Hamilton Beach Brands, Inc. v. F'real Foods, LLC , 908 F.3d 1328 ( 2018 )

United States Court of Appeals
for the Federal Circuit
______________________
HAMILTON BEACH BRANDS, INC.,
Appellant
v.
F'REAL FOODS, LLC,
Appellee
______________________
2018-1274
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2016-
01107.
______________________
Decided: November 16, 2018
______________________
WILLIAM STEPHEN FOSTER, JR., Drinker Biddle &
Reath LLP, Washington, DC, argued for appellant. Also
represented by BRIANNA LYNN SILVERSTEIN.
GUY CHAMBERS, Sideman & Bancroft LLP, San Fran-
cisco, CA, argued for appellee. Also represented by
TIMOTHY E. BIANCHI, Schwegman Lundberg & Woessner,
PA, Minneapolis, MN.
______________________
Before REYNA, WALLACH, and TARANTO, Circuit Judges.
2 HAMILTON BEACH BRANDS, INC. v. F'REAL FOODS, LLC
REYNA, Circuit Judge.
Hamilton Beach Brands, Inc. challenges the Patent
Trial and Appeal Board’s final written decision upholding
the patentability of claim 21 of U.S. Patent No. 7,520,662
under 35 U.S.C. § 103. Because the Board did not err in
construing the relevant claim terms and because substan-
tial evidence supports the Board’s decision, we affirm.
BACKGROUND
1. The ’662 Patent
f’real! Foods, LLC (“f’real”) is the assignee of U.S. Pa-
tent No. 7,520,662 (“the ’662 patent”), entitled “Rinseable
splash shield and method of use.” The ’662 patent dis-
closes a vessel for containing contents to be mixed that is
positioned in a mixing machine, and a splash shield that
is positioned to shield the opening of the vessel. ’662
patent, Abstract. After the material within the vessel is
mixed by a mixing element, the splash shield is separated
from the vessel and rinsed by a nozzle on the mixing
machine. Id. The ’662 patent describes how the invention
“provide[s] a drink mixer having a splash shield that may
be automatically rinsed following mixing of each batch or
beverage, preferably without disassembly or removal of
any components or disposable covers.” Id. col. 1 ll. 63–67.
Figures 1A and 1B show mixing/blending machine
100, including rotatable mixing blade 10 and splash
shield 22, as well as nozzles 34a and 34b for directing
rinsing fluid towards the interior of the splash shield. Id.
col. 3 ll. 63–65.
HAMILTON BEACH BRANDS, INC. v. F'REAL FOODS, LLC 3
Id. Figs. 1A, 1B.
Figures 4 through 6 of the ’662 patent show the mix-
ing and rinsing mechanism in operation. Figure 4 shows
the cup 14 and cup holder 16, which are raised in Figure 5
to be underneath mixing blade 10 and splash shield 22.
Id. col. 4 ll. 29–49. Hinged doors 36 raise when the cup
elevates. Id. After mixing, as shown in Figure 7, the cup
and cup holder descend back down, the hinged doors close,
and nozzle 34 sprays the splash shield clean with water.
Id. col. 5 ll. 9–36. Also described is fluid trough 38 to
catch the rinse water. Id.
4 HAMILTON BEACH BRANDS, INC. v. F'REAL FOODS, LLC
Id. Figs. 4–7.
Claim 21 is the only challenged claim and recites:
21. A method for rinsing a splash shield on a mix-
ing machine, the method comprising the steps of:
providing a vessel containing material to
be mixed, the vessel including an opening;
further providing a mixing machine hav-
ing a holder for receiving the vessel, a ro-
tatable mixing element extendable into
the vessel for mixing the material, a
splash shield positionable to shield the
opening of the vessel, and a nozzle orient-
ed towards the splash shield;
after mixing the material in the vessel us-
ing the mixing element and with the
HAMILTON BEACH BRANDS, INC. v. F'REAL FOODS, LLC 5
splash shield shielding the vessel opening,
unshielding the vessel opening and direct-
ing rinsing fluid onto the splash shield us-
ing the nozzle while isolating the vessel
from the rinsing fluid.
Id. col. 6 l. 64–col. 8 l. 3.
2. Prior Art References
U.S. Patent No. 5,439,289 (“Neilson”) discloses an ap-
paratus for mixing ingredients in a receptacle, as shown
below in Figures 6A through 6F. J.A. 105–20.
J.A. 111.
During operation, lid 16 descends over receptacle 14
(Figs. 6A and 6B) to create a seal, after which the mixer
head descends into the receptacle to mix its contents
(Figs. 6C and 6D). J.A. 118. The mixer head and lid then
ascend away from the receptacle (Figs. 6E and 6F).
Neilson describes this process as occurring automatically
6 HAMILTON BEACH BRANDS, INC. v. F'REAL FOODS, LLC
after the machine is activated. Id. Neilson also describes
an alternate embodiment in which the lid 16 is fixed, and
the receptacle itself is raised and lowered into and out of
engagement with the lid. J.A. 119.
U.S. Patent No. 4,740,088 (“Kelly”) discloses a frozen
confections blending machine allowing for “rapid, frequent
and sanitary cleaning operations between product chang-
es.” J.A. 97. Kelly describes having a sink underneath
the mixing area to collect runoff and a “[m]eans for deliv-
ering water to the auger, the cone and all inside surfaces
of the enclosure for cleaning, including hoses, spray
devices[,] valves . . . facilitating . . . cleaning, especially,
between changes of additives and flavors from one prod-
uct batch to another.” J.A. 100. The spray device 56
described in Kelly “may be rotatable and tiltable,” and is
“adjustable in such a manner so as to clean the interior of
the auger, the mixing cone and the entire interior,” as
shown in Figure 1 below. J.A. 101.
HAMILTON BEACH BRANDS, INC. v. F'REAL FOODS, LLC 7
J.A. 98.
Prior art reference “Miller” collectively refers to Miller
et al., U.S. Patent Application Publication No.
2002/0048626 A1 (“Miller ’626”), and Miller, U.S. Patent
No. 5,766,665 (“Miller ’665”). J.A. 121–36. Miller ’626
discloses an apparatus for dispensing a syrup and blend-
ing it with a mix held in a disposable serving container.
J.A. 132. Miller ’626 describes attaching an open-ended
tubular sleeve to the mix-filled container to shield the
blender spindle and limit splashing of the mix during
blending. Id. After blending is completed, the
sleeve/shield is removed, and can be washed for reuse.
J.A. 134. Miller ’626 discloses cleaning the spindle by
delivering sterilizing solution or water through a dedicat-
ed nozzle, shown at 129 in Figure 18 below, directed at
the spindle and spindle blades and operating the spindle
and blades in an empty container to which sterilizing
solution has been added. J.A. 135.
J.A. 130.
8 HAMILTON BEACH BRANDS, INC. v. F'REAL FOODS, LLC
3. Proceedings Before the Board
On May 27, 2016, Petitioner Hamilton Beach Brands,
Inc. (“Hamilton Beach”) petitioned the Patent Trial and
Appeal Board (the “Board”) for inter partes review of claim
21 of the ’662 patent as obvious under Neilson, Kelly, and
Miller. See Hamilton Beach Brands, Inc. v. f’real Foods,
LLC, IPR2016-01107, 2016 WL 7985447, at *1, *3
(P.T.A.B. Nov. 30, 2016) (“Institution Decision”). Prior to
institution, neither party sought construction for the
“nozzle” terms, and the Board instituted review without
construing any terms. Id. at *5. After institution, f’real
proposed constructions for the “nozzle” terms, which
Hamilton Beach disputed, arguing that no express con-
struction was needed. In its Final Written Decision, the
Board decided that the “nozzle” terms of the ’662 patent
needed construction, and it adopted constructions that
were similar, but not identical, to f’real’s proposals.
Hamilton Beach Brands, Inc. v. f’real Foods, LLC,
IPR2016-01107, 2017 WL 6513981, at *2–4 (P.T.A.B. Dec.
19, 2017) (“Final Written Decision”). Relevant to this
appeal, the Board construed “a nozzle oriented towards
the splash shield” to mean “a nozzle pre-positioned such
that it points at the splash shield,” and construed “direct-
ing rinsing fluid onto the splash shield using the nozzle”
to mean “spraying rinsing fluid onto the splash shield
from the pre-positioned nozzle.” Id. at *3.
In assessing the patentability of claim 21 of the ’662
patent, the Board concluded that Neilson, in view of Kelly
and Miller, does not teach or suggest the nozzle limita-
tions of claim 21. Id. at *6–8. Specifically, the Board
concluded that Neilson does not disclose any sort of rinse
nozzle for cleaning a splash shield, and because the
parties’ experts agreed that Kelly teaches a manually
operated spray device “similar to that commonly found at
a kitchen sink,” Kelly only describes a spray device that is
not prepositioned to point at the splash shield. Id. at *6–
7. The Board further concluded that a person of ordinary
HAMILTON BEACH BRANDS, INC. v. F'REAL FOODS, LLC 9
skill would not combine Neilson and Kelly with the elec-
tronically controlled nozzle of Miller “without relying on
the claim as a roadmap for selecting and modifying the
teachings.” Id. at *7. To meet the limitations of claim 21,
Kelly’s nozzle would need to be modified from a manually
positionable nozzle to a pre-positioned nozzle pointing at
the splash shield. The Board found that Miller does not
teach this modification, finding that Miller’s nozzle is
directed at the mixing spindle, and not the splash shield,
and Miller describes removing the splash sleeve for clean-
ing. Id.
After reviewing the objective indicia of non-
obviousness, the Board additionally concluded that evi-
dence of non-obviousness outweighed evidence of obvious-
ness presented by Hamilton Beach. Id. at *11. The Board
thus concluded that Hamilton Beach had not shown by a
preponderance of the evidence that claim 21 would have
been obvious in light of Neilson, Kelly, and Miller.
Hamilton Beach appeals both the Board’s claim con-
struction and non-obviousness determination. We have
jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).
PRELIMINARY ISSUE: 35 U.S.C. § 315(b)
Shortly before oral argument, f’real submitted a No-
tice of Supplemental Authority, arguing that the appeal
should be dismissed as time barred under 35 U.S.C.
§ 315(b) in light of our recent decision in Click-to-Call
Technologies, LP v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir.
2018) (en banc in relevant part). Section 315(b) provides
that an IPR “may not be instituted if the petition request-
ing the proceeding is filed more than 1 year after the date
on which the petitioner, real party in interest, or privy of
the petitioner is served with a complaint alleging in-
fringement of the patent.” In Click-to-Call, we held that
the time bar of § 315(b) is implicated “once a party re-
ceives notice through official delivery of a complaint in a
civil action, irrespective of subsequent events,” such as
10 HAMILTON BEACH BRANDS, INC. v. F'REAL FOODS, LLC
the voluntary dismissal without prejudice in that appeal.
899 F.3d at 1330.
The relevant facts of this case are as follows. On Oc-
tober 6, 2014, f’real served Hamilton Beach with a com-
plaint alleging claims for patent infringement of the ’662
and other patents, along with claims for trademark in-
fringement, trade dress infringement, and unfair competi-
tion. Complaint at 8–15, f’real Foods, LLC v. Hamilton
Beach Brands, Inc., No. 1:14-cv-01270 (D. Del. Oct. 3,
2014), ECF No. 1 (J.A. 624–40) (the “2014 action”); see
also Proof of Service at 2, No. 1:14-cv-01270 (D. Del. Oct.
6, 2014), ECF No. 6 (J.A. 707–08). Over the following
year and three months, the parties in the 2014 action
proceeded through the early stages of litigation, including
discovery and claim construction briefing in preparation
for a Markman hearing.
On January 26, 2016, f’real moved to voluntarily dis-
miss its patent infringement claims without prejudice
because it did not own the asserted patents, including the
’662 patent, when the 2014 action was filed. Plaintiff
f’real Foods, LLC’s Motion for Voluntary Dismissal at 1,
f’real Foods, LLC v. Hamilton Beach Brands, Inc., No.
1:14-cv-01270 (D. Del. Jan. 26, 2016), ECF No. 106. The
motion explained that when the 2014 action was initially
filed, f’real believed it owned the asserted patents. Id. at
2. During the litigation, f’real subsequently discovered
that the asserted patents had been assigned to a holding
company, Rich Products Corporation, as part of a merger,
but inadvertently were never assigned back to f’real. Id.;
see also J.A. 876–77 (declaration of the Intellectual Prop-
erty Manager at Rich Products). Thus, although Rich
Products subsequently assigned the patents back to f’real,
an issue was raised as to whether f’real had standing to
bring its patent infringement claims when the 2014 action
was filed. Thus, to “resolve expeditiously the standing
issue,” f’real asked the district court to dismiss its patent
infringement claims from the 2014 action without preju-
HAMILTON BEACH BRANDS, INC. v. F'REAL FOODS, LLC 11
dice, leaving its other claims pending. Id. at 1. On Feb-
ruary 26, 2016, the district court granted f’real’s motion
for voluntary dismissal without directly addressing the
standing issue. Order, f’real Foods, LLC v. Hamilton
Beach Brands, Inc., No. 1:14-cv-01270 (D. Del. Feb. 26,
2016), ECF No. 120.
On the same day it filed its motion for voluntary dis-
missal, f’real, joined with Rich Products, filed and subse-
quently served a new complaint reasserting the same
patent infringement action as the 2014 action, including
infringement of the ’662 patent. Complaint at 12, f’real
Foods, LLC v. Hamilton Beach Brands, Inc., No. 1:16-cv-
00041 (D. Del. Jan. 26, 2016), ECF No. 1; see also Waiver
of Service, No. 1:16-cv-00041 (D. Del. Jan. 29, 2016), ECF
No. 4. The parties subsequently stipulated and agreed to
consolidate the 2014 action with the new complaint.
Stipulation and Order for Consolidation at 2, f’real Foods,
LLC v. Hamilton Beach Brands, Inc., No. 1:16-cv-00041
(D. Del. Apr. 12, 2016), ECF No. 17.
On May 27, 2016, Hamilton Beach filed its petition for
inter partes review in this case. Institution Decision, 2016
WL 7985447, at *3. Because more than one year elapsed
between the filing of the 2014 action and Hamilton
Beach’s petition, f’real argued to the Board that § 315(b)
applied and the petition was time barred. J.A. 590–96.
The Board concluded that because f’real lacked standing
to file the original complaint, the complaint was not a
“proper federal pleading” and thus did not trigger the one-
year time bar under § 315(b). Institution Decision, 2016
WL 7985447, at *4. The Board declined to revisit the
question in its final decision. Final Written Decision,
2017 WL 6513981, at *13. Now, in light of our decision in
Click-to-Call, f’real again contends that the one-year time
bar of § 315(b) applies and the Board lacked jurisdiction
to institute, and asks the panel to dismiss Hamilton
Beach’s IPR petition.
12 HAMILTON BEACH BRANDS, INC. v. F'REAL FOODS, LLC
Section 315(b) precludes filing of a petition for inter
partes review of the ’662 patent more than one year after
Hamilton Beach was “served with a complaint alleging
infringement of the patent.” In Click-to-Call, we conclud-
ed that “a defendant served with a complaint as part of a
civil action that is voluntarily dismissed without prejudice
remains ‘served’ with the ‘complaint.’” 899 F.3d at 1336.
We agree, therefore, that f’real’s voluntary dismissal of
the 2014 action would not alone preclude application of
the one-year time bar. That f’real lacked standing to file
its 2014 complaint alleging infringement of the ’662
patent involves a circumstance not present, or considered,
in Click-to-Call. We do not decide that question in this
appeal.
It is well-established law that “a party must file a
cross-appeal when acceptance of the argument it wishes
to advance would result in a reversal or modification of
the judgment rather than an affirmance.” Bailey v. Dart
Container Corp. of Mich., 292 F.3d 1360, 1362 (Fed. Cir.
2002). Although f’real frames its § 315(b) argument as an
alternate basis on which to affirm the Board’s decision, its
argument, if it had merit, could not support affirmance.
It would instead require vacatur of the Board’s decision
and a remand for dismissal of Hamilton Beach’s petition
entirely. See Click-to-Call, 899 F.3d at 1325, 1341–42;
Luminara Worldwide, LLC v. Iancu, 899 F.3d 1303, 1305–
06, 1308 (Fed. Cir. 2018). Accepting f’real’s § 315(b)
argument thus would require that we modify the Board’s
decision, which means that a cross-appeal was required.
Because f’real did not file a cross-appeal, we do not reach
the § 315(b) issue. 1
1 f’real suggests no basis for excusing non-
compliance with the cross-appeal requirement in this
case.
HAMILTON BEACH BRANDS, INC. v. F'REAL FOODS, LLC 13
DISCUSSION
Hamilton Beach challenges both the Board’s claim
construction and its conclusions regarding obviousness
under 35 U.S.C. § 103. We will address each issue in
turn.
1. Claim Construction
Hamilton Beach argues that the Board violated the
Administrative Procedure Act (“APA”) by changing claim
construction theories midstream without providing the
parties an opportunity to respond, and additionally erred
in construing the “nozzle” terms so as to require that the
nozzles be prepositioned.
As formal administrative adjudications, IPRs are sub-
ject to the APA. See Dell Inc. v. Acceleron, LLC, 818 F.3d
1293, 1298, 1301 (Fed. Cir. 2016). Under the APA, we
must “hold unlawful and set aside agency action . . . not in
accordance with law [or] . . . without observance of proce-
dure required by law.” 5 U.S.C. § 706(2). The Board must
inform the parties of “the matters of fact and law assert-
ed.” 5 U.S.C. § 554(b)(3). It also must give the parties an
opportunity to submit facts and arguments for considera-
tion. Id. § 554(c). Each party is entitled to present oral
and documentary evidence in support of its case, as well
as rebuttal evidence. Id. § 556(d). Pursuant to these
provisions, the Board may not change theories midstream
without giving the parties reasonable notice of its change.
Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed.
Cir. 2015).
In making its APA challenge, Hamilton Beach argues
that the Board violated SAS Institute, Inc. v. Complemen-
tSoft, LLC, 825 F.3d 1341 (Fed. Cir. 2016), reversed on
other grounds, SAS Institute, Inc. v. Iancu, 138 S. Ct.
1348 (2018), which held that, under § 554(b)(3) of the
APA, the Board may not change theories midstream by
adopting a construction in its final written decision that
14 HAMILTON BEACH BRANDS, INC. v. F'REAL FOODS, LLC
neither party requested nor anticipated. Id. Hamilton
Beach contends that the Board violated the APA by
adopting a construction not proposed by either party
without giving an opportunity to respond.
In SAS, the parties had agreed to the construction
adopted by the Board at institution, and without any
further discussion during briefing or at oral hearing, the
Board adopted a different claim construction in its Final
Written Decision. SAS Inst., 825 F.3d at 1351. We held it
was “difficult to imagine either party anticipating that
already-interpreted terms were actually moving targets,
and it is thus unreasonable to expect that they would
have briefed or argued, in the alternative, hypothetical
constructions not asserted by their opponent.” Id. Here,
in contrast, Hamilton Beach received adequate notice in
f’real’s post-institution response regarding the nozzle
terms, as shown by the fact that Hamilton Beach argued
against f’real’s proposed constructions in its reply brief
and during the oral hearing. J.A. 1782–83; J.A. 2076–78.
f’real argued in its response that the ’662 patent requires
the nozzle be positioned to point toward the splash shield,
thus providing the requisite notice that, for claim con-
struction purposes, the nozzle’s position was contested.
See J.A. 1330 (arguing that “[t]o give meaning to the two
nozzle claim limitations within the context of the ’662
patent, rinsing fluid needs to be directed onto the splash
shield using the nozzle from its position of being oriented
towards the splash shield” (emphasis added)). During the
oral hearing, the Board asked Hamilton Beach’s counsel
whether the nozzles were in a fixed position. J.A. 2077
(“And to me, at least in the embodiment that’s disclosed,
that’s telling me that the nozzles are in a fixed position, or
prepositioned, as Patent Owner’s arguing. Why is that not
right in your view?”). And the Board’s final adopted
construction of the nozzle terms, while not identical to
those proposed by f’real, are similar enough to f’real’s
proposed constructions so as to not constitute changing
HAMILTON BEACH BRANDS, INC. v. F'REAL FOODS, LLC 15
theories midstream in violation of the APA. 2 Accordingly,
because Hamilton Beach had notice of the contested claim
construction issues and an opportunity to be heard, we
reject Hamilton Beach’s argument that the Board violated
the APA in adopting its own constructions. See SAS, 825
F.3d at 1351.
Nor did the Board err in its construction of the nozzle
terms. “The ultimate construction of the claim is a legal
question and, therefore, is reviewed de novo.” Info-Hold,
Inc. v. Applied Media Techs. Corp., 783 F.3d 1262, 1265
(Fed. Cir. 2015). Claim construction based solely upon
intrinsic evidence, as is the case here, is a matter of law
reviewed de novo. See Microsoft Corp. v. Proxyconn, Inc.,
789 F.3d 1292, 1297–98 (Fed. Cir. 2015), overruled on
other grounds by Aqua Prods., Inc. v. Matal, 872 F.3d
1290 (Fed. Cir. 2017) (en banc).
Claim construction seeks to ascribe the meaning to
claim terms as a person of ordinary skill in the art at the
time of invention would have understood them. Phillips v.
AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en
2 For the claim term “nozzle oriented towards the
splash shield,” f’real proposed a construction of “having at
least one nozzle oriented towards a soiled area of the
splash shield.” J.A. 1330. The Board construed the term
as “a nozzle pre-positioned such that it points at the
splash shield.” Final Written Decision, 2017 WL 6513981,
at *3.
For the claim term “directing rinsing fluid onto the
splash shield using the nozzle,” f’real proposed a construc-
tion of “directing rinsing fluid onto a soiled area of the
splash shield using the pre-positioned nozzle as oriented
towards that soiled area.” J.A. 1330–31. The Board
construed the term to mean “spraying rinsing fluid onto
the splash shield from the pre-positioned nozzle.” Final
Written Decision, 2017 WL 6513981, at *3.
16 HAMILTON BEACH BRANDS, INC. v. F'REAL FOODS, LLC
banc). In an IPR proceeding, claims are given their
broadest reasonable interpretation in light of the specifi-
cation. 3 In re Cuozzo Speed Techs., LLC, 793 F.3d 1268,
1279 (Fed. Cir. 2015) (en banc), aff’d sub. nom., Cuozzo
Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016). In
construing terms, “the person of ordinary skill in the art
is deemed to read the claim term not only in the context of
the particular claim in which the disputed term appears,
but in the context of the entire patent, including the
specification.” Phillips, 415 F.3d at 1313. Indeed, the
specification is “the single best guide to the meaning of a
disputed term” and “[u]sually, it is dispositive.” Id. at
1315. Claims must be construed “in view of the specifica-
tion, of which they are a part.” Id.
The Board’s constructions require that the nozzles are
pre-positioned—i.e., fixed, without manual adjustment—
in a position that points at the splash shield. We begin
our analysis with the claim language. In re Power Inte-
3 On October 11, 2018, the United States Patent
and Trademark Office issued a final rule revising the
claim construction standard for interpreting claims in
inter partes review, post-grant review, and covered busi-
ness method patent review proceedings before the Board.
Changes to the Claim Construction Standard for Inter-
preting Claims in Trial Proceedings Before the Patent
Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11,
2018) (to be codified at 37 C.F.R. pt. 42). The final rule
provides that, for these types of proceedings, the Board
will apply the same standard applied in federal courts to
construe patent claims—i.e., the Phillips standard—to all
petitions filed on or after the effective date of November
13, 2018. Id. Because Hamilton Beach filed its petition
for inter partes review before the effective date of the rule,
we construe the claims under the broadest reasonable
interpretation standard.
HAMILTON BEACH BRANDS, INC. v. F'REAL FOODS, LLC 17
grations, Inc., 884 F.3d 1370, 1376 (Fed. Cir. 2018)
(“[C]laim construction must begin with the words of the
claims themselves.” (citation omitted)). The Board relied
on two aspects of the claim language in support of this
conclusion. First, claim 21 is a method claim that first
describes a mixing machine, and then describes a step of
directing rinsing fluid. The mixing machine is described
as having a “nozzle oriented towards the splash shield,”
’662 patent col. 7 l. 5 (emphasis added), and thus the
Board concluded that “[t]he nozzle is oriented before it is
used to direct rinsing fluid onto the splash shield,” and is
thus “pre-positioned.” Final Written Decision, 2017 WL
6513981, at *3; see Becton, Dickinson & Co. v. Tyco
Healthcare Grp., 616 F.3d 1249, 1257 (Fed. Cir. 2010)
(“Claims must be interpreted with an eye toward giving
effect to all terms in the claim.”) (internal quotation
marks omitted). Second, the Board observed that claim
21 uses the word “positionable” when referring to a mix-
ing machine component “that moves from one position to
another when the method is performed,” and noted that
“oriented” and “positionable,” as different claim terms,
should have different meanings. Final Written Decision,
2017 WL 6513981, at *3; see Bd. of Regents of the Univ. of
Tex. Sys. v. BENQ Am. Corp., 533 F.3d 1362, 1371 (Fed.
Cir. 2008) (“Different claim terms are presumed to have
different meanings.” (citation omitted)). Specifically, the
Board pointed to claim 21, which describes the splash
shield in the mixing machine as “positionable to shield
the opening of the vessel,” and that in the method part of
the claim, the splash shield is positioned as either shield-
ing or unshielding the vessel opening. ’662 patent col. 7 l.
4–col. 8 l. 1. The Board found support for its construction
in the specification, namely in figures showing the nozzles
pre-positioned to be pointed at the splash shield, and a
portion of the specification describing how the splash
shield can rotate within the machine so that all sides of
the shield are exposed to the fluid spray from the noz-
18 HAMILTON BEACH BRANDS, INC. v. F'REAL FOODS, LLC
zles—i.e., the nozzles are in a fixed position. Final Writ-
ten Decision, 2017 WL 6513981, at *4.
On appeal, Hamilton Beach’s primary assertion on
the merits of the claim construction is that the Board’s
construction incorporates limitations from the specifica-
tion that are not present in the claim. We disagree be-
cause claim 21 itself contains language that provides
support for the Board’s construction. Method claim 21
describes the mixing machine as having “a nozzle orient-
ed” towards the splash shield. This limitation is stated as
a feature of the “machine”; it is not phrased in “orienting”
process terms. This suggests a fixed orientation. Addi-
tionally, the Board’s construction properly draws support
from the claim’s use of both the terms “positionable” (for
the shield) and “oriented towards” (for the nozzle). Were
the nozzle also capable of being moved around and posi-
tioned in various ways, the word “positionable” could have
been repeated. Instead, the patentee chose to use orient-
ed, which suggests that the nozzle is pointed at a particu-
lar location, i.e., fixed. Notably, Hamilton Beach makes
no meaningful arguments against this specific claim-
language analysis, instead focusing its efforts on arguing
that f’real did not seek construction of “oriented” or con-
test its meaning.
In light of the foregoing, we conclude that the Board
did not err in its construction of the “nozzle” terms requir-
ing the nozzles to be prepositioned, as this construction
follows the claim’s plain language read in line with the
specification.
2. Obviousness under 35 U.S.C. § 103
Under 35 U.S.C. § 103(a), 4 a patent may not be ob-
tained “if the differences between the subject matter
4 Congress amended § 103 when it passed the
Leahy-Smith America Invents Act (AIA). Pub. L. No.
HAMILTON BEACH BRANDS, INC. v. F'REAL FOODS, LLC 19
sought to be patented and the prior art are such that the
subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary
skill in the art.” 35 U.S.C. § 103(a) (2006).
Obviousness is a question of law with underlying fac-
tual findings relating to the scope and content of the prior
art; the differences between the claims and the prior art;
the level of ordinary skill in the pertinent art; and any
secondary considerations of nonobviousness. ZUP, LLC v.
Nash Mfg., Inc., 896 F.3d 1365, 1371 (Fed. Cir. 2018)
(citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 427
(2007); Graham v. John Deere Co. of Kan. City, 383 U.S.
1, 17–18 (1966)). “We review the [PTAB]’s factual find-
ings for substantial evidence.” Rambus Inc. v. Rea, 731
F.3d 1248, 1251 (Fed. Cir. 2013). “Substantial evidence is
something less than the weight of the evidence but more
than a mere scintilla of evidence,” meaning that “[i]t is
such relevant evidence as a reasonable mind might accept
as adequate to support a conclusion.” In re NuVasive,
Inc., 842 F.3d 1376, 1379–80 (Fed. Cir. 2016) (internal
quotation marks omitted). The inherent teaching of a
prior art reference is a question of fact. Par Pharm., Inc.
v. TWi Pharm., Inc., 773 F.3d 1186, 1194 (Fed. Cir. 2014).
Hamilton Beach argues that the Board erred by rely-
ing on hindsight in its finding that there was no suffi-
ciently proved motivation to combine the prior art
references. Hamilton Beach contends that Neilson pro-
vides motivation to a person of ordinary skill (“POSITA”)
“for the combination with Kelly and Miller by (1) identify-
ing the desirability of a mixing apparatus that is easy to
clean and (2) the requirement to clean the splash shield.”
Appellant’s Br. 33. Hamilton Beach also contends that
112–29, § 3(c), 125 Stat. 284, 287 (2011). Because the
priority date of the ’662 patent is before March 16, 2013,
the pre-AIA § 103 applies.
20 HAMILTON BEACH BRANDS, INC. v. F'REAL FOODS, LLC
Kelly and Miller “provide express motivation to clean
components in place with a nozzle after each blending
cycle.” Id. at 38.
We conclude that substantial evidence supports the
Board’s finding that Hamilton Beach did not persuasively
establish a motivation to combine the prior art references
to arrive at claim 21. Although the prior art recites
cleaning the mixing machine, 5 substantial evidence
supports the Board’s finding that Hamilton Beach did not
prove that the prior art provides a motivation to clean
components in place with a fixed nozzle directed towards
the splash shield. See Final Written Decision, 2017 WL
6513981, at *6–7. Kelly describes how having the mixing
machine being positioned over a sink is beneficial because
doing so allows “for the cleaning of all interior parts in
their mounted positions, in fact, if required while in mo-
tion, whereas the cleaning of removed, or removable
parts, or those not even belonging to the machine, can be
cleaned in the forward portion . . . of the sink 46.”
J.A. 101 (emphasis added). But the method of cleaning in
the claimed invention is fundamentally different from
that of the prior art, in that claim 21 requires the mixing
vessel to be isolated from the rinsing fluid cleaning the
splash shield. Kelly discloses a spray device that is
5 Miller notes the importance of cleaning the spin-
dle after each use. J.A. 135 (disclosing “delivery of the
sterilizing solution or fresh water through a dedicated
nozzle 129 for flushing and cleaning the spindle 114 after
each use in preparing a flavored shake”). Neilson de-
scribes a stationary lid, analogous to a splash shield,
being “readily detachable for cleaning.” J.A. 119. Kelly
emphasizes the importance of cleaning the auger (i.e., the
component doing the mixing), and discloses using “at least
one spray device” to clean “the entire interior” of the
blending device. J.A. 100–01.
HAMILTON BEACH BRANDS, INC. v. F'REAL FOODS, LLC 21
“adjustable in such a manner so as to clean the interior of
the auger, the mixing cone, and the entire interior”—i.e.,
the mixing vessel is not isolated. Id. And as the Board
found, Kelly does not teach a spray device that is fixed in
a position to point towards the splash shield. Final
Written Decision, 2017 WL 6513981, at *7.
Even if the prior art discloses the limitations Hamil-
ton Beach identifies, such as cleaning components in place
and a nozzle, the prior art does not identify a reason why
a POSITA would have been motivated to combine those
limitations. See KSR, 550 U.S. at 418 (2007) (“[I]t [is]
important to identify a reason that would have prompted
a person of ordinary skill in the relevant field to combine
the elements in the way the claimed new invention
does.”). Rather, substantial evidence supports the Board’s
finding that “[t]he combination of Neilson, Kelly, and
Miller does not teach or suggest the nozzle limitations of
claim 21 without relying on the claim as a roadmap for
selecting and modifying the teachings.” Final Written
Decision, 2017 WL 6513981, at *7.
Nor does Hamilton Beach point to testimony that
would compel the Board to find that a POSITA would
have been motivated to combine or modify the prior art
elements to reach the claimed invention. 6 For instance,
Kelly contemplates that components can be cleaned
without necessarily being removed from the machine, but
Kelly provides no incentive or motivation or even com-
mentary on why that would be desirable. Hamilton Beach
also argues that the Board improperly assumed that the
6 While Hamilton Beach’s expert Dr. Slocum testi-
fied before the Board that a POSITA would have modified
Miller to achieve the claimed invention, the Board dis-
counted his testimony as being inconsistent with Miller’s
teachings. Final Written Decision, 2017 WL 6513981, at
*7.
22 HAMILTON BEACH BRANDS, INC. v. F'REAL FOODS, LLC
method of claim 21 involves an automatic rinsing step.
Appellant’s Br. 34–35. Hamilton Beach disputes that the
cleaning has to be done automatically, noting that claim
21 includes no reference to automation, and that claim 2,
which claims the method of claim 1 in which the step
“directing hot rinsing fluid onto the splash shield using
the nozzle” is performed automatically. We disagree.
Although the Board noted that the prior art references all
disclose manual cleaning of a splash shield, 7 its findings
or conclusions regarding obviousness did not depend on
the claimed method being automatic. On the contrary,
the Board used language that expressly contemplates that
the claimed method may be automatic or manual, and
considered the obviousness of the claim in light of the
prior art for both. Final Written Decision, 2017 WL
6513981, at *7 (“In the Reply Brief, Petitioner argues
that, even if claim 21 were limited to automatic rinsing,
Miller discloses an electronically controlled nozzle 129. . . .
We are not persuaded by Petitioner’s argument for two
reasons.” (emphasis added)).
We have considered Hamilton Beach’s other argu-
ments and find them unpersuasive. Thus, in light of the
foregoing, we hold that substantial evidence supports the
Board’s determination that Neilson, Kelly, and Miller do
not teach or suggest a method of rinsing a splash shield in
which a nozzle is pre-positioned such that it points at the
splash shield and rinsing fluid is sprayed onto the splash
shield from the pre-positioned nozzle. That is, the Board
did not err in its decision that the prior art did “not teach
7 Neilson contains no particular cleaning mecha-
nism; Kelly discloses a hose-like nozzle that must be
operated and pointed by a user; and Miller discloses a
nozzle which is fixed to clean the spindle, but the splash
shield/sleeve must be removed and cleaned by hand.
HAMILTON BEACH BRANDS, INC. v. F'REAL FOODS, LLC 23
or suggest the nozzle limitations of claim 21.” Final
Written Decision, 2017 WL 6513981, at *11.
Hamilton Beach also challenges the Board’s determi-
nation that f’real’s evidence of secondary considerations
supports nonobviousness. See id. at *8–11. But since we
affirm Board’s findings regarding the failure of the prior
art to teach or suggest all limitations of claim 21, we need
not address Hamilton Beach’s assertions of error in the
Board’s consideration of the objective indicia of nonobvi-
ousness.
AFFIRMED
COSTS
No costs.