By Jody Coultas, J.D.
The U.S. Court of Appeals for the Federal Circuit has upheld a decision by an expanded five-judge panel of the Patent Trial and Appeal Board that a reexamined Nidec Motor Corporation patent covering a low-noise HVAC system was invalid as obvious in view of prior art. The Board did not err in finding that persons of ordinary skill would combine the prior art references to create the covered HVAC system. Because the court affirmed the PTAB’s decision on obviousness grounds, it declined to address the expanded panel’s decision, following rehearing, to allow joinder of a second petition for review based on anticipation or the Board’s invalidity finding on this ground. Circuit Judges Dyk and Wallach filed a concurring opinion to express their concerns regarding the USPTO’s position on permitting joinder of otherwise time-barred claims and its practice of using expanded panels for rehearing "where the PTO is dissatisfied with a panel’s earlier decision" (Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., August 22, 2017, per curiam).
U.S. Patent No. 7,626,349 (the ’349 patent) is directed to low-noise heating, ventilating, and air conditioning ("HVAC") systems. The patented HVAC system includes a permanent magnet electric motor that turns a fan in order to move air through ductwork, and achieves quieter operation of the motor due to improvements in the motor controller.
In 2015, the Board instituted review on the ground of obviousness over U.S. Patent No. 5,410,230 ("Bessler") and a published doctoral thesis by Peter Franz Kocybik ("Kocybik"). The Board declined to institute review on the ground of anticipation by Japanese Patent Publication JP 2003-348885 ("Hideji") however, because Broad Ocean had failed to provide an affidavit attesting to the accuracy of the submitted translation of Hideji. The Board later declined again to institute review on the ground that Hideji anticipates because Broad Ocean’s second petition was time barred. The majority further held that the exception to the time bar for requests for joinder did not apply here because the joinder provision does not permit a party to join issues to a proceeding to which it is already a party.
An expanded administrative panel set aside the original panel’s decision, finding that the joinder provision was broad enough to permit joinder with respect to the second petition, and determined that claims 1–3, 8, 9, 12, 16, and 19 of the ’349 patent were invalid as anticipated by Hideji and obvious over Bessler and Kocybik. Nidec did not dispute that the claimed elements were described in the prior art. Bessler describes an HVAC system that includes a thermostat, a motor controller (or microprocessor), and an electronically commutated motor that turns a fan. Bessler does not describe the claimed sinewave commutation or the use of independent Q and d axis currents, but Kocybik describes sinewave commutation as well as the use of independent Q and d axis currents in electric motors. The Board determined that "a person of ordinary skill in the art would have effected the combination proposed"—"configuring the system of Bessler to perform sinewave commutation in the manner described in Kocybik." Nidec appealed.
Both parties agreed that, if the court affirmed the obviousness finding, it need not address Nidec’s argument that various procedural aspects of the Board’s joinder decision require reversal of its holding concerning anticipation by Hideji. Because the first petition was timely, the issues on appeal relating only to the Board’s joinder determination as to anticipation ultimately did not affect the outcome of the case.
The court rejected Nidec’s argument that the Board wrongly construed the term "HVAC system" in the claim preambles to be non-limiting. Whether or not Nidec is correct, the result does not change. While Kocybik is not directed specifically to HVAC systems, Bessler teaches an HVAC system as recited in the claims. The court did not need to construe the claim preambles here where the construction is not "material to the [obviousness] dispute."
Nidec also failed to show that a person of ordinary skill would not combine Bessler and Kocybik, according to the court. Nidec argued that the purpose of Bessler is to reduce the complexity of HVAC systems, and incorporating sinewave commutation into an HVAC system only increased complexity. However, there was nothing in Bessler that "criticize[s], discredit[s], or otherwise discourage[s]" the use of sinewave commutation in HVAC systems. The argument that each challenged claim required a "system controller" and that Bessler taught away from the use of a system controller that is separate from a motor controller and that receives and processes system demand signals was rejected. The ’349 patent states that "the system controller . . . may be a thermostat," and there was no dispute that Bessler taught the use of a thermostat in an HVAC system. The Bessler thermostat is a "system controller" and that the on/off signals it generates are "control signals" encompassed by the ’349 patent’s claims, according to the court.
Concurring opinion. Circuit Judges Dyk and Wallach wrote separately to express concerns as to the USPTO’s position on joinder and expanded panels since those issues are likely to recur. The judges have serious questions as to the Board’s (and the Director’s) interpretation of the relevant statutes and current practices. Judges Dyk and Wallach argue that Section 315(c) does not explicitly allow a time-barred petitioner to add new issues, rather than simply belatedly joining a proceeding as a new party, to an otherwise timely proceeding. Rather, the judges argue it is unlikely that Congress intended that petitioners could employ the joinder provision to circumvent the time bar by adding time-barred issues to an otherwise timely proceeding, whether the petitioner seeking to add new issues is the same party that brought the timely proceeding, as in this case, or the petitioner is a new party. Also, the opinion questions whether the practice of expanding panels where the USPTO is dissatisfied with a panel’s earlier decision is the appropriate mechanism of achieving the desired uniformity.
The case is No. 2016-2321.
Attorneys: Scott R. Brown (Hovey Williams LLP) for Nidec Motor Corp. Steven F. Meyer (Locke Lord LLP) for Zhongshan Broad Ocean Motor Co. Ltd., Broad Ocean Motor LLC and Broad Ocean Technologies LLC.
Companies: Zhongshan Broad Ocean Motor Co. Ltd.; Broad Ocean Motor LLC; Broad Ocean Technologies LLC
MainStory: TopStory Patent FedCirNews
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