Nidec Motor Corporation v. Zhongshan Broad Ocean Motor , 851 F.3d 1270 ( 2017 )

United States Court of Appeals
for the Federal Circuit
______________________
NIDEC MOTOR CORPORATION,
Appellant
v.
ZHONGSHAN BROAD OCEAN MOTOR CO. LTD,
BROAD OCEAN MOTOR LLC, BROAD OCEAN
TECHNOLOGIES LLC,
Appellees
______________________
2016-1900
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2014-
01122.
______________________
Decided: March 14, 2017
______________________
SCOTT R. BROWN, Hovey Williams LLP, Overland
Park, KS, argued for appellant. Also represented by
MATTHEW B. WALTERS.
STEVEN F. MEYER, Locke Lord LLP, New York, NY,
argued for appellees. Also represented by JOSEPH
ANTHONY FARCO; CHARLES BAKER, Houston, TX.
______________________
Before LOURIE, MOORE, and TARANTO, Circuit Judges.
2 NIDEC MOTOR CORP. v. ZHONGSHAN BROAD OCEAN MOTOR
MOORE, Circuit Judge.
The present appeal arises from an inter partes review
(“IPR”) involving Zhongshan Broad Ocean Motor Co. Ltd.,
Broad Ocean Motor LLC, and Broad Ocean Technologies,
LLC (collectively “Broad Ocean”) and Nidec Motor Corp.
(“Nidec”). Broad Ocean petitioned for IPR of claim 21 of
Nidec’s U.S. Patent No. 7,208,895 (the “’895 patent”). The
Patent Trial and Appeal Board (the “Board”) instituted
the IPR and found that claim 21 was anticipated by U.S.
Patent No. 5,569,995 (“Kusaka”). Nidec appeals that
decision to our court. Because the Board’s decision is not
supported by substantial evidence, we reverse.
BACKGROUND
The ’895 patent discloses a system for controlling the
torque of an electromagnetic motor. Figure 1 illustrates
its basic operation. Controller 110 receives various in-
puts, including torque demand and rotor position/speed.
’895 patent at 2:24–30. The output of the controller is
input into drive 108, which outputs three energizable
phase windings 106A, 106B, and 106C to the motor. Id.
at 2:16–22. Each winding wraps around the motor 101,
which comprises stator 102 and rotor 104. Id. at 2:14–16.
Id. at Fig. 1.
NIDEC MOTOR CORP. v. ZHONGSHAN BROAD OCEAN MOTOR 3
Motor control values can be expressed relative to two
different frames of reference: the stationary frame of
reference and the rotating frame of reference. The sta-
tionary frame of reference calculates values relative to the
position of the stator. For example, voltages 106A–C in
Figure 1 are expressed in the stationary reference frame.
Id. at 3:21–25. The rotating frame of reference calculates
values relative to the position of the rotor. In the rotating
frame of reference, the d-axis is aligned with the rotor,
and the q-axis is offset by 90 degrees. A signal in the
rotating frame of reference contains both q-axis and d-
axis components.
Figure 2 provides a more detailed description of the
operation of the controller. The dispute in this case
centers on the vectorize block 212. The inputs to the
vectorize block are reference currents IQr demand 208
and Idr demand 209. The IQr and Idr demand signals are
“concatenated” in vectorize block 212 to produce IQdr
demand signal 214. Id. at 3:3–13.
Id. at Fig. 2. Claim 12, from which challenged claim 21
depends, requires “combining the IQr demand and the dr-
4 NIDEC MOTOR CORP. v. ZHONGSHAN BROAD OCEAN MOTOR
axis injection current [Idr] demand to produce an IQdr
demand.” Id. at 10:1–16. The Board construed (1) “IQr
demand” as “Q-axis demand current;” (2) “dr-axis injec-
tion current demand” as “d-axis injection current;” and
(3) “IQdr demand” as “a current demand that includes Q-
and d-axis current demands.” J.A. 14. Neither party
challenges these constructions on appeal.
The Board found Kusaka anticipates claim 21 of the
’895 patent. Kusaka is a patent assigned to Toyota that
discloses the motor control system shown in Figure 1:
Current Control Section block 18 has three inputs: Id, Iq,
and θ. Id and Iq are reference currents in the rotating
frame of reference, and θ is the angular position of the
rotor. The Control block has three outputs: phase refer-
ence currents Iu, Iv, and Iw. Broad Ocean concedes that
Iu, Iv, and Iw are in the stationary frame of reference.
Appellees’ Br. 50–51.
The Board found that Kusaka’s reference currents Iq
and Id disclosed the “IQr demand” and “dr-axis injection
current demand” limitations, respectively, and that “the
set of Iu*, Iv*, and Iw* is an IQdr demand as we have
construed the term.” J.A. 19. Based on these disclosures,
it found that Kusaka anticipated claim 21 of the
’895 patent. Nidec appeals. We have jurisdiction pursu-
ant to 28 U.S.C. § 1295(a)(4)(A).
NIDEC MOTOR CORP. v. ZHONGSHAN BROAD OCEAN MOTOR 5
ANALYSIS
Anticipation is a question of fact we review for sub-
stantial evidence. REG Synthetic Fuels, LLC v. Neste Oil
Oyj, 841 F.3d 954, 958 (Fed. Cir. 2016). “[A] claim is
anticipated if each and every limitation is found either
expressly or inherently in a single prior art reference.”
King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274
(Fed. Cir. 2010) (quotations omitted).
Nidec argues Kusaka does not anticipate because it
does not disclose “produc[ing] an IQdr demand.” It argues
Kusaka discloses three separate phase currents in the
stationary frame of reference, rather than an IQdr de-
mand, which must be in the rotating frame of reference.
Appellants’ Br. 28–32.
Throughout the IPR proceedings, both Nidec and
Broad Ocean took the position that the IQdr demand
must be a signal in the rotating frame of reference. In its
petition for IPR, Broad Ocean’s expert testified that the
letter “r” in “IQr” and “Idr” “further enforces the determi-
nation that the value is one in the rotating frame of
reference.” J.A. 118–19. In its Patent Owner’s Response,
Nidec argued on multiple occasions that the IQdr demand
signal is in the rotating frame of reference. See J.A. 319,
321–22. And in its Petitioner’s Reply, Broad Ocean noted
that “‘IQdr’ is a common term used in the art as a general
reference for the quadrature current IQ and the direct
current Id in the rotating frame of reference.” J.A. 355.
The parties’ understanding that an IQdr demand sig-
nal must be in the rotating frame of reference is con-
sistent with the ’895 patent’s specification. After leaving
the vectorize block, the IQdr demand signal is converted
to a vector of motor voltages in the rotating frame of
reference. This vector is then converted into three refer-
ence voltages in the stationary frame of reference, which
are applied to the motor. ’895 patent at 3:14–25. Given
that the information in the IQdr demand signal is ulti-
6 NIDEC MOTOR CORP. v. ZHONGSHAN BROAD OCEAN MOTOR
mately converted from the rotating frame of reference to
the stationary frame of reference, the IQdr demand signal
itself must be in the rotating frame of reference.
The Board’s finding that Kusaka anticipates claim 21
is not supported by substantial evidence because Kusaka
fails to disclose an IQdr demand. The Board identified
Kusaka’s set of reference currents Iu, Iv, and Iw as dis-
closing an IQdr demand, but those signals are not in the
rotating frame of reference. As Broad Ocean concedes, Iu,
Iv, and Iw are expressed in the stationary frame of refer-
ence. Appellees’ Br. 50–51. Because Kusaka does not
disclose a signal in the rotating frame of reference, it does
not disclose an IQdr demand. The Board’s contrary
finding is unsupported. 1
The Board held that anticipation can be found even
when a prior art reference fails to disclose a claim element
so long as a skilled artisan reading the reference would
“at once envisage” the claimed arrangement. J.A. 21
(citing Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780
F.3d 1376, 1381 (Fed. Cir. 2015)). The Board’s misappli-
cation of Kennametal improperly assumed disclosure of a
claim element.
In Kennametal, the challenged claim required a ru-
thenium binding agent and a PVD coating to be used
together. The prior art reference disclosed five binding
agents (one of which was ruthenium) and three coating
techniques (one of which was PVD). The reference never
disclosed the specific combination of ruthenium and PVD,
1 Broad Ocean argues Nidec waived the argument
that Kusaka does not disclose an IQdr demand. See
Appellees’ Br. 2, 54. We disagree. Nidec argued both to
the Board (J.A. 319, 321–22) and to our court (Appellants’
Br. 29, 30) that Kusaka does not disclose an IQdr demand
signal in the rotating frame of reference.
NIDEC MOTOR CORP. v. ZHONGSHAN BROAD OCEAN MOTOR 7
but it taught that any of the five binding agents could be
used with any of the three coating techniques. We held
that substantial evidence supported the Board’s finding
that the reference effectively taught fifteen combinations,
one of which anticipated the challenged claim. Ken-
nametal, 780 F.3d at 1382–83.
Kennametal does not stand for the proposition that a
reference missing a limitation can anticipate a claim if a
skilled artisan viewing the reference would “at once
envisage” the missing limitation. Rather, Kennametal
addresses whether the disclosure of a limited number of
combination possibilities discloses one of the possible
combinations. As we explained, the relevant question was
“whether the number of categories and components dis-
closed in [the prior art reference] is so large that the
combination of ruthenium and PVD coatings would not be
immediately apparent to one of ordinary skill in the art.”
Id. at 1382 (quoting Wm. Wrigley Jr. Co. v. Cadbury
Adams USA LLC, 683 F.3d 1356, 1361 (Fed. Cir. 2012))
(quotations omitted). Kennametal does not permit the
Board to fill in missing limitations simply because a
skilled artisan would immediately envision them.
CONCLUSION
We hold that the Board’s finding that Kusaka antici-
pates claim 21 of the ’895 patent is not supported by
substantial evidence. The Board’s opinion is therefore
reversed. Because we reverse on the IQdr demand issue,
we need not address Nidec’s other arguments.
REVERSED
COSTS
Costs to Nidec.