In Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., No. 2016-1900 (Fed. Cir. Mar. 14, 2017), the Federal Circuit issued a precedential opinion explaining that a prior art reference cannot anticipate a patent claim if the reference does not disclose all claimed features. That straightforward explanation of black letter law was prompted by a PTAB decision that effectively concluded otherwise and, accordingly, canceled a claim of a patent owned by Nidec Motor Corporation. The opinion is important because it clarifies the court’s recent holding in Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376 (Fed. Cir. 2015).
In Kennametal, the Federal Circuit affirmed a PTAB conclusion that claims subject to an inter partes reexamination were invalid as being anticipated by prior art. The patent claimed ruthenium-containing, carbide cutting tools that are coated using physical vapor deposition (PVD). The prior art disclosed cutting tools that included any one of five binders, including ruthenium, and any one of three coating techniques, including PVD. Conceding there was no evidence in the prior art of an actual combination of ruthenium and the PVD technique, the PTAB and the Federal Circuit nevertheless concluded that the claimed combination lacked novelty because the skilled person could immediately envisage the fifteen combinations which included one that anticipated. Kennametal, 780 F.3d at 1383.
In Nidec, neither party addressed Kennametal in its briefs. The PTAB, however, relied on Kennametal to determine that one of the challenged patent claims was anticipated by prior art. The patent describes a system for controlling motor torque of permanent magnet motors. The system includes a controller that receives current demands, combines them, and then outputs signals relative to two different references, a stationary frame and a rotating frame, in order to direct motor operation. The PTAB construed the challenged claim to require only combining the current demands to produce a signal in the rotating frame of reference. This signal is ultimately converted to three reference voltages (signals) in the stationary frame of reference, though that conversion is not claimed. The prior art describes a controller producing signals in the stationary frame of reference. Despite the difference between what’s claimed and what’s disclosed in the prior art, the PTAB found that this these signals satisfy the recited signal in the rotating frame of reference because the skilled person would “at once envisage” the recited signal. Accordingly, the PTAB canceled the claim as being anticipated.
The Federal Circuit reversed. Consistent with the patent’s specification, both parties stated that the recited signal is in the rotating frame of reference. The prior art did not disclose such a signal. The court, therefore, concluded that the record lacked substantial evidence supporting the PTAB’s finding to the contrary. Further, the court concluded that the PTAB misapplied Kennametal and, thus, committed reversible error:
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. … Kennametal does not permit the Board to fill in missing limitations simply because a skilled artisan would immediately envision them.
Nidec Motor Corp., Slip op. at 7 (citation omitted). Although the IPR petitioner did not challenge the claim as being obvious, with the court’s foregoing clarification one can envisage success on that challenge if the skilled person would have found the missing limitation in other combinable prior art.
This is only the third time the Federal Circuit has reversed without remanding a PTAB conclusion of unpatentability in an AIA trial. We have discussed the other two instances here and here. More often, the court vacates the PTAB decision and remands the case. Here, however, the court appears to have concluded that “this is not a case where a more reasoned explanation than that provided by the Board can be gleaned from the record.” See Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1366 (Fed. Cir. 2016), cert. denied, 2017 WL 1040877, at *1 (U.S. Mar. 20, 2017).