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
JOSEPH MATAL, PERFORMING THE FUNCTIONS
AND DUTIES OF THE UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR, U.S. PATENT AND TRADEMARK
OFFICE,
Intervenor
______________________
2016-2321
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2014-
01121, IPR2015-00762.
______________________
Decided: August 22, 2017
______________________
SCOTT R. BROWN, Hovey Williams LLP, Overland
Park, KS, argued for appellant. Also represented by
MATTHEW B. WALTERS; CHRISTOPHER MICHAEL HOLMAN,
2 NIDEC MOTOR CORP. v. ZHONGSHAN BROAD OCEAN MOTOR CO.
University of Missouri-Kansas City School of Law, Kan-
sas City, MO.
STEVEN F. MEYER, Locke Lord LLP, New York, NY,
argued for appellees. Also represented by JOSEPH
ANTHONY FARCO; CHARLES BAKER, Houston, TX.
NATHAN K. KELLEY, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA
argued for intervenor. Also represented by FRANCES
LYNCH, JOSEPH MATAL, SCOTT WEIDENFELLER.
DAVID R. MARSH, Arnold & Porter Kaye Scholer LLP,
Washington, DC, for amicus curiae Biotechnology Innova-
tion Organization. Also respresented by SEAN MICHAEL
CALLAGY, San Francisco, CA.
______________________
Before DYK, REYNA, and WALLACH, Circuit Judges.
Opinion for the court filed PER CURIAM.
Concurring opinion filed by Circuit Judge DYK, in which
Circuit Judge WALLACH joins.
PER CURIAM.
Nidec Motor Corporation (“Nidec”) appeals a final
written decision of the Patent Trial and Appeal Board
(“Board”) in an inter partes review (“IPR”). The Board
determined that claims 1–3, 8, 9, 12, 16, and 19 of U.S.
Patent No. 7,626,349 (the “’349 Patent”) are invalid as
anticipated or obvious. We affirm.
BACKGROUND
Appellant Nidec owns the ’394 patent, which is di-
rected to low-noise heating, ventilating, and air condition-
ing (“HVAC”) systems. The patented HVAC system
includes a permanent magnet electric motor that turns a
fan in order to move air through ductwork. As compared
NIDEC MOTOR CORP. v. ZHONGSHAN BROAD OCEAN MOTOR CO. 3
to conventional HVAC systems, the invention achieves
quieter operation of the motor due to improvements in the
motor controller. Specifically, the improved motor con-
troller performs sinewave commutation instead of more
conventional square-wave commutation. Commutation
refers generally to the repeated sequencing of electrical
currents applied to windings within the permanent mag-
net motor that causes the motor to rotate. Square-wave
commutation involves abrupt changes in the voltage
applied to a given winding as the sequence progresses,
similar to repeatedly flipping a switch between three
voltage states: positive, zero, and negative. Sinewave
commutation, by contrast, involves more gradual and
continuous oscillations in applied voltage, similar to
sliding a dimmer switch between those states. As com-
pared to square-wave commutation, sinewave commuta-
tion results in less vibration and noise generated from the
electric motor.
Appellees Zhongshan Broad Ocean Motor Co., Ltd.;
Broad Ocean Motor LLC; and Broad Ocean Technologies,
LLC (collectively, “Broad Ocean”) filed an IPR petition
challenging claims 1–3, 8, 9, 12, 16, and 19 of the ’349
patent (the “challenged claims”). In a revised petition
(“First Petition”), Broad Ocean asserted that the chal-
lenged claims are invalid as obvious over the combination
of U.S. Patent No. 5,410,230 (“Bessler”) and a published
doctoral thesis by Peter Franz Kocybik (“Kocybik”).
Broad Ocean also asserted that the challenged claims are
invalid as anticipated by Japanese Patent Publication JP
2003-348885 (“Hideji”).
On January 21, 2015, the Board instituted review on
the ground of obviousness over Bessler and Kocybik. The
Board declined to institute review on the ground of antici-
pation by Hideji, however, because Broad Ocean had
failed to provide an affidavit attesting to the accuracy of
the submitted translation of Hideji as required by 37
C.F.R. § 42.63(b).
4 NIDEC MOTOR CORP. v. ZHONGSHAN BROAD OCEAN MOTOR CO.
About a month later, Broad Ocean filed a second peti-
tion for IPR (“Second Petition”), again asserting that the
challenged claims are anticipated by Hideji. This time,
Broad Ocean included the required affidavit. At the same
time, Broad Ocean requested that the Board join the
Second Petition with Broad Ocean’s already-instituted
IPR involving the First Petition pursuant to 35 U.S.C.
§ 315(c) (allowing for joinder in an IPR at the discretion of
the Director of the United States Patent and Trademark
Office (“Director”)).
On July 20, 2015, a panel of three Administrative Pa-
tent Judges again declined to institute review on the
ground that Hideji anticipates. The panel majority de-
termined that Broad Ocean had been served with a com-
plaint alleging infringement of the ’349 patent on
September 25, 2013—more than one year before Broad
Ocean filed the Second Petition—and, therefore, the
Second Petition was time barred under 35 U.S.C. § 315(b).
The majority further held that the exception to the time
bar for requests for joinder under 35 U.S.C. § 315(b), (c),
did not apply here because, according to the majority’s
interpretation, the joinder provision does not permit a
party to join issues to a proceeding to which it is already a
party.
Broad Ocean requested a rehearing of the panel’s de-
cision, which was granted by an expanded panel of five
Administrative Patent Judges. The expanded adminis-
trative panel set aside the original panel’s decision and
concluded that
§ 315(c) permits the joinder of any person who
properly files a petition under § 311, including a
petitioner who is already a party to the earlier in-
stituted [IPR]. We also conclude that § 315(c) en-
compasses both party joinder and issue joinder,
and, as such, permits joinder of issues, including
NIDEC MOTOR CORP. v. ZHONGSHAN BROAD OCEAN MOTOR CO. 5
new grounds of unpatentability, presented in the
petition that accompanies the request for joinder.
J.A. 936 (citations omitted). Having determined that the
joinder provision is broad enough to permit joinder with
respect to the Second Petition, the expanded panel insti-
tuted review of the Second Petition and granted Broad
Ocean’s request to join the proceeding with the earlier-
instituted IPR.
On May 9, 2016, the Board, consisting of the expand-
ed panel, issued a Final Written Decision in the joined
proceedings. The Board determined that all of the chal-
lenged claims are unpatentable under 35 U.S.C. § 103 as
obvious over Bessler and Kocybik and that all of the
challenged claims are unpatentable under 35 U.S.C. § 102
as anticipated by Hideji.
Nidec appealed the Board’s joinder decision as well as
the Board’s conclusions as to obviousness and anticipa-
tion. Broad Ocean responded, and the Director inter-
vened to support the Board’s joinder decision. We have
jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
We review the Board’s legal conclusions de novo and
its factual findings for substantial evidence. In re Affinity
Labs of Tex., LLC, 856 F.3d 883, 889 (Fed. Cir. 2017).
I
Both Broad Ocean and the Director argue that the
Board properly applied the joinder and time bar statutes
to allow joinder and institution in this case. Nidec disa-
grees. We need not resolve this dispute. Nor need we
address the Director’s and Broad Ocean’s arguments that
the Board’s joinder determination is non-appealable in
light of 35 U.S.C. § 314(d)’s bar of judicial review for
institution decisions or Nidec’s argument that the Board’s
practice of expanding panels violates due process. For the
6 NIDEC MOTOR CORP. v. ZHONGSHAN BROAD OCEAN MOTOR CO.
reasons set forth below, we affirm the Board’s conclusion
that all of the challenged claims are unpatentable as
obvious over Bessler and Kocybik. Because there is no
dispute that Broad Ocean timely filed the First Petition
(containing the obviousness ground), the issues on appeal
relating only to the Board’s joinder determination as to
anticipation ultimately do not affect the outcome of this
case. Both parties agree that, if we affirm as to obvious-
ness, we need not address Nidec’s argument that various
procedural aspects of the Board’s joinder decision require
reversal of its holding concerning anticipation by Hideji.
See Oral Arg. at 1:28–2:33 (June 8, 2017), available at
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
16-2321.mp3 (Nidec agreeing that we need not address
the anticipation ground based on Hideji in any respect if
we determine that the Board was correct in its obvious-
ness determination under Bessler and Kocybik).
II
Nidec argues that the Board erred in concluding that
the challenged claims would have been obvious to a
person of ordinary skill in the art based on the combina-
tion of Bessler and Kocybik. Obviousness is a question of
law based on underlying questions of fact. Belden Inc. v.
Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015).
Nidec submits that claim 1 is representative of the in-
dependent claims at issue, and Nidec does not raise
patentability arguments that are specific to any depend-
ent claims. Claim 1 is reproduced below:
1. A heating, ventilating and/or air conditioning
(HVAC) system comprising a system controller, a
motor controller, an air-moving component, and a
permanent magnet motor having a stationary as-
sembly, a rotatable assembly in magnetic coupling
relation to the stationary assembly, and a shaft
coupled to the air-moving component, wherein the
motor controller is configured for performing sin-
NIDEC MOTOR CORP. v. ZHONGSHAN BROAD OCEAN MOTOR CO. 7
ewave commutation, using independent values of
Q and d axis currents, in response to one or more
control signals received from the system controller
to produce continuous phase currents in the per-
manent magnet motor for driving the air-moving
component.
’349 Patent, col. 5 ll. 34–45.
Nidec does not appear to dispute that the claimed el-
ements are described in the prior art. In general, Bessler
describes an HVAC system that includes a thermostat, a
motor controller (or microprocessor), and an electronically
commutated motor that turns a fan (or a “blower ECM
motor”). See, e.g., J.A. 223, col. 4 ll. 35–68 (thermostat);
id. col. 5 ll. 45–48 (microprocessor); id. col. 5 l. 23 (blower
ECM motor). Bessler does not describe the claimed
sinewave commutation or the use of independent Q and d
axis currents. However, the Board determined—and
Nidec does not dispute—that Kocybik describes sinewave
commutation as well as the use of independent Q and d
axis currents in electric motors, although Kocybik does
not mention HVAC systems. And Kocybik does not limit
the application of such commutation to “high precision
control tasks,” as Nidec contends. Nidec Reply Br. 7.
The Board determined that “a person of ordinary skill
in the art would have effected the combination pro-
posed”—“configuring the system of Bessler to perform
sinewave commutation in the manner described in Kocy-
bik.” J.A. 29. The Board concluded that “the use of
sinewave commutation and independent Q and d axis
currents would have provided predictable results to
address known problems associated with other types of
motors.” J.A. 29. Nidec asks us to reweigh the evidence
the Board used to make its determination, which we may
not do. See In re Warsaw Orthopedic, Inc., 832 F.3d 1327,
1334 (Fed. Cir. 2016).
8 NIDEC MOTOR CORP. v. ZHONGSHAN BROAD OCEAN MOTOR CO.
Nidec makes two arguments as to why the Board’s
conclusion was erroneous. First, Nidec argues that the
Board wrongly construed the term “HVAC system” in the
claim preambles to be non-limiting. J.A. 21. Whether or
not Nidec is correct, the result does not change. The
Board specifically addressed the issue by stating, “[o]ur
conclusion would be unaffected by a determination that
the preambles of the claims reciting an HVAC system are
limiting. Although Kocybik is not directed specifically to
HVAC systems, Petitioner relies on Bessler for such a
teaching.” J.A. 34 n.10. There is no dispute that Bessler
teaches an HVAC system as recited in the claims. Be-
cause we need only construe terms “that are in controver-
sy, and only to the extent necessary to resolve the
controversy,” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
200 F.3d 795, 803 (Fed. Cir. 1999), we need not construe
the claim preambles here where the construction is not
“material to the [obviousness] dispute,” id. We see no
error in the Board’s decision in this regard.
Second, Nidec argues that Bessler teaches away from
the asserted combination. Nidec argues that the purpose
of Bessler is to reduce the complexity of HVAC systems by
eliminating the need for a conventional system controller.
According to Nidec, incorporating sinewave commutation
into an HVAC system only increases complexity, which is
contrary to the fundamental goal of Bessler. Thus, Nidec
urges that a person of ordinary skill in the art would not
have combined the teachings of Bessler and Kocybik. We
disagree.
There is nothing in Bessler that “criticize[s], discred-
it[s], or otherwise discourage[s]” the use of sinewave
commutation in HVAC systems. Meiresonne v. Google,
Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017) (quoting Gal-
derma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed.
Cir. 2013)). As Nidec has conceded, Bessler does not even
mention sinewave commutation. Oral Arg. at 13:32–
13:47. Instead, Bessler states only that “[i]t is an object of
NIDEC MOTOR CORP. v. ZHONGSHAN BROAD OCEAN MOTOR CO. 9
this invention to provide a central [HVAC] system which
does not require a system controller.” J.A. 222, col. 2
ll. 3–5. This statement does not teach away from sin-
ewave commutation.
For support, Nidec points out that each challenged
claim requires a “system controller” and that Bessler
teaches away from the use of a system controller that is
separate from a motor controller and that receives and
processes system demand signals. But this argument has
limited relevance to sinewave commutation. In fact, the
challenged claims make clear that it is the “motor control-
ler” (not the system controller eliminated in Bessler) that
performs sinewave commutation. See, e.g., ’349 Patent,
col. 5 ll. 39–41 (claim 1 reciting “wherein the motor con-
troller is configured for performing sinewave commuta-
tion”). Nidec does not dispute that Bessler teaches a
motor controller. 1
And the ’349 Patent specification uses the term “sys-
tem controller” in a different sense than in Bessler. The
’349 Patent states that “the system controller . . . may be
a thermostat.” Id. col. 4 ll. 35–36. There is no dispute
that Bessler teaches the use of a thermostat in an HVAC
system as opposed to the eliminated system controller
1 Nidec argues that a motor controller capable of
achieving sinewave commutation requires an advanced
microprocessor, such as a “digital signal processor” (DSP),
and that Bessler teaches away from the use of such hard-
ware. In fact, however, Bessler does not limit or suggest
limiting the types of microprocessors that might be used,
and Kocybik teaches the use of DSPs with permanent
magnet motors. Kocybik explains that “[m]ass production
[of DSPs] has [led] to a decrease in prices; leading to a
whole range of reasonably priced and well-tested devices
available to implement digital control strategies.”
J.A. 267.
10 NIDEC MOTOR CORP. v. ZHONGSHAN BROAD OCEAN MOTOR CO.
which receives and processes signals from a thermostat.
See J.A. 223, col. 4 ll. 31–68 (Bessler describing the func-
tions of a “conventional thermostat” in a preferred embod-
iment).
However, Nidec argues that Bessler’s thermostat is
too primitive to qualify as the system controller required
by the ’349 Patent claims. Specifically, the claimed sys-
tem controller must be capable of sending “one or more
control signals” to the claimed motor controller. E.g., ’349
Patent, col. 5 l. 42 (claim 1); see also id. col. 6 l. 50 (claim
19 reciting “at least one control signal from a system
controller”). Nidec points to a portion of the ’349 Patent
specification that explains, “[s]uch control signals may
represent, for example, a desired torque or speed of the
motor 406. Alternatively, the control signals may repre-
sent a desired airflow to be produced by the air-moving
component 410.” Id. col. 3 l. 66–col. 4 l. 2. By contrast,
Bessler’s thermostat only “generat[es] a two state (on/off)
signal.” J.A. 223, col. 4 ll. 42–43. Thus, Nidec argues,
Bessler’s thermostat is incapable of generating the “con-
trol signals” required by the claims of the ’349 Patent.
Nidec too narrowly construes the “control signals” lim-
itation. In an IPR involving an unexpired patent, the
“broadest reasonable construction” standard governs.
Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–
45 (2016); 37 C.F.R. § 42.100(b). The ’349 Patent specifi-
cation explains that “torque,” “speed,” and “airflow” are
provided only as examples of the types of control signals
that might be used; it is not an exhaustive list. See ’349
Patent, col. 3 l. 66–col. 4 l. 2. (“for example, a desired
torque or speed” and “[a]lternatively, the control signals
may represent a desired airflow” (emphases added)).
Moreover, analysis of the dependent claims supports a
broader construction than that advanced by Nidec. For
instance, dependent claim 20 provides in relevant part,
“wherein receiving includes receiving at least one control
signal representing a desired airflow for the blower, a
NIDEC MOTOR CORP. v. ZHONGSHAN BROAD OCEAN MOTOR CO. 11
desired torque of the permanent magnet motor, or a
desired speed of the permanent magnet motor.” Id. col. 6
ll. 57–60 (emphases added). This limitation confirms that
the “control signals” limitation recited in the independent
claims encompasses other signals in addition to “torque,”
“speed,” and “airflow.” An on/off signal amounts to a
control signal because a motor controller cannot carry out
its claimed function of “performing sinewave commutation
. . . in response to one or more control signals” if it does
not receive at least an “on” signal from the thermostat.
’349 Patent, col. 5 ll. 40–42. Indeed, Nidec concedes that
“Bessler . . . describes . . . a motor controller that is direct-
ly responsive to a two-state (on/off) temperature signal
provided by a thermostat.” Nidec Opening Br. 12.
We conclude that the Bessler thermostat is a “system
controller” and that the on/off signals it generates are
“control signals” encompassed by the ’349 Patent’s claims.
The Board did not err in concluding that the challenged
claims would have been obvious over the combination of
Bessler and Kocybik. 2
CONCLUSION
In summary, we conclude that the Board correctly de-
termined that challenged claims 1–3, 8, 9, 12, 16, and 19
of the ’349 Patent are invalid under § 103 as obvious over
the combination of Bessler and Kocybik. We reach no
2 Although the Board invalidated dependent claim
12, it is not clear from Nidec’s briefs whether claim 12 is
at issue on appeal. See, e.g., Nidec Opening Br. 23 (omit-
ting reference to claim 12); id. at 10–11 (omitting sum-
mary of claim 12 and identification of claim 12 as one of
the claims-at-issue); but see id. at 19, 20, 69, Nidec Reply
Br. 31 (arguing that the Board erred in invalidating, inter
alia, claim 12). In any event, both at the Board level and
on appeal, claim 12 was not separately argued.
12 NIDEC MOTOR CORP. v. ZHONGSHAN BROAD OCEAN MOTOR CO.
conclusion as to the Board’s determinations involving the
anticipation ground based on Hideji.
AFFIRMED
COSTS
Costs to appellee.
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
JOSEPH MATAL, PERFORMING THE FUNCTIONS
AND DUTIES OF THE UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR, U.S. PATENT AND TRADEMARK
OFFICE,
Intervenor
______________________
2016-2321
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2014-
01121, IPR2015-00762.
______________________
DYK, Circuit Judge, joined by Circuit Judge WALLACH,
concurring.
Although we join the per curiam decision in full, we
write separately to express our concerns as to the United
States Patent and Trademark Office’s (“PTO”) position on
joinder and expanded panels since those issues are likely
2 NIDEC MOTOR CORP. v. ZHONGSHAN BROAD OCEAN MOTOR CO.
to recur. Although we do not decide the issues here, we
have serious questions as to the Board’s (and the Direc-
tor’s) interpretation of the relevant statutes and current
practices.
First, the IPR joinder statute provides:
(c) Joinder.—If the Director institutes an inter
partes review, the Director, in his or her discre-
tion, may join as a party to that inter partes re-
view any person who properly files a petition
under section 311 that the Director, after receiv-
ing a preliminary response under section 313 or
the expiration of the time for filing such a re-
sponse, determines warrants the institution of an
inter partes review under section 314.
35 U.S.C. § 315(c). Thus, joinder is only permissible if the
Director determines that a petition “warrants the institu-
tion of an inter partes review.” Id.
The IPR time-bar statute provides,
(b) Patent owner’s action.—An inter partes re-
view 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 in-
terest, or privy of the petitioner is served with a
complaint alleging infringement of the patent.
The time limitation set forth in the preceding sen-
tence shall not apply to a request for joinder under
subsection (c).
35 U.S.C. § 315(b) (emphasis added). Particularly rele-
vant to this appeal is the second sentence, which provides
an exception to the 1-year time limit for “a request for
joinder under subsection (c).” Id.
The joinder dispute in this case turns on the relation-
ship between the joinder provision of § 315(c) and the
exception to the time bar in § 315(b). Section 315(b)
NIDEC MOTOR CORP. v. ZHONGSHAN BROAD OCEAN MOTOR CO. 3
ordinarily bars a petitioner from proceeding on a petition
if it is filed more than one year after the petitioner is sued
for patent infringement. Id. Without the exception to
that rule described in the second sentence of § 315(b), an
untimely petition would still be barred even if it raised
the same issues as those involved in an existing proceed-
ing that had been timely initiated by a different petition-
er. But the exception makes clear that the time bar “shall
not apply to a request for joinder under subsection (c).”
Thus, the exception to the time bar for “request[s] for
joinder” was plainly designed to apply where time-barred
Party A seeks to join an existing IPR timely commenced
by Party B when this would not introduce any new pa-
tentability issues. This is supported by the legislative
history for the joinder provision, § 315(c). See H.R. Rep.
No. 112-98, pt. 1, at 76 (2011) (explaining that under
§ 315(c), “[t]he Director may allow other petitioners to join
an [IPR]”).
The issue in this case is whether the time bar provi-
sion allows a time-barred petitioner to add new issues,
rather than simply belatedly joining a proceeding as a
new party, to an otherwise timely proceeding. Section
315(c) does not explicitly allow this practice. We think it
unlikely that Congress intended that petitioners could
employ the joinder provision to circumvent the time bar
by adding time-barred issues to an otherwise timely
proceeding, whether the petitioner seeking to add new
issues is the same party that brought the timely proceed-
ing, as in this case, or the petitioner is a new party.
Second, we are also concerned about the PTO’s prac-
tice of expanding administrative panels to decide requests
for rehearing in order to “secure and maintain uniformity
of the Board’s decisions.” Director Br. 27. Here, after a
three-member panel of administrative judges denied
petitioner Broad Ocean’s request for joinder, Broad Ocean
requested rehearing and requested that the rehearing be
decided by an expanded panel. Subsequently, “[t]he
4 NIDEC MOTOR CORP. v. ZHONGSHAN BROAD OCEAN MOTOR CO.
Acting Chief Judge, acting on behalf of the Director,” J.A.
933 n.1, expanded the panel from three to five members,
and the reconstituted panel set aside the earlier decision.
Nidec alleges that the two administrative judges add-
ed to the panel were chosen with some expectation that
they would vote to set aside the earlier panel decision.
The Director represents that the PTO “is not directing
individual judges to decide cases in a certain way.” Direc-
tor Br. 21 (quotation marks omitted). While we recognize
the importance of achieving uniformity in PTO decisions,
we question whether the practice of expanding panels
where the PTO is dissatisfied with a panel’s earlier deci-
sion is the appropriate mechanism of achieving the de-
sired uniformity. But, as with the joinder issue, we need
not resolve this issue here. Nor need we address the
predicate issue of appealability.