NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
BLACK & DECKER, INC.,
Appellant
v.
POSITEC USA, INC., RW DIRECT, INC.,
Cross-Appellants
______________________
2015-1646, 2015-1647
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in
No. IPR2013-00502.
______________________
Decided: May 18, 2016
______________________
CHRISTOPHER MICHAEL BROCK, Harness, Dickey &
Pierce, PLC, Bloomfield Hills, MI, argued for appellant.
Also represented by MICHAEL E. HILTON, Troy, MI.
ROBERT HERMAN EICHENBERGER, Middleton Reut-
linger, Louisville, KY, argued for cross-appellants. Also
represented by ROBERT J. THEUERKAUF.
SARAH E. CRAVEN, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA,
2 BLACK & DECKER, INC. v. POSITEC USA, INC.
argued for intervenor Michelle K. Lee. Also represented
by THOMAS W. KRAUSE, SCOTT WEIDENFELLER, JEREMIAH
HELM.
______________________
Before LOURIE, MOORE, and CHEN, Circuit Judges.
CHEN, Circuit Judge.
These appeals arise from an inter partes review of
U.S. Patent No. 5,544,417 (the ’417 patent) owned by
Black & Decker, Inc. The United States Patent and
Trademark Office, Patent Trial and Appeal Board insti-
tuted review on the petition of Positec USA, Inc. and RW
Direct, Inc. (collectively, Cross-Appellants). In its final
written decision, the Board found: (1) claims 16 and 17
unpatentable under 35 U.S.C. § 103 as obvious over U.S.
Patent No. 4,498,237 (Mack); and (2) claims 7 and 10 not
obvious over Mack and U.K. Patent Application GB 2 115
665 A (Laverick). Black & Decker appeals the Board’s
finding that claims 16 and 17 would have been obvious;
Cross-Appellants appeal the Board’s finding that claims 7
and 10 would not have been obvious. For the reasons
stated in this opinion, we reverse the Board’s decision that
claims 16 and 17 would have been obvious and affirm its
decision that claims 7 and 10 would not have been obvi-
ous.
BACKGROUND
I. The ’417 Patent
The ’417 patent is directed to a manner of mounting a
motor in the housing of a string trimmer. ’417 patent,
1:22–28. Specifically, the patent discloses the use of a
“motor mounting plate” supported by the string trimmer’s
housing such that the motor does not contact the interior
surface of the housing. Id.
The claimed invention’s motor-mounting scheme al-
legedly decreases manufacturing costs of prior art string
BLACK & DECKER, INC. v. POSITEC USA, INC. 3
trimmers by eliminating the need for “ribs” molded into
the interior surface of the housing otherwise necessary to
prevent the motor from moving. Id. at 1:41–2:8. As the
patent specification explains:
While [the prior art] mounting arrangement oper-
ates satisfactorily to support a motor within a
housing of a string trimmer, this mounting ar-
rangement does require relatively precisely-
positioned ribs on the interior surfaces of the
housing halves. These ribs somewhat complicate
the construction of the two housing halves, which
are typically molded from plastic and requires
more complex and expensive molds or dies for
producing the two housing halves. Additionally, if
the ribs are not relatively precisely positioned or
of a relatively precise height, then the motor may
be able to wobble or otherwise move or cause vi-
bration during operation of the string trimmer.
Still further, precisely formed and positioned ribs
are often difficult to achieve when certain types of
plastic are used to construct the housing.
Id. at 1:52–66.
The ’417 patent describes a string trimmer that uses a
rib-less housing as show in the patent’s Figure 3:
4 BLACK & DECKER, INC. v. POSITEC USA, INC.
The motor (36) makes no direct contact with the inner
surface of the housing (30). Id. at 5:25–31. Rather, the
motor is attached to the housing via a motor mounting
plate assembly (38). Id. at 4:30–33. During manufacture,
the motor is attached to the motor mounting plate assem-
bly. Id. at 2:36–39. The assembly’s plate member (40) is
then inserted into a groove that is “formed circumferen-
tially about an interior of each housing half,” thereby
holding the structure in place. Id. at 2:34–42.
Claims 7 and 16 are the independent claims at issue
in these appeals. Claim 7 is an apparatus claim. It
states:
7. A line trimming apparatus for trimming vege-
tation, comprising:
a trimming line;
a motor drivingly connected to the line;
a housing having an interior wall surface,
said interior wall surface including a
mounting area in the form of a groove
formed thereon; and
BLACK & DECKER, INC. v. POSITEC USA, INC. 5
a mounting plate assembly fixedly secured
to said motor for mounting said motor
within said housing such that said at least
a portion of said mounting plate assembly
is supported within said groove in said in-
terior wall surface of said housing such
that said motor is supported within said
housing without the need for direct con-
tact of any portion of said motor with said
interior wall surface of said housing.
Id. at 8:35–49. Claim 16 is a method claim. It states:
16. A method for assembling an outdoor power
tool, the method comprising:
forming a first housing section having a
circumferential groove formed in an inte-
rior wall thereof;
forming a second housing section having a
circumferential groove formed in an inte-
rior wall thereof;
fixedly securing a motor mounting plate to
a motor;
inserting a portion of said motor mounting
plate into said circumferential groove in
said second housing section;
placing said first housing section against
said second housing section to cause a por-
tion of said mounting plate to engage
within said circumferential groove in said
interior wall of said first housing section,
to thereby cause said mounting plate to be
supported at a plurality of positions by
said circumferential grooves, to thereby
enable said motor to be supported within
said first and second housing sections
6 BLACK & DECKER, INC. v. POSITEC USA, INC.
without said motor contacting any portion
of said interior walls of said first and sec-
ond housing sections; and
securing said first housing section to said
second housing section.
Id. at 10:11–31. Dependent claims 10 and 17 include
additional limitations related to the motor mounting plate
assembly. Id. at 9:8–14, 10:32–41.
II. Procedural History
Cross-Appellants requested inter partes review of
claims 1, 2, 4, 5, 7, 10, 12–14, 16, and 17 of the ’417 pa-
tent. In response, Black & Decker disclaimed claims 1, 2,
4, 5, and 12–14. The Board then instituted review of
claims 7, 10, 16, and 17 on the following grounds:
(1) claims 7 and 10 as unpatentable under 35 U.S.C.
§ 103(a) as obvious over Laverick and Mack; and
(2) claims 16 and 17 as unpatentable under
35 U.S.C. § 103(a) as obvious over Mack. In its final
written decision, the Board found that claims 7 and 10
would not have been obvious over Laverick and Mack and
claims 16 and 17 would have been obvious over Mack.
Positec USA, Inc. v. Black & Decker Inc., IPR2013-00502,
2015 WL 5440722, at *1 (PTAB Jan. 29, 2015) (Final
Written Decision).
Laverick discloses a prior art string trimmer. Laver-
ick, 1:4–9. Its housing consists of two “clam-shell” por-
tions joined longitudinally. Id. at 1:92–97. Each portion
contains a rib molded into the inner surface of the hous-
ing. Id. at 2:24–27. The rib works in conjunction with
other design features, including flanges on the motor that
engage a groove on the inner surface of the housing, to
hold the string-trimmer’s motor in place. Id. at 2:17–44.
Mack discloses an electric-powered hair trimmer.
Mack, 1:6–7. Like Laverick, Mack’s housing consists of
two “clam-shell” portions joined longitudinally. Id. at
BLACK & DECKER, INC. v. POSITEC USA, INC. 7
2:31–35. The inner surfaces of Mack’s portions include a
groove designed to hold a mounting structure for the
trimmer’s motor. Id. at 3:18–24. The motor is attached to
the mounting structure with a motor mounting yoke made
of spring grade wire. Id. at 3:5–24.
With respect to claims 7 and 10, the Board focused its
analysis on the “fixedly secured” and “without the need
for direct contact” limitations of the claims. The Board
construed “fixedly secured” to mean “fastened such that
relative movement is prevented.” 1 Final Written Decision,
2015 WL 5440722, at *4. The Board then found that
Mack did not disclose this limitation. It explained that
the flex in the spring grade wire used to attach the motor
to the mounting structure coupled with the small contact
surface between the motor and the mounting structure
allowed the motor to move. Id. at *10–11, *12. The Board
also found that Laverick did not disclose the “without the
need for direct contact” limitation as its housing directly
contacted the motor at multiple points in order to hold the
motor in place. Id. at *12. Finally, the Board rejected
Cross-Appellants’ argument that “one of ordinary skill in
the art would have arrived at the ‘fixedly secured’ and
‘without need for direct contact’ limitations simply by
scaling-up Mack’s mounting plate assembly for use with
Laverick’s bigger motor.” Id. at *13. The Board thereby
concluded that the claims would not have been obvious.
Turning to claims 16 and 17, the Board’s analysis
again focused on the “fixedly securing” and “without . . .
contacting” limitations. Consistent with its analysis of
claims 7 and 10, the Board found that Mack did not
disclose the “fixedly securing” limitation. Id. at *16.
1 In construing the claim this way, the Board re-
jected a broader construction proposed by Cross-
Appellants: “securely placed or fastened.” Final Written
Decision, 2015 WL 5440722, at *4.
8 BLACK & DECKER, INC. v. POSITEC USA, INC.
However, the Board found that a person of ordinary skill
“would have known” how to fixedly secure Mack’s motor
and “could have” done so “using bolts or screws instead of
the spring grade wire.” Id. Because the person of ordi-
nary skill also would have understood that Mack’s motor
did not contact the inner surface of its housing, the Board
found claims 16 and 17 obvious. Id. at *16–17.
Black & Decker filed a timely appeal from the Board’s
decision, and Cross-Appellants filed a cross-appeal. 2 We
have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
For clarity, we address the issues on appeal in the
same order they were initially addressed by the Board.
Therefore, we depart from our normal practice and ad-
dress the cross-appeal first.
I. Claim Construction
Cross-Appellants challenge the Board’s construction
of “fixedly secured” (claim 7) and “fixedly securing” (claim
16) to mean “fastened/fastening such that relative move-
ment is prevented.” Cross-Appellants contend that the
terms should be more broadly construed as “fixedly se-
2 The Director intervened on two narrow grounds:
(1) Cross-Appellants waived any appeal to the Board’s
decision not to institute review on certain grounds; and
(2) the doctrine of prosecution disclaimer did not require
the Board to give effect to Black & Decker’s contempora-
neous argument-based disclaimer of patent claim scope
during the inter partes review proceeding. Cross-
Appellants did not challenge the Board’s institution
decision in their appeal. Moreover, we do not reach the
issue of prosecution disclaimer in resolving the parties’
appeals. We thus do not address the Director’s argu-
ments.
BLACK & DECKER, INC. v. POSITEC USA, INC. 9
cured or fastened.” Cross-Appellants’ Opening Br. at 34
(“Positec respectfully asks this Court to reverse the
Board’s claim construction . . . and adopt Positec’s pro-
posed construction: ‘securely placed or fastened.’ Under
the proper broadest reasonable interpretation, the terms
do not require fastening ‘such that relative movement is
prevented.’” (emphasis in original)).
We apply the framework established in Teva Pharma-
ceuticals U.S.A., Inc. v. Sandoz, Inc., 135 S. Ct. 831
(2015), when reviewing a claim construction adopted by
the Board. Microsoft Corp. v. Proxyconn, Inc., 789 F.3d
1292, 1297 (Fed. Cir. 2015). Under that framework, we
review the Board’s ultimate claim construction de novo
with any underlying factual determinations involving
extrinsic evidence reviewed for substantial evidence. Id.
(citing Teva, 135 S. Ct. at 841–42).
As an initial matter, we note that the Board applied
the “broadest reasonable interpretation” when construing
the claims at issue. While this is the proper standard
when construing claims of an unexpired patent, In re
Cuozzo Speed Techs., 793 F.3d 1268, 1279 (Fed. Cir.
2015), the ’417 patent expired in October 2014—
approximately three months before the Board’s final
written decision. Claims of an expired patent are given
their ordinary and customary meaning in accordance with
our opinion in Phillips v. AWH Corp., 415 F.3d 1303 (Fed.
Cir. 2005) (en banc). 3 See In re Rambus Inc., 694 F.3d 42,
46 (Fed. Cir. 2012).
Despite the Board’s use of an improper standard, ap-
plying the Phillips standard, we find that its ultimate
construction of “fixedly secured/securing” is nonetheless
correct. The Board properly consulted the ’417 patent’s
specification in construing the term. Phillips, 415 F.3d at
3 No party raised this issue in its briefs.
10 BLACK & DECKER, INC. v. POSITEC USA, INC.
1315 (“[T]he specification is always highly relevant to the
claim construction analysis. Usually, it is dispositive; it is
the single best guide to the meaning of a disputed term.”
(internal quotation marks and citation omitted)). The
specification describes the manner in which the motor and
mounting plate assembly—the components that are
“fixedly secured”—are attached as “rigidly coupled.”
Final Written Decision, 2015 WL 5440722, at *4 (citing
’417 patent, 5:5–7). The Board properly understood
“‘rigidly coupled,’ in this context, to signify that the cou-
pled components cannot move relative to one another.”
Id. The specification further describes the use of threaded
screws to assemble the motor mounting plate assembly
and attach it to the motor. Id. (citing ’417 patent, 4:40–
42, 5:8–10). Moreover, Black & Decker during prosecu-
tion overcame an anticipation rejection by arguing that
Mack’s motor is attached to the motor mounting assembly
by “yoke 43 . . . formed from a ‘spring grade wire’” and,
thus, is not “fixedly secured to the motor mounting plate
assembly, as is the case with Applicant’s invention.” J.A.
195 (emphasis in original). Based on the intrinsic evi-
dence, the Board properly concluded that components that
are “fixedly secured,” in this context, cannot move relative
to each other.
Cross-Appellants’ arguments in support of their pro-
posed construction miss the mark. First, Cross-
Appellants claim that various passages in the specifica-
tion suggest a broader construction of “fixedly secured”
and “fixedly securing.” Cross-Appellants’ Opening Br. at
32–33. However, each passage Cross-Appellants cite
relates to connections between components other than
those claimed to be “fixedly secured” (i.e., the motor and
mounting plate assembly). Id. (citing descriptions of
connections between (1) the motor mounting plate assem-
bly and housing, and (2) the fan and armature shaft). The
specification explicitly describes the connection between
the motor and the mounting plate assembly as “rigidly
BLACK & DECKER, INC. v. POSITEC USA, INC. 11
coupled,” as the Board found. Second, Cross-Appellants
claim that the Board improperly relied upon dictionary
definitions and Mack in construing the terms. However,
the Board made clear that its construction was based on
the ’417 patent’s claims and specification. Final Written
Decision, 2015 WL 5440722, at *4 (“In light of the Specifi-
cation, therefore, the broadest reasonable interpretation
of ‘fixedly secured’ is ‘fastened such that relative move-
ment is prevented.’” (emphasis added)). It cited diction-
ary definitions, J.A. 217–18, and Mack, Final Written
Decision, 2015 WL 5440722, at *4, only as additional
support. The Board’s use of extrinsic evidence in this way
is not improper. See Phillips, 415 F.3d at 1317 (authoriz-
ing the use of extrinsic evidence in claim construction, but
describing it as “less significant than the intrinsic record”
(citation omitted)).
II. Obviousness
Obviousness is a question of law based on underlying
findings of fact. In re Kubin, 561 F.3d 1351, 1355 (Fed.
Cir. 2009). The underlying findings of fact include:
“(1) the scope and content of the prior art; (2) the differ-
ences between the prior art and the claims at issue;
(3) the level of ordinary skill in the art at the time the
invention was made; and (4) objective evidence of nonob-
viousness, if any.” Id.; see also Graham v. John Deere Co.,
383 U.S. 1, 17–18 (1966). In an appeal of a Board deci-
sion, we review the Board’s underlying factual findings for
substantial evidence. Merck & Cie v. Gnosis S.P.A., 808
F.3d 829, 833 (Fed. Cir. 2015). We review the Board’s
ultimate determination of obviousness de novo. Id.
A. Claims 7 and 10
Cross-Appellants contend that the combination of
Laverick and Mack teach the two limitations the Board
found lacking: (1) the motor is “fixedly secured” to the
mounting plate assembly; and (2) the motor is supported
within the housing “without the need for direct contact”
12 BLACK & DECKER, INC. v. POSITEC USA, INC.
between the motor and the housing. Cross-Appellants’
Opening Br. at 35–44. Cross-Appellants further contend
that the Board committed legal error when it found that a
person of ordinary skill in the art would not exercise
common sense and combine Laverick and Mack to form
the patented invention. Id. at 44–50.
We hold that the Board’s finding that Mack does not
disclose the “fixedly secured” limitation is supported by
substantial evidence. Mack’s motor is attached to the
mounting structure with a motor mounting yoke made of
spring grade wire. Mack, 3:5–24. The Board credited the
testimony of Black & Decker’s expert, Mr. Philip J.
O’Keefe, that “the flex in the spring grade wire of yoke 43,
and the small contact surface between motor 25 and flat
portion 45, allow the motor both to move axially and to
wobble from side-to-side.” Final Written Decision, 2015
WL 5440722, at *10 (emphases in original). We find no
fault in the Board’s decision to credit Mr. O’Keefe’s testi-
mony. See id. at *11. The testimony is consistent with
Mack’s disclosure, which describes the yoke as working
with other features of Mack to prevent motor rotation, not
axial or lateral movement. Mack, 3:18–24. Moreover,
Cross-Appellants offered no expert testimony of their own
to rebut Mr. O’Keefe. Because Mack’s motor can “move
axially” and “wobble from side-to-side,” it is not “fixedly
secured.”
We further agree with the Board that Cross-
Appellants did not meet their burden in establishing that
it would have been obvious to one of skill in the art to
modify Laverick with Mack’s mounting plate assembly in
a way that would satisfy the “fixedly secured” and “with-
out the need for direct contact” limitations of claim 7. 4
4 Because we find that it would not have been obvi-
ous to modify Laverick in this way, we need not address
Cross-Appellants’ argument that the Board failed to
BLACK & DECKER, INC. v. POSITEC USA, INC. 13
Cross-Appellants contend that a person of ordinary skill
would substitute the flange and groove assembly in
Laverick with the plate and groove assembly in Mack.
Cross-Appellants’ Opening Br. at 48. However, as the
Board explained, these features serve different purposes.
Final Written Decision, 2015 WL 5440722, at *13 (stating
that “Mack’s groove/plate . . . secures Mack’s motor
against rotation” while “the groove/flange of Laverick . . .
prevent[s] the motor from wobbling or otherwise moving
and causing vibration”). Therefore, it is unclear why a
person of ordinary skill would make this substitution.
And, even assuming that the substitution were made,
Cross-Appellants presented no evidence to the Board that
a person of ordinary skill would have made the various
structural changes necessary to prevent relative move-
ment between the motor and mounting plate without the
need for direct contact with the housing. As the Board
explained, “the groove/flange of Laverick is just one
component of a composite support structure comprising
precisely molded supporting ribs, protrusions, and surfac-
es that, together, function to clamp Laverick’s motor
along its length and to prevent the motor from wobbling
or otherwise moving and causing vibration.” Id. Cross-
Appellants offered mere attorney argument to explain
why a person of ordinary skill would remove these various
structures, including the supporting rib, and instead
“fixedly secure” the motor by making Mack’s mounting
arrangement “beefier.” J.A. 791–92 (conceding that
“[t]here’s no testimony” to support Cross-Appellants’
obviousness contention). Based on this record, we agree
with the Board’s conclusion that it would not have been
obvious to the person of ordinary skill “to make all of the
consider whether Mack disclosed the “without the need
for direct contact limitation.” Cross-Appellants’ Opening
Br. at 43–44.
14 BLACK & DECKER, INC. v. POSITEC USA, INC.
functional and structural changes needed to prevent
relative movement between the plate and the motor and
to support the motor without use of direct contact with
the housing.” Final Written Decision, 2015 WL 5440722,
at *13.
We therefore affirm the Board’s decision that claims 7
and 10 would not have been obvious.
B. Claims 16 and 17
Although the Board properly concluded that appa-
ratus claims 7 and 10 would not have been obvious in
view of Laverick and Mack, the Board nonetheless con-
cluded that closely-related method claims 16 and 17
would have been obvious in view of Mack alone. Black &
Decker contends that the Board committed legal error in
two ways in finding claims 16 and 17 obvious. First,
Black & Decker argues that the Board improperly relied
on figures that are not drawn to scale when it found that
Mack met the “without . . . contacting” limitation. Appel-
lant’s Opening Br. at 38–45. Second, Black & Decker
argues that the Board failed to articulate a reason why a
person of ordinary skill in the art would modify Mack to
meet the “fixedly securing” limitation. Id. at 45–54.
We agree that the Board failed to explain why a per-
son of ordinary skill in the art would “fixedly secure” the
motor in Mack. Our precedent requires that the Board
explain a rationale why a person of ordinary skill would
have modified Mack’s motor. See Ball Aerosol & Specialty
Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993
(Fed. Cir. 2009) (explaining that the skilled artisan’s
motivation “should be made explicit”). In its decision, the
Board stated that Mack “suggests” the limitation. Final
Written Decision, 2015 WL 5440722, at *16. It went on to
state what one of skill in the art “would have known” or
“could have” done to meet the limitation. Id. This is not
sufficient. Our precedent required that the Board explain
why one of skill in the art would have adapted or replaced
BLACK & DECKER, INC. v. POSITEC USA, INC. 15
Mack’s motor mounting yoke to ensure that the motor did
not move relative to the motor mounting structure. The
Board did not do so.
Moreover, the Board’s finding that Mack suggests
“fixedly securing” the motor to the mounting structure is
not supported by substantial evidence. See Kinetic Con-
cepts, Inc. v. Blue Sky Med. Grp., Inc., 554 F.3d 1010,
1019 (Fed. Cir. 2009) (describing the scope and content of
the prior art as a factual question reviewed for substan-
tial evidence). The only evidence cited by the Board
states that the motor is “positioned and supported against
rotation.” Mack, 3:18–24 (emphasis added). Nothing in
Mack suggests that the motor should be further supported
against lateral or axial movement.
In fact, the proposed modification to Mack’s device
seems to run counter to the intended purpose of Mack’s
design. The Board stated that “[a] person of ordinary skill
would have known, for example, that plate 45 could have
been fixedly secured to motor 25 using bolts or screws
instead of spring grade wire.” Final Written Decision,
2015 WL 5440722, at *16. Yet, Mack’s hair trimmer was
designed to improve on prior art units that had “relatively
high costs and complex constructions which make assem-
bly, repair and cleaning difficult.” Mack, 1:27–29. Mack
therefore disclosed “an easily manipulated, efficient,
quiet, hair trimmer having relatively few components that
is particularly well-adapted for self-use.” Id. at 1:39–42
(emphasis added). Replacing Mack’s yoke with bolts or
screws, as the Board suggests, would increase the number
of components necessary to mount the motor and, thereby,
increase assembly and repair costs. Such a modification
is inconsistent with Mack’s stated goal.
16 BLACK & DECKER, INC. v. POSITEC USA, INC.
We therefore reverse the Board’s decision that claims
16 and 17 would have been obvious. 5
CONCLUSION
For the foregoing reasons, we affirm the Board’s deci-
sion that claims 7 and 10 would not have been obvious
and reverse its decision that claims 16 and 17 would have
been obvious.
AFFIRMED-IN PART, REVERSED-IN-PART
COSTS
No Costs.
5 Because we find that it would not have been obvi-
ous to modify Mack to meet the “fixedly securing” limita-
tion, we need not address Black & Decker’s argument that
the Board erred by relying on certain figures in Mack to
meet the “without . . . contacting” limitation. We likewise
need not reach Black & Decker’s additional arguments
regarding analogous art and the effect of claim 16’s pre-
amble on the obviousness analysis.