Docket No. 2017-1124
DYK, LINN, HUGHES
February 26, 2018
Brief summary: Board decision that “drive” is limited to a variable speed drive reversed (improper reliance on disclosed embodiment), as was reversal of Examiner’s prior art rejection that was dependent on the improper construction. Board determination that claims 8 and 15 were not supported by the written description affirmed.
Summary: Hayward appealed PTAB decision in an inter partes reexamination (IPX) of Pentair’s US 7,686,587 relating to electric motors. The first issue addressed by the FC panel is “whether the term ‘drive’ is properly limited to a variable speed drive.” It explained that “drive is not defined in the [‘587] specification” and “there is nothing in the specification to suggest that the motor protection invention broadly recited in the claims should be limited to the variable speed motor and drive of the disclosed embodiment” (“To the contrary, the specification teaches that controller 24 can act as a ‘power conditioner, a variable-speed drive, a pressure regulator, and/or a motor protector in the pump control system.”) “[I]n doing so”, the FC panel found “the Board makes the classic mistake of reading limitations from the specification into the claims” (Phillips, FC 2005). The FC panel also noted that “in the IPX proceeding, Pentair added claim 13, dependent from claim 1, which adds the limitation ‘wherein the drive is a variable speed drive’”, implying “that ‘drive’ is a genus and ‘variable speed drive’ is a particular species, and that the terms are thus not intended to be coextensive” (Liebel-Flarsheim, FC 2004 (“the presence of a dependent claim that adds a particular limitation raises a presumption that the limitation in question is not found in the independent claim”)). Further, the FC panel explained that Pentair’s expert testimony “that ‘the term ‘motor drive’ applies to a variable speed motor drive’…does not mean that the term ‘drive’ should take on that limited meaning in the context of the claims at issue, which are not limited to variable speed motors.” The “narrow construction” adopted by the Board was therefore found to be “inconsistent with the broadest reasonable interpretation standard”, and was reversed. The FC panel subsequently concluded that “[s]ubstantial evidence does not support the Board’s finding that starter 36 in the Genheimer reference…fails to meet the ‘drive’ limitation” and accordingly found “the Board’s reversal of the Examiner’s rejections…cannot be maintained”. The Board also reversed the Examiner’s finding that claims 8 and 15 were not supported by the written description, and the FC panel was “not persuaded that the Board’s determination should be overturned” and “decline[d] to address Hayward’s arguments based on the disclosures of Baldor and Carrow that were first presented to the Board on rehearing and for that reason not considered by the Board.” The FC panel also concluded that its “decision sustaining the Examiner’s rejection…based on Genheimer moots all of the issues raised in Hayward’s cross-appeal before the Board, except as they may relate to claim 8” (but these were not considered as “conclusory at best”/”worthy only of cursory argument” (Conocophillips, FC 2007)).