Nidec Motor Corporation v. Zhongshan Broad Ocean Motor
851 F.3d 1270
Fed. Cir.2017Background
- Nidec’s U.S. Patent No. 7,208,895 (the ’895 patent) claims a motor-torque control system in which a controller produces an "IQdr demand" signal that combines Q-axis (IQr) and d-axis (Idr) current demands in the rotating frame of reference.
- Broad Ocean petitioned for inter partes review (IPR) of claim 21 (which depends from claim 12) and the Patent Trial and Appeal Board instituted the IPR.
- The Board found claim 21 anticipated by Kusaka (U.S. Patent No. 5,569,995), identifying Kusaka’s stationary-frame phase reference currents Iu, Iv, Iw as disclosing the claimed IQdr demand.
- Both parties (and the ’895 specification) treated "IQdr demand" as a rotating-frame signal (IQ and Id with an "r" indicating rotating frame).
- The Federal Circuit held the Board’s anticipation finding was not supported by substantial evidence because Kusaka’s disclosed signals are in the stationary frame and do not disclose a rotating-frame IQdr demand.
Issues
| Issue | Plaintiff's Argument (Nidec) | Defendant's Argument (Broad Ocean) | Held |
|---|---|---|---|
| Whether Kusaka anticipates claim 21 by disclosing an "IQdr demand" | Kusaka does not disclose a rotating-frame IQdr demand; it only shows stationary-frame phase currents | Kusaka’s outputs Iu/Iv/Iw correspond to an IQdr demand and thus anticipate the claim | Reversed: Kusaka does not disclose an IQdr demand in the rotating frame; Board’s finding lacks substantial evidence |
| Whether the Board could supply a missing limitation because a skilled artisan would "at once envisage" it | The rotating-frame requirement was argued to the Board and cannot be supplied by implication from Kusaka’s stationary signals | The Board relied on Kennametal to find anticipation despite lack of explicit rotating-frame disclosure | Kennametal was misapplied; it does not allow filling in an essential missing limitation merely because it would be envisioned |
Key Cases Cited
- Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376 (Fed. Cir. 2015) (discusses when prior art that discloses discrete categories can be read to disclose specific combinations)
- REG Synthetic Fuels, LLC v. Neste Oil Oyj, 841 F.3d 954 (Fed. Cir. 2016) (anticipation is a factual question reviewed for substantial evidence)
- King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267 (Fed. Cir. 2010) (a claim is anticipated only if every limitation is found expressly or inherently in a single prior art reference)
- Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356 (Fed. Cir. 2012) (addresses when disclosure of categories makes a particular combination immediately apparent)