from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. IPR2014-00877.
Raymond Joseph Trojan, Trojan Law Offices, Beverly Hills, CA,
argued for appellant. Also represented by Dylan C. Dang,
Fredrick S. Tsang.
Richard Hung, Morrison & Foerster LLP, San Francisco, CA,
argued for appellee. Also represented by Esther Kim Chang,
Peter J. Yim; Brian Robert Matsui, Washington, DC.
Prost, Chief Judge, Newman, and Dyk, Circuit Judges.
Housewares, LLC ("Homeland") petitioned the United
States Patent and Trademark Office Patent Trial and Appeal
Board ("Board") for an inter partes review of
claims 1-16 of U.S. Patent No. 7, 581, 688 ("'688
patent"), which is assigned to Whirlpool Corporation
("Whirlpool"). The Board did not construe the key
term "settling speed" found in the claims and
determined that the claims were not invalid as anticipated by
prior art reference U.S. Patent No. 6, 609, 821
("Wulf"). Homeland appeals. We reverse.
'688 patent relates to household blenders. The invention
claimed in the '688 patent is a pre-programmed, automated
blending cycle designed to blend items "quickly and
reliably-by repeatedly dropping to a speed slow enough to
allow the blender contents to settle around the cutter
assembly, and then returning to a [higher] speed suitable for
processing the contents." Appellee Br. 4.
admitted in the '688 patent itself, it was well-known
that a user could manually pulse between a high speed and a
low speed to "achieve . . . a pattern of movement that
introduces the entire contents of the reservoir into contact
with the rotating blades" for efficient mixing. '688
patent, col. 1 ll. 20-23; see also id. at col. 6 ll.
46-50. Thus, the claimed automatic blending routine was, in
the prior art, done manually. There were also blenders on the
market which allowed "preprogram[ing] 'on-off'
sequence[s] [to] enable hands-free operation of the
blender." Id. at col. 1 ll. 38-39.
independent claim at issue, claim 1, provides:
A cycle of operation for a blender comprising a motor, a
container for holding items for processing, and a cutter
assembly located within the container and operably coupled to
the motor whereby the motor effects the rotation of the
cutter assembly, the cycle comprising: automatically
controlling a rotational speed of the cutter assembly to
effect a pulsing of the speed of the cutter assembly wherein
each pulse comprises:
(A) a constant speed phase, where the operating speed of the
cutter assembly is maintained at a predetermined operating
(B) a deceleration phase, where the speed of the cutter
assembly is reduced from the operating speed to a
predetermined settling speed indicative of the items in the
container having settled around the cutter assembly,
which is less than the operating speed and greater than zero,
(C) an acceleration phase, where the speed of the cutter
assembly is increased from the settling speed to the
Id. at col. 7 ll. 4-23 (emphases added). Claim 1 is
representative and there are no patentability distinctions
offered here with respect to the other claims of the '688
2, 2014, Homeland petitioned the Board for an inter
partes review of claims 1-16 of the '688 patent,
seeking a construction of "settling speed, " and
arguing, inter alia, that the claims at issue are
invalid due to anticipation by Wulf. Like the '688
patent, Wulf noted that it was well-known that manually
"[p]ulsing the motor . . . at high and then low speeds
permits the material being blended to fall back to the region
of the cutting knives[, ] thereby improving the blending or
mixing of the material." Wulf, col. 1 ll. 36-39. Wulf
notes that this manual "process can be very frustrating,
" id. at col. 2 l. 20, and thus teaches "a
blender . . . that is programmed to [automatically]
accomplish predetermined [blending] functions and routines,
" id. at col. 2 ll. 25-27.
Final Written Decision, the Board declined to provide a
construction of "settling speed" and concluded that
Homeland had "not shown, by a preponderance of the
evidence, that any claim of the '688 patent is
anticipated by Wulf." J.A. 7, 14.
appeals. We have jurisdiction under 28 U.S.C. §
appeals from inter partes reviews, we review the Board's
conclusions of law de novo and the Board's
findings of fact for substantial evidence. Microsoft
Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1297 (Fed. Cir.
2015). Claim construction is an issue of law that we review
de novo where, as here, there is no relevant
extrinsic evidence. Teva Pharm. USA, Inc. v. Sandoz,
Inc., 135 S.Ct. 831, 841 (2015).
is a two-step analysis. The first step is properly
interpreting the claims. Beachcombers v. Wil-deWood
Creative Prods., Inc., 31 F.3d 1154, 1160 (Fed. Cir.
1994). The second step is determining whether the limitations
of the claims, as properly interpreted, are met by the prior
art. Id. The Board determined that Wulf did not
anticipate the '688 patent because its disclosures did
not meet the "settling speed" limitation. J.A. 14.
However, the Board did "not adopt any explicit
construction of the term for [its] Final Written Decision,
" J.A. 7, even though the parties disagreed as to claim
construction.Just as district courts must, "[w]hen
the parties raise an actual dispute regarding the proper
scope of . . . claims, . . . resolve that dispute, "
O2 Micro Int'l Ltd. v. Beyond Innovation Tech.
Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008), the Board
also must resolve such disputes in the context of IPRs.
See CSR, PLC v. Skullcandy, Inc., 594 F.App'x
672, 678 (Fed. Cir. 2014) (holding that "[t]he Board
erred by failing to construe 'threshold value' as it
is used in claims 1-6 before finding that [prior art
reference] Smith failed to disclose a 'threshold
value'" in anticipation). Given that the Board did
not rely on extrinsic evidence here as to claim construction,
we can determine the correct construction of "settling
speed" and then determine whether the Board correctly
held that Wulf does not meet the limitations of claim 1.
Teva, 135 S.Ct. at 841.
claim construction inquiry . . . begins and ends in all cases
with the actual words of the claim." Renishaw PLC v.
Marposs Societa' per Azioni, 158 F.3d 1243, 1248
(Fed. Cir. 1998) (citations omitted). Here, the relevant
language of claim 1 provides that during pulsing, "the
speed of the cutter assembly is reduced from the operating
speed to a predetermined settling speed."
'688 patent, col. 7 ll. 15-17 (emphasis added).
proposes that "a predetermined settling speed"
means "a speed, greater than zero, that indicates that
items have settled around the cutter assembly."
Appellee's Br. 43. At times on appeal, Whirlpool argues
that empirical testing is required to establish a settling
speed. Whirlpool recognizes that empirical testing would
require determining the settling speed for each individual
blender and its content load, "[b]ecause so many factors
affect the settling speed." Appellee's Br. 9;
see also id. at 45; Oral Arg. 18:16-25 (skilled
artisans looking at the '688 patent would "perform
tests to determine . . . at what point in time [the blender
ingredients] settles to arrive at the predetermined settling
speed"). We conclude that a construction that would
require empirical testing is incorrect. Indeed, the dissent
also does not endorse a claim construction that requires
words of a claim are generally given their ordinary and
customary meaning. Phillips v. AWH Corp., 415 F.3d
1303, 1312 (Fed. Cir. 2005). In some cases, the ordinary
meaning of claim language may be readily apparent and claim
construction will involve little more than the ...