March 24, 2017Newsletter

This Week at the Board - March 24, 2017

Federal Circuit Reverses PTAB’s Invalidation of Nidec Patent

In a recent decision (Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd, 2016-1900), the Federal Circuit reversed the PTAB’s determination that Nidec’s patent was invalid as being anticipated by a prior art reference. In evaluating the Board’s decision, the Federal Circuit determined that the finding was not supported by substantial evidence because the prior art failed to disclose a limitation of the claim in question either expressly or inherently. The Federal Circuit’s analysis noted that the Board misapplied legal precedent because they improperly filled in missing limitations in the prior art by stating a reference missing a claim limitation can anticipate a claim if a person of ordinary skill in the art viewing that reference would envisage the missing limitation. Furthermore, the Federal Circuit rejected Broad Ocean’s contention that Nidec had waved the argument that the prior art failed to disclose the limitation in question since Nidec presented this argument to the Board and to the Federal Circuit.              

A link to the Federal Circuit’s Decision is provided here.

PTAB Denies CBM Review Based on Lack of Financial Service or Product

In CBM2016-00101, the Board denied CBM review, finding that the claims were not directed to a financial service or product. The Petitioner had asserted that the claims were directed to the configuration of models of a “product” and thus were directed to configuring salable products that a customer could purchase. The specification of the patent at issue described, for example, that configuration models could be used to make a product that may be purchased, such as an automobile, computer software, financial services, etc. The Board disagreed, finding that the claims did not recite anything with respect to the type of product or the use of the product. Specifically, there was nothing in the claims that specified that the product was for a financial service. While the specification mentioned financial services, the specification also described that the invention had application to a “wide range of industries.” The Board noted that the analysis for CBM review must be on the claims themselves, not on embodiments in the specification, some of which are related to financial services and some of which are not.     

A link to the PTAB’s Decision is provided here.

PTAB Finds That Patent Owner Met Its Burden of Production to Show That Work Was That of Inventors

In IPR2015-01850, the Board relied upon expert testimony to determine that a provisional application provided adequate written support for a particular claim limitation in the patent at issue. Because the provisional application provided adequate support, an SEC filing document was only prior art under 35 U.S.C. §102(a). The SEC filing document listed multiple authors, one of which was not one of the inventors. The Patent Owner and the Petitioner disagreed as to who had the burden of persuasion for proving that the SEC filing was the work of the inventors or the work of others, for the purposes of 35 U.S.C. §102(a). The Board noted that the burden of persuasion for unpatentability does not shift from Petitioner to Patent Owner. Thus, the burden still remained on the Petitioner. The Board noted, however, that the burden of production may shift. In this matter, the Petitioner had adequately met its burden of production by presenting the SEC filing document as prior art that on its face listed authors different from the inventors. The Board found that the Patent Owner, however, met its burden of production by providing ample evidence that the portions of the SEC filing document relied upon as prior art were the work only of the inventors. Thus, the SEC filing document was not prior art.    

A link to the PTAB’s Decision is provided here.

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