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ARTICLE · 24 APRIL 2017

Anticipation Law Does Not Permit Finding Missing Claim Elements Based Only On Artisans "Immediately Envisioning Them"

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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The recent Federal Circuit decision, Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd. et al., No. 2016-1900 (Fed. Cir. Mar. 14, 2017)

United StatesIntellectual Property
J. Derek McCorquindale
J. Derek McCorquindale
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The recent Federal Circuit decision, Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd. et al., No. 2016-1900 (Fed. Cir. Mar. 14, 2017), explained the anticipation teachings of earlier precedent and unanimously reversed the invalidity determination of the Patent Trial and Appeal Board ("PTAB"). In the March 14, 2017, panel opinion by Circuit Judge Moore, alongside Circuit Judges Lourie and Taranto, the court rejected the PTAB's anticipation analysis and corrected a misapplication of 35 U.S.C. § 102 used to invalidate a claim.

In inter partes review No. IPR2014-01122, the petitioners Zhongshan Broad Ocean Motor Co. Ltd., Broad Ocean Motor LLC, and Broad Ocean Technologies, LLC (collectively "Broad Ocean") alleged that claim 21 of Nidec Motor Corp.'s ("Nidec") U.S. Patent No. 7,208,895 (the "'895 patent") was invalid as anticipated by U.S. Patent No. 5,569,995 ("Kusaka"). Nidec's '895 patent discloses a system for controlling the torque of an

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