In Homeland Housewares, LLC, v. Whirlpool Corporation, IPR2014-00877 (Fed. Cir. Aug. 4, 2017) (Judges Prost, Newman, and Dyk), the Federal Circuit reversed a Board decision in an inter partes review of claims 1-16 of the U.S. Patent No. 7,581,688 (“’688 patent”), which found the challenged claims to be not invalid as anticipated by U.S. Patent No. 6,609,821 (“Wulf”). Homeland Housewares, slip op. at 2.
“The ‘688 patent relates to household blenders.” Slip op. at 2. Representative claim 1 requires:
automatically controlling a rotational speed of the cutter assembly to effect a pulsing of the speed of the cutter assembly wherein each pulse comprises: (A) a constant speed phase, where the operating speed of the cutter assembly is maintained at a predetermined operating speed, (B) a deceleration phase, where the speed of the cutter assembly is reduced from the operating speed to a predetermined settling speed indicative of the items in the container having settled around the cutter assembly, which is less than the operating speed and greater than zero, and (C) an acceleration phase, where the speed of the cutter assembly is increased from the settling speed to the operating speed.
Slip op. at 3 (quoting ‘688 patent at 7:4-23) (emphases added).
Wulf discloses an automated blender routine, which is illustrated in Fig. 25 (reproduced below).
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At issue was whether the “low” speed of Fig. 25 of Wulf corresponds to the claimed “settling speed.” If so, Wulf discloses the claimed pulse cycle (and anticipates claim 1) because (A) the “forward high speed 15 seconds” of Wulf would correspond to the claimed “constant speed phase, where the operating speed of the cutter assembly is maintained at a predetermined operating speed,” (B) the “ramp down to low, low for 5 seconds” would correspond to the claimed “deceleration phase, where the speed of the cutter assembly is reduced from the operating speed to a predetermined settling speed indicative of the items in the container having settled around the cutter assembly, which is less than the operating speed and greater than zero,” and (C) the “ramp to high, high for 15 seconds” of Wulf would correspond to the claimed “an acceleration phase, where the speed of the cutter assembly is increased from the settling speed to the operating speed.” See slip op. at 11-12.
“In its Final Written Decision, the Board declined to provide a construction of ‘settling speed’ and concluded that Homeland had ‘not shown, by a preponderance of the evidence, that any claim of the ’688 patent is anticipated by Wulf.’” Slip op. at 4. With respect to Fig. 25 of Wulf, the Board relied on unrebutted expert testimony “that ‘Wulf gives no indication of whether any of these speeds [of Fig. 25] . . . would cause items to settle around the cutter,’ and that Wulf ‘only discloses items settling when the motor stops.’” Dissenting op. at 5.
According to the Federal Circuit, the Board should have construed “settling speed” because the parties raised an actual dispute regarding the proper scope of the claims. Slip op. at 5. The Federal Circuit rejected the constructions proposed by the parties and instead found that “[t]he broadest reasonable construction of ‘a predetermined settling speed’ is a speed that is slower than the operating speed and permits settling of the blender contents.” Id. at 9 (“our claim construction is not new, but simply represents a midpoint between the two opposing constructions now urged by the parties”). Based on this construction of “settling speed,” the Federal Circuit concluded that the Board erred in finding that Figure 25 of Wulf does not anticipate the ’688 patent. Id. at 10.
In particular, the Federal Circuit relied on Wulf’s background description of conventional household blenders and that manually “[p]ulsing the motor on/off or at high and then low speeds permits the material being blended to fall back to the region of the cutting knives thereby improving the blending or mixing of the material.” Slip op. at 10 (quoting Wulf at 1:36-69). “Because Wulf uses ‘low speeds’ to refer to speeds at which blending ingredients fall back to the cutters, we conclude that Figure 25’s use of that same term should be understood in the same manner.” Slip op. at 11.
Judge Newman dissented. According to Judge Newman, “[t]he Board’s findings were supported by substantial evidence, and require affirmance” while the majority’s “de novo findings are contrary to the record, overstep [the Federal Circuit’s] appellate role, and are incorrect in fact and law.” Dissent op. at 2. With respect to claim construction, in Judge Newman’s view, “[t]he The Board did not err in holding that [‘settling speed’] did not require ‘construction.’ Such a holding by the expert PTO Board is not grounds for discarding the Board’s findings and ignoring the expert and documentary evidence presented to and discussed by the Board.” Id. With respect to Wulf, Judge Newman stated that “[t]he majority does not acknowledge the basis of the Board’s decision, and instead cites Wulf’s discussion of a 1972 Swanke patent as background information to fill any anticipatory gaps in Wulf.” Id. at 4. See also id. at 5 (quoting Crown Operations Int’l, Ltd. v. Solutia Inc., 289 F.3d 1367, 1375 (Fed. Cir. 2002)) (“A patent is invalid for anticipation when the same device or method, having all of the elements contained in the claim limitations, is described in a single prior art reference.”).
Although the Federal Circuit is supposed to review the Board’s findings of fact for substantial evidence, this case shows the willingness of the Federal Circuit (or at least some of its judges) to review both the Board’s conclusions of law and the Board’s findings of fact de novo.