Friday, August 04, 2017

Homeland wins appeal at CAFC against Whirlpool

Homeland Housewares, LLC (“Homeland”) petitioned the United States Patent and Trademark Office Patent Trial and Appeal Board (“Board”) for an inter partes review of claims 1–16 of U.S. Patent No. 7,581,688 (“’688 patent”), which is assigned to Whirlpool Corporation (“Whirlpool”). The Board did not construe the key term “settling speed” found in the claims and determined that the claims were not invalid as anticipated by prior art reference U.S. Patent No. 6,609,821 (“Wulf”). Homeland appeals. We reverse.

Of anticipation

Anticipation is a two-step analysis. The first step is properly interpreting the claims. Beachcombers v. WildeWood Creative Prods., Inc., 31 F.3d 1154, 1160 (Fed. Cir. 1994). The second step is determining whether the limitations of the claims, as properly interpreted, are met by the prior art. Id. The Board determined that Wulf did not anticipate the ’688 patent because its disclosures did not meet the “settling speed” limitation. J.A. 14. However, the Board did “not adopt any explicit construction of the term for [its] Final Written Decision,” J.A. 7, even though the parties disagreed as to claim construction.2 Just as district courts must, “[w]hen the parties raise an actual dispute regarding the proper scope of . . . claims, . . . resolve that dispute,” O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008), the Board also must resolve such disputes in the context of IPRs. See CSR, PLC v. Skullcandy, Inc., 594 F. App’x 672, 678 (Fed. Cir. 2014) (holding that “[t]he Board erred by failing to construe ‘threshold value’ as it is used
in claims 1–6 before finding that [prior art reference] Smith failed to disclose a ‘threshold value’” in anticipation). Given that the Board did not rely on extrinsic evidence here as to claim construction, we can determine the correct construction of “settling speed” and then determine whether the Board correctly held that Wulf does not meet the limitations of claim 1. Teva, 135 S. Ct. at 841.

“[T]he claim construction inquiry . . . begins and ends in all cases with the actual words of the claim.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998) (citations omitted). Here, the relevant language of claim 1 provides that during pulsing, “the speed of the cutter assembly is reduced from the operating speed to a predetermined settling speed.” ’688 patent, col. 7 ll. 15–17 (emphasis added).


The words of a claim are generally given their ordinary and customary meaning. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005). In some cases, the ordinary meaning of claim language may be readily apparent and claim construction will involve little more than the application of the widely accepted meaning of commonly understood words. Id. at 1314. Here, it is undisputed that the plain meaning of “predetermined” is to determine beforehand. This plain language definition does not require that a predetermined speed be empirically determined for each use, depending on the particular blender or the individual contents of the blender. Claims must also be read in view of the specification, of which they are a part. Phillips, 415 F.3d at 1315. While the specification refers to an embodiment of the invention in which “a predetermined settling speed” is empirically determined and varies depending on blender use, the process for empirically determining a settling speed is neither taught in the specification nor a part of the claims. The claim language only requires “a predetermined settling speed,” and does not require empirically determining a particular settling speed for a particular blender or a particular blender load.

There was a dissent.

NEWMAN, Circuit Judge, dissenting. The court today rewrites the claims of the ’688 patent, adopting a “claim construction” that states the invention more broadly than did the patentee. The court then holds its broadened claims anticipated by the prior art, on which the patentee has provided an improvement that is not shown in the prior art.


The court’s rejection of the Board’s finding that the claims are not anticipated is based on an incorrect understanding of the claims, coupled with an unwarranted enlargement of the references. The ’688 patent is directed to an improvement in blender technology, an improvement explained in the specification and by unrebutted expert testimony. My colleagues make their own findings, construe the claims to broadly include the prior art, and then invalidate the claims based on their unduly broad claim construction.

Substantial evidence:

The Board’s findings are supported by substantial evidence; the majority does not show otherwise.2 As reiterated in Apple Inc. v. Samsung Electronics Co., Ltd., “such fact findings are indisputably the province of the [factfinder].” 839 F.3d 1034, 1039 (Fed. Cir. 2016). The structure of the post-grant administrative process assigns to this court the traditional “appellate function . . . limited to deciding the issues raised on appeal by the parties, deciding these issues only on the basis of the record made below, and . . . requiring appropriate deference be applied to the review of factfindings.” Id.; see also Cutter v. Wilkinson, 544 U. S. 709, 718, n.7 (2005) (“[W]e are a court of review, not first view.”). The panel majority does not discuss the substantial evidence on which the Board’s decision was based, ignores the unrebutted expert evidence, and in general oversteps the appellate role.


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