Holding the Line on Anticipation against Eligibility Encroachement

Nidec Motor v. Zhongshan Broad Ocean Motor (Fed. Cir. 2017)

In a short and tidy opinion, the Federal Circuit has reversed a PTAB anticipation decision in an inter partes review – holding that the Board’s decision “is not supported by substantial evidence.”

At issue is claim 21 of Nidec’s U.S. Patent No. 7,208,895, which claims a “permanent magnet rotating machine and controller assembly configured to perform the method of claim 12.”  Claim 12, in turn is a motor control-method that involves calculating  two different phase currents:

The method disclosed in the ‘895 Patent relates to vector control of a permanent magnet machine in the rotating frame of reference. The claimed novel feature requires “combining” calculated Q-axis and d-axis currents to produce an “IQdr current demand” in the rotating frame of reference, which can later be further manipulated and back-transformed into the three phase currents in the stationary frame of reference that drive the motor. Combining the Q-axis and d-axis currents to produce a unitary IQdr demand occurs prior to the back-transformation process.

Appellant Brief.

My reading of the single prior art reference (Kusaka, U.S. Patent No. 5,569,995) is that it also uses the same inputs to achieve a three-part motor-control output, but does not particularly disclose that the transformation happens by first combining the inputs and then transforming the combination into the three-part output.  In its opinion, the Federal Circuit found this analysis compelling:

Because Kusaka does not disclose a signal in the rotating frame of reference, it does not disclose an IQdr demand.

Reversed.

Abstract Idea Creep: The decision approach here is important because it holds the line against encroachment of eligibility issues (Section 101) into the anticipation analysis.  Notably, the identified inventive step here is essentially requiring a two-step mathematical transformation (with IQdr intemediary) rather than a single-step transformation done in the prior art.  Of course, the claims themselves do not indicate how the combination occurs occurs – just requiring “combining” the inputs. I expect that a number of courts thinking about the eligibility analysis would see that step as lacking sufficient concrete inventiveness.

Remand? The court reversed, but did not indicate any remand.  That suggests to me that the case is over with the patentee winning the IPR.

Claim Scope: I’m still somewhat confused about whether the claim structure used here is proper under the law.  35 USC 112 states that “A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.” In my mind, one element of claim 12 is that it is a “method” and claim 21 is a “machine . . . configured to perform the method.”  As such, claim 21 cannot itself meet the method limitation of claim 12.

= = = =

12. A method of controlling a permanent magnet rotating machine, the machine including a stator and a rotor situated to rotate relative to the stator, the stator having a plurality of energizable phase windings situated therein, the method comprising:

calculating an IQr demand from a speed or torque demand;
calculating a dr-axis injection current demand as a function of a speed of the rotor; and
combining the IQr demand and the dr-axis injection current demand to produce an IQdr demand that is compensated for any torque contribution of dr-axis-current.
21. A permanent magnet rotating machine and controller assembly configured to perform the method of claim 12.

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

45 thoughts on “Holding the Line on Anticipation against Eligibility Encroachement

  1. So is this ‘law of the case’? or does the IPR, political ‘court’ ignore this as well? My guess, no ‘law of the case’ doctrine will develop – because of the political – and ‘ expert’ nature of the so called court.

    1. With all due respect, you people are all running down the rabbit hole of the merits case, wherein the biggest matter in modern patent law is due process and separation of powers. If you think that a case by case application of Alice is going to create a rule of new and stable law, you are either naive, paid off or nuts

      1. Rule 36 will save that “create a rule of new and stable law“…

        Oh wait.

        (big “S” sign being held up)

  2. So to “Eligibility encroachment”.

    In this case, is mathematics at most merely used as a language to specify the behavior of fluctuating voltages and currents in something corresponding to a hardware circuit or an analogue computing device? Surely very hard to see where eligibility should or would become an issue in such a case.

    Or even if the operation were more digital.

    Consider an oven. We suppose that people are used to seeing ovens with controls such as dials to set temperatures and that they expect ovens to heat objects to the specified temperature.

    If no prior art, could one then claim “an oven configured to heat a body to a temperature of 451 degrees Farenheit”, without “something more”? What would be said to members of the general public who would assume that if they bought an oven with a temperature dial, they could set the required temperature to any reasonable value in a range from say 50 degrees Celsius to 250 degrees Celsius?

    On the other hand, in many industrial processes, the temperature to which objects are heated in ovens would often be critical, as would the time period for which the object is heated. So the context in which a “configured oven” is claimed should be significant: it is not simply a matter of whether “configured ovens” are or are not “patent-eligible subject matter”.

    Now try to look at “patent-eligibility” for a moment through the eyes of the late Justice Scalia (the art of the horse-whisperer) or Justice Breyer (King Tut). In the latter part of the nineteenth century, when telephones were relatively newfangled things, did the USPTO fall over its feet to grant a patent to A on the use of the telephone to make an appointment with a doctor, to B on the use of the telephone to make an appointment with a dentist, to C on the use of the telephone to order canned fish from a retail store, and to D on the use of the telephone in placing a bet on a horse? After all, the telephone is brand-new technology, and using a telephone, or getting a servant to do so, is surely more convenient than sending out a servant on horseback to carry out such tasks? So these arts or processes are surely new and useful, and after all, if these processes are in the prior art, maybe there is room for a patent on successive use of a telephone to make an appointment first with a doctor, then with a dentist, then to order canned fish, and finally to place a bet on a horse. If the patent office did so, or if some Federal circuit decided cases requiring the PTO to do so, why don’t such cases crop up regularly in current case law? If not, why not? There must surely have been a time when such arts or processes were not described in print, or had not been the subject matter of prior patents. And the use of a telephone is an essential feature of the process, and thus the process is clearly in that sense “technological”.

    1. DP,

      You are falling into the trap of thinking that “the eyes” of the Justices are what is important to the Rule of Law (akin to thinking that there an in limited common law approach is somehow congruent with the limited and segregated powers as laid out in the Constitution):

      Now try to look at “patent-eligibility” for a moment through the eyes of the late Justice Scalia (the art of the horse-whisperer) or Justice Breyer (King Tut).

      Such an underwhelming and overly amount of fealty is just not in line with the oath of an attorney (we really owe a larger duty to tell the emperor that his “fine raiment” is more than just threadbare).

  3. link to arstechnica.com

    Check it out: Preznit Asterix’s son was a patent tr0ll, dragging companies into East Texas because “they used questionnaires on a mobile app.”

    Gee, nobody could have predicted that.

    1. Remember folks: the rich get richer, everybody else pays for it, and “anon” and his c0h0rts wave their p0m-poms and stuff their faces because … legal!

      Deep deep thinking people. Very serious! And oh so very important. We have to listen to them and their complaints or else the world will stop turning. They told us so!

      1. What are you ranting on about?

  4. The decision approach here is important because it holds the line against encroachment of eligibility issues (Section 101) into the anticipation analysis. Notably, the identified inventive step here is essentially requiring a two-step mathematical transformation (with IQdr intemediary) rather than a single-step transformation done in the prior art.

    This is an interesting question, and the conclusion here is probably the correct one. But there are analogous situations that give me pause. For example, if the claim required processing wherein the housing of the computer was painted green rather than the two-step, there’s no doubt the Federal Circuit would call the green paint nonfunctional descriptive, give it no weight, and ultimately conclude that it is anticipated. But there’s no more reason for calling ornamental paint nonfunctional than there is performing math a different way to get to the same result.

    It would be like saying “the prior art says multiply X by Y, while the claim is directed to multiplying Y by X.” I suppose counting four groups of three is different than counting three groups of four, but you’re still getting 12.

    The line between non-weighted anticipation and weighted obviousness gets blurred a lot, and unnecessarily so. Of course, the easy way to solve this is to not remand but to summarily find it ineligible. The only argued distinction from the conventional is ineligible subject matter.

    1. It’s not clear that this is merely “performing math a different way”.

      Anyone here an electrical engineer with enough time to really understand the differences here?

      The “in the rotating frame of reference” seems significant but I am not certain… someone with the right background may be able to really understand this and explain it…

    2. But there’s no more reason for calling ornamental paint nonfunctional than there is performing math a different way to get to the same result.

      You might want to check yourself on that statement.

      You appear to have lost the distinction between functional and nonfunctional.

    3. An additional and academic question here [since IPRs cannot decide either 101 or 112 issues for claim elements unless they are introduced in the IPR itself, and use BRI], but of possible interest for D.C.s after IPR decisions?:
      is a fully functional claim of “[apparatus] configured to perform the method of claim X” ever treated as equivalent for 112 analysis to “means for performing the method of claim X”? [Noting the Fed. Cir. decision no longer requiring the actual words “means for.”]

      1. That Federal Circuit decision was Williamson v. Citrix Online LLC, en banc.

      2. Paul, how in the world would the construction result in anything materially different if the disclosed apparatus is a programmed GP digital computer and the algorithmic steps required are set forth in the method, which is presumably, disclosed.

        1. Maybe Paul needs to revisit Alappat again (seeing as that case remains good law).

          1. … and maybe Ned does too (with his subtle “programmed GP” which SHOULD READ as a former GP machine made into a new machine as configured with software.

            The patent doctrine of inherency might help you out Ned.

        2. A potential means-function infringement claim scope limitation? A potential validity problem if there is not a 112 enablement of all the method steps?

  5. OT, sorry, unless eligibility under 101 is on topic.

    Published today is a Rule 36 on Nextpoint Inc. v. Hewlett-Packard.

    The memorandum opinion and order of Judge Bucklo of the Eastern Division of the Northern District of Illinois is available on justia.com here:

    link to cases.justia.com

    Mischievously wondering how many of those who dislike dismissals on summary judgment under 101 practice this method, and would be happy to license the patent, or defend themselves against a claim of infringement.

    1. Asserting junk like that in 2017 is eminently sanction-worthy behavior.

      1. Eminently….

        Do you sanction as well the party that provided the patent grant?

        1. Do you sanction as well the party that provided the patent grant?

          When you buy a gun “as is” that you later learn (or should have realized) is defective, you can either pay to have it repaired or you can throw it in the trash. If you instead decide to point it at someone and it hurts them, you pay the penalty.

          1. That’s a pretty straw man with the “gun” example.

            Does it carry as much weight if you wanted to use a stick of chewing gum as an example?

            (You do know that you can bring someone to court over a stick of chewing gum, whereas the gun example is more along the lines of a criminal offense, right?)

              1. What ever the law permits you to do – just like with a granted patent.

                Are you really that slow?

                1. What ever the law permits you to do

                  You gotta love it when the truth leaks out of the mouths of the worse people in the world.

                  You’re scum.

        2. Do you sanction as well the party that provided the patent grant?

          Yeah, you should. Though in this particular case the patent predates Alice, so you can’t really complain about a bad Alice process there. But in general, yes.

          1. Are you saying that Alice changed – as in re-wrote – the law?

          2. People want to serve their customers; it’s human nature. The fact that the USPTO has absolutely zero disincentive to issue bad patents has always struck me as a wee problem. Something even symbolic would probably be helpful as a final gut-check- a little breeze in the public’s favor.

            1. You’ve never actually prosecuted a patent application – and it shows.

                1. LOL – you have a registration number?

                  (doing something pro se is not the point – as you may have already deduced – such would be only you having a f00l as a client)

      2. Please identify one patented claim assertion of which you would not declare to be eminently sanction-worthy behavior. Just one.

        1. Malcolm is on record that he feels that any software claim at all is PER SE invalid, and thus would leave a null set for him to choose from, Les.

          Of course, he is also on record as to volunteering an admission against his interests that sh00ts his feelings all to H (that of knowing and understanding the controlling law of the exceptions to the judicial doctrine of printed matter).

          1. I didn’t limit him to software claims.

  6. I’m still somewhat confused about whether the claim structure used here is proper under the law.

    MPEP 608.01(n)(II) says:

    The fact that the independent and dependent claims are in different statutory classes does not, in itself, render the latter improper.

    The MPEP does not give a precisely analogous example to this case:

    f claim 1 recites a method of making a product, a claim for a product made by the method of claim 1 could be a proper dependent claim. On the other hand, if claim 1 recites a method of making a specified product, a claim to the product set forth in claim 1 would not be a proper dependent claim since it is conceivable that the product claim can be infringed without infringing the base method claim if the product can be made by a method other than that recited in the base method claim.

    In this case the assembly of claim 21 is specifically configured to perform the method of claim 12, so I don’t think one could imagine an assembly that infringed claim 21 but not the base method claim.

    That said, this seems to be precisely an example of the sort of claim you suggested might be invalid in the wake of IPXL Holdings v. Amazon.com, i.e. “A system for performing the method of claim 1.”

    A rejection was made along those lines (improper dependent claim) during prosecution, and the applicant successfully argued against it. The rejection did not cite IPXL Holdings.

    1. “In this case the assembly of claim 21 is specifically configured to perform the method of claim 12, so I don’t think one could imagine an assembly that infringed claim 21 but not the base method claim.”

      Well, one could make the assemble of claim 21 and not turn it on.

      But, I’m not sure that is an important test.

      1. The assembly claim fails to satisfy 112, 4th paragraph since it doesnt include all the limitations of the base claim. It sounds like some folks would rather let this slide, but this isnt even borderline since the assembly claim doesnt require the method be performed by anyone’s standards. There’s not really room for judicial interpretation when the statute’s explicit on the matter. Notwithstanding that judges do what they want of course.

  7. The claim format that bothers you is typical of European applications, especially those originating in France. It gives me pause as well. But from a “would one of ordinary skill in the art understand the metes and bounds” perspective, there really isn’t any problem.

    If you can read 101 so loosely as to find something about abstract ideas, mental steps, natural laws, natural phenomena in it, then I think you should be able to read 112 loosely enough to allow claim 21 and avoid a lot of needless, pointless amendments.

  8. Regarding your question about claim dependency, Dennis, this is one of those cases where it doesn’t matter. Even if claim 21 is an improper dependent claim, it’s a proper independent claim. See Ex parte Gillis, No. 2011-007483 (P.T.A.B. Mar. 4, 2013).

    1. What if they didn’t pay the independent claim fee but instead paid only the dependent claim fee during prosecution? Is the patentee estopped from having the claim treated as an independent claim post grant? More generally, if there is no evidence in the file wrapper that the patentee intended a claim that refers to another claim be treated as an independent claim, can they have that claim be treated as a dependent claim or an independent claim at their whim post grant?

      1. Your “what if” is imaginary to begin with.

        The incoming process designates the status of number and types of claims.

        You just do not get to the point that you want to use as a hypotthetical.

      2. What if they pay the independent claim fee and the PTO gives a refund?

    2. I agree with some of the observations here (James @2, Robert @1) —

      1. A claim of the form “apparatus for practice of the method of claim 1” claim is an independent claim.

      2. It stands on really shaky ground, under IPXL Holdings. Note that the Gillis case goes the other direction — Gillis has apparatus claims, and then a method claim recting “A method using the apparatus of claim x.” The Board holds that this is a proper form of independent claim, not an improper dependent claim. But the IPXL issue just doesn’t come up when claims go this direction. IPXL becomes ugly when you have “an apparatus for performance of the method of claim x.”

      3. Even if it ends up someday being squarely adjudicated, and it comes out OK, until then it’s just dumb. Why create risks and jury explanation problems like this, for the minimal cost savings of avoiding 3 minutes of “copy-paste-change verb tenses”

      Don’t do it.

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