Federal Circuit Reverses PTAB Anticipation Holding As Improperly Finding One Would “At Once Envisage” Missing Limitation

The Federal Circuit reversed the PTAB’s final written decision holding that claims from Nidec Motor Corp.’s patent were anticipated in Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., Case No. 2016-1900 (Fed. Cir. Mar. 14, 2017). The Federal Circuit held that in an anticipation analysis, the Board is not permitted to fill in missing limitations simply because a skilled artisan would immediately envisage them.

Broad Ocean filed a petition for inter partes review of Nidec’s patent, which is directed to a system for controlling the torque of an electromagnetic motor. The Board instituted review and found that a claim of Nidec’s patent was anticipated by a prior art patent, Kusaka. The Board relied on Kennametal, Inc. v. Ingersoll Cutting Tool Co. in reasoning that although Kusaka did not disclose one claim element, Kusaka still anticipated the claims because a skilled artisan would “at once envisage” the claimed arrangement.

The Federal Circuit reversed the Board’s finding of anticipation because the Board’s decision was not supported by substantial evidence. The Board incorrectly identified Kusaka’s disclosure of signals in a stationary frame of reference as disclosing signals in a rotating frame of reference, as found in Nidec’s claim. The Federal Circuit explained that the Board misapplied Kennametal explaining that “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.”