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Nidec Motor v. Zhongshan Broad Ocean Motor

Lack of Clear Criticism Dooms “Teaching Away” Challenge

Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., (Fed. Cir. Aug. 22, 2017) (Per curiam: Dyk (concurring, with Wallach), Reyna, Wallach) (PTAB) (3 of 5 stars)

Fed Cir affirms IPR determination of obviousness. There was no need to examine whether the Board’s construction of the preamble term “HVAC system” as a limitation was erroneous because it was undisputed that the prior art taught an HVAC system either way. The Board also did not err in finding that the prior art did not teach away from the proposed combination. Applying Meiresonne, 849 F.3d 1379 (Fed. Cir. 2017), nothing in the art “criticizes, discredits, or otherwise discourages” use of the technology in question. The opinion also rejects Nidec’s argument that the prior art, by implication, rejected use of technology like that in the companion reference.

Because the Board’s decision can be affirmed on obviousness grounds, there was no need to reach the separate issue of whether the Board properly rejected a time-bar challenge by Nidec to also enter an obviousness determination.

Concurrence: Judge Dyk writes to express “concerns as to the PTO’s position on joinder and expanded panels.” In this case, the PTAB allowed § 315(c)’s joinder provisions to be used in a manner that essentially added issues to the case (i.e., Broad Ocean’ anticipation challenge). “We think it unlikely that Congress intended that petitioners could employ the joinder provision to circumvent the time bar by adding time-barred issues to an otherwise timely proceeding[.]” Concur. at 3. Judge Dyk also expresses concern about the PTO’s practice of expanding the administrative panel from three judges to five in the context of rehearing a challenged issue. “While we recognize the importance of achieving uniformity in PTO decisions, we question whether the practice of expanding panels is the appropriate mechanism of achieving the desired uniformity.” Id. at 4.

KEYWORDS: INTER PARTES REVIEW; OBVIOUSNESS; TEACHING AWAY; JOINDER; TIME BAR