTAB to fill in missing limitations simply because a skilled artisan would immediately envision them. Rather, Kennametal addresses whether the disclosure of a limited number of combination possibilities discloses one of the possible combinations. Because the prior art did not disclose currents in the rotating frame of reference, the Court concluded that the PTAB’s findings of anticipation were unsupported by substantial evidence.
In re Chudik is an appeal of the PTAB’s decision to uphold an examiner’s anticipation rejections in the context of original prosecution. Specifically, the PTAB upheld the examiner’s findings that multiple claims related to minimally invasive shoulder replacement surgery were anticipated by two prior art references (Rambert and Bouttens). The PTAB’s conclusion of anticipation was based on the fact that the claims did not require the recited surfaces to actually “engage” the glenoid region, but instead only required that the surfaces be “arranged for such engagement.” Chudik appealed.
The Federal Circuit reversed with respect to Rambert, concluding that the PTAB’s finding of anticipation was not supported by substantial evidence. According to the Court, although the “arranged to engage” claim language implies that the protruding surface does not always need to actually engage the glenoid surface, it must be at least capable of doing so. In this case, neither the examiner nor the PTAB explained how the protruding surface of the Rambert reference is “capable of engaging” the glenoid surface without modifying the reference to remove an element (i.e., “tearing the invention apart”). As the Federal Circuit explained, “[p]rior art that ‘must be distorted from its obvious design’ does not anticipate a new invention.
Applying similar reasoning, the Federal Circuit reversed with respect to the Bouttens reference, concluding that both the examiner and the PTAB failed to describe how a user could rotate Bouttens’s protruding surface for “engagement” with the glenoid region without significant and impermissible modification. For these reasons, the PTAB’s findings with respect to both prior art references were not supported by substantial evidence.