Thursday, July 01, 2021

Mixed decision in CAFC review of IPR of Pulse patent . 6,773,302

The outcome was mixed:

Patent owner Pulse Electronics, Inc. (“Pulse”) appeals the final written decision by the Patent Trial and Appeal Board (“Board”) in an inter partes review proceeding. Petitioner U.D. Electronic Corp. (“UDE”) cross-appeals. We affirm in part and reverse in part.

One argument on claim construction

Pulse further argues that the internal structure of the connector requires the conductors to bend approximately 90 degrees. Pulse, however, has not demonstrated that the Board’s construction would render the device inoperable. See Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 904 F.3d 965, 972 (Fed. Cir. 2018) (citing Ecolab, Inc. v. FMC Corp., 569 F.3d 1335, 1345 (Fed. Cir. 2009)) (noting impermissibility of an inoperable claim construction when the term admits of an operable construction). This argument therefore does not demonstrate that the Board’s claim construction was erroneous.

And no problem on PTAB's obviousness analysis

Pulse next argues that the Board erred in finding claims 6–8 obvious over two prior art references. We see no error in the Board’s determination.

As to indefiniteness

“Indefiniteness, as a subset of claim construction, is a question of law which this court reviews without deference.” Id. at 1311 (citing Kinetic Concepts, Inc. v. Blue Sky Med. Grp., Inc., 554 F.3d 1010, 1022 (Fed. Cir. 2009)). The Board erred in finding that the term “a desired effect” renders substitute claims 17, 20, and 21 indefinite. The “desired effect” has a clear objective meaning: that the conductors curve or change direction by approximately 90 degrees. No “speculation” is necessary to understand “the desired effect”; the term is merely an instance of inartful surplusage rather than a fatal ambiguity. While we generally disfavor claim constructions resulting in surplus language, we have also recognized that “surplusage may exist in some claims.” ERBE Elektromedizin GmbH v. Canady Tech. LLC, 629 F.3d 1278, 1286 (Fed. Cir. 2010) (citing Pickholtz v. Rainbow Tech., Inc., 284 F.3d 1365, 1373 (Fed. Cir. 2002) (concluding that the word “system” was surplusage when the patent at issue used “computer” and “computer system” interchangeably with no indication of a difference in meaning)). Because the “desired effect” is objectively restricted to curvature “near or equal to 90 degrees,” see J.A. 60, substitute claims 17, 20, and 21 are not indefinite. The Board’s determination to the contrary is reversed.

Of interest as to combination of references

UDE also argues that the Board’s finding that substitute claims 22 and 23 are not obvious over the combination of Kan and Hughes is inconsistent with its finding that this combination renders claims 6–8 obvious. With respect to claims 6–8, however, the Board was discussing a different aspect the prior art—finding a motivation to reorient Kan’s internal circuit board in view of Hughes. The fact that the references could be combined for one purpose does not require that they would necessarily be combined for another purpose.


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