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Wasica Finance GmbH v. Continental Automotive Systems, Inc.

Factual Predicate Must Be Established to Support Reading Prior Art Genus to Anticipate Claimed Species

Wasica Finance GmbH v. Continental Automotive Systems, Inc., (Fed. Cir. Apr. 4, 2017) (Prost, SCHALL, Chen) (PTAB) (2 of 5 stars)

Fed Cir generally affirms IPR determinations on patentability (finding some claims patentable, others not), and reverses determination of patentability as to one claim. The opinion treats the appeals from patent owner Wasica and from petitioners Continental and Schrader separately.

Wasica appeal: The PTAB did not err in finding the claims under review unpatentable as anticipated/obvious. Applying Phillips, 415 F.3d 1303 (Fed. Cir. 2005) (en banc), as the patents under review had expired, the opinion rejects Wasica’s argument that certain “pressure signal” limitations should have required numeric values instead of non-numeric representations as lacking support in the claim text or description. The opinion also rejects Wasica’s argument the claim limitation “emittance of a . . . signal” should have been limited to wireless signals. The plain meaning of “emit” could include wired communication, and there was no redefinition or disavowal in the patent.

Continental/Schrader cross-appeal: The Board did not err in finding four of Wasica’s claims patentable. The Board did not err in finding certain art cited by Schrader as too “unclear” to support anticipation, and Schrader waived obviousness by including it in neither its appeal briefs or its petition. The Board also did not err in rejecting Continental’s argument that because the same prior art disclosed using “any” modulation scheme, it should be held to inherently disclose the claimed modulation scheme. Per Atofina, 441 F.3d 991 (Fed. Cir. 2006), not every disclosure of a genus also discloses every species within. Kennametal, 780 F.3d 1376 (Fed. Cir. 2015), is not contrary, and Continental failed to develop the sort of factual showing necessary to prove that the disclosed genus teaches the claimed species. There were similar defects in Continental’s obviousness contention.

However, the Board did err in holding dependent claim 9 patentable, and erred in construing “bit sequence.” The specification and structure of the claims indicated that “bit sequence” could include a sequence of a single bit. The Board’s construction (“two or more bits”) was over-restrictive. Under the corrected construction, there was no dispute that claim 9 was invalid as anticipated.

KEYWORDS: CLAIM CONSTRUCTION; INTER PARTES REVIEW; OBVIOUSNESS (YES); OBVIOUSNESS (NO); ANTICIPATION (YES); ANTICIPATION (NO)