Smartdoor Holdings, Inc. v. Edmit Industries, Inc.
707 F. App'x 705
| Fed. Cir. | 2017Background
- Smartdoor Holdings owns U.S. Patent No. 6,484,784 directed to a door control that uses a motor/generator to provide regenerative braking and power auxiliary devices (claim 16 is representative).
- Edmit Industries petitioned the PTAB for inter partes review challenging claims 16–18 and 27 as obvious under 35 U.S.C. § 103 over combinations including Shea, Burke, O’Brien, and Leivenzon.
- The PTAB instituted review and found claims 16–18 and 27 unpatentable as obvious, reasoning Shea taught a door-closing brake/governor and Burke taught motor regeneration useful for braking.
- The PTAB also denied Smartdoor’s motion to amend (proposed substitute claims 40–43).
- Smartdoor appealed, raising (1) that Burke cannot provide regenerative braking from a full stop, (2) that Burke is non-analogous art, (3) that combining Shea and Burke would destroy Shea’s teachings, and (4) that the Board erred in denying the motion to amend.
Issues
| Issue | Plaintiff's Argument (Smartdoor) | Defendant's Argument (Edmit) | Held |
|---|---|---|---|
| Obviousness of claims 16–18 and 27 | Claims are not obvious; specific functional limitations not met (e.g., regen from full stop) | Shea + Burke (± other refs) render claims obvious; combination feasible and motivated | Affirmed: Board correctly found claims obvious under §103 |
| Waiver of new argument on appeal | Burke cannot perform regen from full stop (required by claim 16) | Argument not raised before PTAB; record doesn’t support it | Waived on appeal; court declined to consider it |
| Analogousness of Burke | Burke is non-analogous because it doesn’t mention doors or DC motors | Burke addresses the same problem (braking via motor regeneration) and is reasonably pertinent | Substantial evidence supports PTAB: Burke is analogous art |
| Motivation to combine Shea and Burke | Combining would destroy Shea’s governor-based teachings (incompatible) | Substituting regenerative electrical components for Shea’s analog components preserves overall principle; combination would be obvious | PTAB correctly found a motivation to combine; substitution doesn’t destroy operation |
| Denial of motion to amend | Proposed substitutes overcome prior art | Relied on same prior-art/arguments; PTAB reasonably denied amendment | Denial affirmed; Smartdoor merely reasserted losing arguments |
Key Cases Cited
- In re Watts, 354 F.3d 1362 (Fed. Cir.) (arguments not presented to the Board generally cannot be raised for first time on appeal)
- In re Gartside, 203 F.3d 1305 (Fed. Cir.) (appellate review confined to the record presented to the Board)
- In re Bigio, 381 F.3d 1320 (Fed. Cir.) (tests for whether a reference is analogous art)
- In re Mouttet, 686 F.3d 1322 (Fed. Cir.) (substitution of components does not defeat obviousness where overall principle of operation remains)