Nidec Motor Corporation v. Zhongshan Broad Ocean Motor Co
868 F.3d 1013
| Fed. Cir. | 2017Background
- Nidec owns U.S. Patent No. 7,626,349, directed to quieter HVAC systems using permanent-magnet motors and motor controllers that perform sinewave commutation with independent Q and d axis currents.
- Broad Ocean petitioned for inter partes review (IPR) challenging claims 1–3, 8, 9, 12, 16, and 19 as obvious over Bessler and Kocybik and also as anticipated by Japanese publication Hideji.
- The Board instituted IPR on the obviousness ground (Bessler + Kocybik) but initially declined to institute on the Hideji anticipation ground for lack of a translation affidavit; Broad Ocean later filed a second petition with the affidavit and sought joinder.
- A three-judge panel denied institution as to Hideji on time‑bar grounds under 35 U.S.C. § 315(b); on rehearing an expanded five‑judge panel permitted joinder and instituted the Hideji ground.
- The Board’s final written decision (expanded panel) found all challenged claims unpatentable as obvious over Bessler + Kocybik and also anticipated by Hideji; Nidec appealed.
- The Federal Circuit affirmed the Board’s obviousness holding (Bessler + Kocybik) and therefore did not resolve the joinder/time‑bar or anticipation issues on appeal.
Issues
| Issue | Nidec's Argument | Broad Ocean/Director's Argument | Held |
|---|---|---|---|
| Whether claims are obvious over Bessler combined with Kocybik | Combination is improper; Bessler teaches away from added complexity (sinewave commutation); claim preamble "HVAC system" is limiting | Kocybik teaches sinewave commutation and DSP use; Bessler supplies HVAC context and a system controller; no teaching away | Board’s factual findings supported by substantial evidence; claims obvious over Bessler + Kocybik (affirmed) |
| Construction of "control signals" and "system controller" | "Control signals" require more than on/off; Bessler’s thermostat is too primitive to satisfy limitation | Broad reading is proper under BRC standard; on/off thermostat signal qualifies as a control signal and Bessler’s thermostat can be the claimed system controller | Broadest reasonable construction applied; Bessler’s thermostat and on/off signal meet claim limitations (affirmed) |
| Whether Bessler teaches away from using sinewave commutation / DSPs | Bessler favors simplicity and eliminates separate system controller; would discourage adding DSPs/sinewave commutation | Bessler does not mention or disparage sinewave commutation or DSPs; Kocybik shows DSPs are practical and inexpensive | No teaching away; combination would yield predictable results and would have been made by skilled artisan (affirmed) |
| Appealability and correctness of joinder/expanded‑panel practice | (Raised by Nidec) Joinder/time‑bar and panel expansion raise procedural/due‑process concerns | Director and Broad Ocean defend Board’s joinder and panel expansion practices | Court did not decide these procedural issues here; expressed concurrence concerns but affirmed on substantive obviousness ground |
Key Cases Cited
- In re Affinity Labs of Tex., LLC, 856 F.3d 883 (Fed. Cir. 2017) (standard of review for PTAB legal and factual conclusions)
- Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064 (Fed. Cir. 2015) (obviousness legal framework)
- In re Warsaw Orthopedic, Inc., 832 F.3d 1327 (Fed. Cir. 2016) (appellate review limitations on reweighing evidence)
- Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795 (Fed. Cir. 1999) (claim construction — construe only disputes necessary to resolve case)
- Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (U.S. 2016) (IPR governed by broadest reasonable construction standard)
- Meiresonne v. Google, Inc., 849 F.3d 1379 (Fed. Cir. 2017) (teaching away standard)
- Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731 (Fed. Cir. 2013) (definition of teaching away)