April 11, 2017

When is a Missing Feature Not There?

By Paul E. Zarek, Ph.D., Patent Agent

TDY industries received a patent (US 7,244,519) for a cutting tool with a binder comprising ruthenium and a physical vapor deposition (PVD) coating. TDY then sued Ingersoll Cutting Tool Co. for infringement of the ‘519 patent in 2010.  During IPR, Ingersoll submitted Grab (US 6,554,548) as anticipatory art.  Although the Examiner did not adopt Ingersoll’s position that Grab anticipated the ‘519 patent, an obviousness rejection was made.  Kennametal (now the assignee for the ‘519 patent) appealed and the Board found that Claim 5 of Grab anticipated the ‘519 patent.

The “coated cutting insert” of Claim 5 of Grab comprised a binder with “one or more of tungsten, iron, nickel, ruthenium, and rhenium.”  Although the method of coating was not recited in the claim, the specification disclosed PVD as one of three contemplated coating methods.  The PTAB found that the 15 possibilities (5 binders and 3 coating methods) disclosed in Grab was sufficiently definite to anticipate Claim 1 of the ‘519 patent.  In Kennametal, Inc. v. Ingersoll Cutting Tool Co., [2014-1350] (March 25, 2015), the Federal Circuit upheld the Board, stating that “Grab’s express contemplat[ion] of PVD coatings is sufficient evidence that a reasonable mind could find that a person of skill in the art, reading Grab’s claim 5, would immediate envisage applying a PVD coating.”  Thus, claims can be anticipated even when the cited art does not contain a discrete embodiment of the claim.

Flash forward to Nidec Motor Corp., v. Zhongshan Broad Ocean Motor Co. Ltd., [2016-1900] (March 14, 2017), in which the Federal Circuit further clarified when a missing feature can be immediately envisaged by the skilled artisan.  Broad Ocean petitioned for an IPR of Claim 21 of Nidec’s US Patent no. 7,208,895, drawn to a system for controlling the torque of an electromagnetic motor.  The PTAB found Claim 21 anticipated by Kusaka (US 5,569,995). One issue was whether an input to the toque controller was in a stationary or rotating frame of reference.  Broad Ocean argued, and the Board agreed, that Kusaka’s disclosure of reference currents “Iq” and “Id” refer to the rotating frame of reference because they are “common term[s] used in the art” that refer to the rotating frame of reference.  The PTAB cited Kennametal to establish that the skilled artisan could “at once envisage” that the reference currents are in a rotating frame of reference, even if they were not explicitly disclosed as such in the reference.

The Federal Circuit disagreed with the PTAB’s conclusion, noting that “Kennametal addresses whether the disclosure of a limited number of combination possibilities discloses one of the possible combinations.”  However, in situations like Nidec, anticipation cannot be found when a reference does not disclose a feature of the claim, even if the artisan would have known to add that feature to what is disclosed in the reference.  “Kennametal does not permit the Board to fill in missing limitations simply because a skilled artisan would immediately envision them.”  If a claim feature is not disclosed in a reference, that reference does not anticipate the claim.