Pulse Electronics, Inc. v. U.D. Electronic Corp.
20-2129
| Fed. Cir. | Jul 1, 2021Background
- Pulse Electronics owns U.S. Patent No. 6,773,302, directed to connector designs that use vertically oriented substrates and bent conductors to reduce crosstalk and save space.
- U.D. Electronic (UDE) petitioned for inter partes review (IPR) challenging claims 1, 3–9, and 11–16; Pulse filed a contingent motion to amend proposing substitute claims 17–23.
- The PTAB found all challenged original claims unpatentable, granted amendment as to substitute claims 18, 19, 22, and 23, and held substitute claims 17, 20, and 21 indefinite.
- On appeal, Pulse contests the construction of “effectively curved portion,” the obviousness findings (especially over Kan, Hughes, and Loudermilk), and the indefiniteness rulings for substitute claims 17, 20, and 21; UDE cross-appeals the allowance of substitute claims 22 and 23.
- The panel applied the Phillips claim-construction standard (post-2018) and reviewed claim construction de novo and factual findings for substantial evidence.
- The Federal Circuit: affirmed the Board’s construction of “effectively curved portion” and several obviousness findings; reversed the Board’s indefiniteness rulings for substitute claims 17, 20, and 21; and affirmed allowance of substitute claims 22 and 23 as nonobvious.
Issues
| Issue | Pulse's Argument | UDE's Argument | Held |
|---|---|---|---|
| Meaning of “effectively curved portion” | Term should be limited to ~90° bends based on figures and substrate orientation | Term means any form of bend; specification should not limit claim scope | Affirmed Board: any form of bend; cannot import 90° limitation from spec |
| Obviousness of claims 6–8 (and related claims) over Kan + Hughes (and Loudermilk) | References teach away; combinations would not produce claimed orientations/structures | Skilled artisan would be motivated to reorient/modify in view of prior art to save space/functionality | Affirmed: claims 6–8 and multi-port claims obvious over cited combinations |
| Indefiniteness of substitute claims 17, 20, 21 (phrase “producing a desired effect”) | Claims are definite; “desired effect” plainly means achieving ~90° change | Board: phrase adds ambiguity; scope not reasonably certain | Reversed: phrase is inartful surplusage but objectively means ~90°; claims definite |
| Obviousness of substitute claims 22, 23 over Kan alone or Kan + Hughes | Pulse: Kan (and combination) do not teach same portion with both ~90° bend and differing effective radii | UDE: Kan or Kan combined with Hughes renders claims obvious | Affirmed: substantial evidence supports nonobviousness; Kan and Hughes not shown to teach combination needed |
Key Cases Cited
- Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367 (Fed. Cir. 2014) (do not import limitations from the specification into claim language)
- Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898 (Fed. Cir. 2004) (claims are not limited to embodiments absent manifest exclusion)
- Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (U.S. 2014) (indefiniteness standard: claims must inform with reasonable certainty)
- ERBE Elektromedizin GmbH v. Canady Tech. LLC, 629 F.3d 1278 (Fed. Cir. 2010) (surplusage can exist in claims and does not automatically render them indefinite)
- Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356 (Fed. Cir. 2016) (obviousness is a mixed question: facts reviewed for substantial evidence, legal conclusion de novo)
- Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 904 F.3d 965 (Fed. Cir. 2018) (claim construction should avoid interpretations that render devices inoperable)