Hamilton Beach Brands, Inc. v. F'real Foods, LLC
Opinion
Hamilton Beach Brands, Inc. challenges the Patent Trial and Appeal Board's final written decision upholding the patentability of claim 21 of
*1331 BACKGROUND
1. The '662 Patent
f'real! Foods, LLC ("f'real") is the assignee of
Figures 1A and 1B show mixing/blending machine 100, including rotatable mixing blade 10 and splash shield 22, as well as nozzles 34a and 34b for directing rinsing fluid towards the interior of the splash shield.
Figures 4 through 6 of the '662 patent show the mixing and rinsing mechanism in operation. Figure 4 shows the cup 14 and cup holder 16, which are raised in Figure 5 to be underneath mixing blade 10 and splash shield 22.
*1332
Claim 21 is the only challenged claim and recites:
21. A method for rinsing a splash shield on a mixing machine, the method comprising the steps of:
providing a vessel containing material to be mixed, the vessel including an opening;
further providing a mixing machine having a holder for receiving the vessel, a rotatable mixing element extendable into the vessel for mixing the material, a splash shield positionable to shield the opening of the vessel, and a nozzle oriented towards the splash shield;
after mixing the material in the vessel using the mixing element and with the splash shield shielding the vessel opening, unshielding the vessel opening and directing rinsing fluid onto the splash shield using the nozzle while isolating the vessel from the rinsing fluid.
2. Prior Art References
*1333 J.A. 111.
During operation, lid 16 descends over receptacle 14 (Figs. 6A and 6B) to create a seal, after which the mixer head descends into the receptacle to mix its contents (Figs. 6C and 6D). J.A. 118. The mixer head and lid then ascend away from the receptacle (Figs. 6E and 6F). Neilson describes this process as occurring automatically after the machine is activated.
*1334 J.A. 98.
Prior art reference "Miller" collectively refers to Miller et al., U.S. Patent Application Publication No. 2002/0048626 A1 ("Miller '626"), and Miller,
*1335 J.A. 130.
3. Proceedings Before the Board
On May 27, 2016, Petitioner Hamilton Beach Brands, Inc. ("Hamilton Beach") petitioned the Patent Trial and Appeal Board (the "Board") for
inter partes
review of claim 21 of the '662 patent as obvious under Neilson, Kelly, and Miller.
See
Hamilton Beach Brands, Inc. v. f'real Foods, LLC
, IPR2016-01107,
In assessing the patentability of claim 21 of the '662 patent, the Board concluded that Neilson, in view of Kelly and Miller, does not teach or suggest the nozzle limitations of claim 21. Id. at *6-8. Specifically, the Board concluded that Neilson does not disclose any sort of rinse nozzle for cleaning a splash shield, and because the parties' experts agreed that Kelly teaches a manually operated spray device "similar to that commonly found at a kitchen sink," Kelly only describes a spray device that is not prepositioned to point at the splash shield. Id. at *6-7. The Board further concluded that a person of ordinary skill would not combine Neilson and Kelly with the electronically controlled nozzle of Miller "without relying on the claim as a roadmap for selecting and modifying the teachings." Id. at *7. To meet the limitations of claim 21, Kelly's nozzle would need *1336 to be modified from a manually positionable nozzle to a pre-positioned nozzle pointing at the splash shield. The Board found that Miller does not teach this modification, finding that Miller's nozzle is directed at the mixing spindle, and not the splash shield, and Miller describes removing the splash sleeve for cleaning. Id.
After reviewing the objective indicia of nonobviousness, the Board additionally concluded that evidence of non-obviousness outweighed evidence of obviousness presented by Hamilton Beach. Id. at *11. The Board thus concluded that Hamilton Beach had not shown by a preponderance of the evidence that claim 21 would have been obvious in light of Neilson, Kelly, and Miller.
Hamilton Beach appeals both the Board's claim construction and non-obviousness determination. We have jurisdiction pursuant to
PRELIMINARY ISSUE :
Shortly before oral argument, f'real submitted a Notice of Supplemental Authority, arguing that the appeal should be dismissed as time barred under
The relevant facts of this case are as follows. On October 6, 2014, f'real served Hamilton Beach with a complaint alleging claims for patent infringement of the '662 and other patents, along with claims for trademark infringement, trade dress infringement, and unfair competition. Complaint at 8-15, f'real Foods, LLC v. Hamilton Beach Brands, Inc ., No. 1:14-cv-01270 (D. Del. Oct. 3, 2014), ECF No. 1 (J.A. 624-40) (the "2014 action"); see also Proof of Service at 2, No. 1:14-cv-01270 (D. Del. Oct. 6, 2014), ECF No. 6 (J.A. 707-08). Over the following year and three months, the parties in the 2014 action proceeded through the early stages of litigation, including discovery and claim construction briefing in preparation for a Markman hearing.
On January 26, 2016, f'real moved to voluntarily dismiss its patent infringement claims without prejudice because it did not own the asserted patents, including the '662 patent, when the 2014 action was filed. Plaintiff f'real Foods, LLC's Motion for Voluntary Dismissal at 1, f'real Foods, LLC v. Hamilton Beach Brands, Inc ., No. 1:14-cv-01270 (D. Del. Jan. 26, 2016), ECF No. 106. The motion explained that when the 2014 action was initially filed, f'real believed it owned the asserted patents. Id. at 2. During the litigation, f'real subsequently discovered that the asserted patents had been assigned to a holding company, Rich Products Corporation, as part of a merger, but inadvertently were never assigned back to f'real. Id. ; see also J.A. 876-77 (declaration of the Intellectual Property Manager at Rich Products). Thus, although Rich Products subsequently assigned the patents back to f'real, an issue was raised as to whether f'real had standing to bring its patent infringement claims when the 2014 action was filed. Thus, to "resolve expeditiously the standing issue," f'real asked the district court to dismiss its patent infringement claims from the 2014 action without prejudice, leaving its other claims pending. Id. at 1.
*1337 On February 26, 2016, the district court granted f'real's motion for voluntary dismissal without directly addressing the standing issue. Order, f'real Foods, LLC v. Hamilton Beach Brands, Inc ., No. 1:14-cv-01270 (D. Del. Feb. 26, 2016), ECF No. 120.
On the same day it filed its motion for voluntary dismissal, f'real, joined with Rich Products, filed and subsequently served a new complaint reasserting the same patent infringement action as the 2014 action, including infringement of the '662 patent. Complaint at 12, f'real Foods, LLC v. Hamilton Beach Brands, Inc. , No. 1:16-cv-00041 (D. Del. Jan. 26, 2016), ECF No. 1; see also Waiver of Service, No. 1:16-cv-00041 (D. Del. Jan. 29, 2016), ECF No. 4. The parties subsequently stipulated and agreed to consolidate the 2014 action with the new complaint. Stipulation and Order for Consolidation at 2, f'real Foods, LLC v. Hamilton Beach Brands, Inc. , No. 1:16-cv-00041 (D. Del. Apr. 12, 2016), ECF No. 17.
On May 27, 2016, Hamilton Beach filed its petition for
inter partes
review in this case.
Institution Decision
,
Section 315(b) precludes filing of a petition for
inter partes
review of the '662 patent more than one year after Hamilton Beach was "served with a complaint alleging infringement of the patent." In
Click-to-Call
, we concluded that "a defendant served with a complaint as part of a civil action that is voluntarily dismissed without prejudice remains 'served' with the 'complaint.' "
It is well-established law that "a party must file a cross-appeal when acceptance of the argument it wishes to advance would result in a reversal or modification of the judgment rather than an affirmance."
Bailey v. Dart Container Corp. of Mich.
,
*1338 DISCUSSION
Hamilton Beach challenges both the Board's claim construction and its conclusions regarding obviousness under
1. Claim Construction
Hamilton Beach argues that the Board violated the Administrative Procedure Act ("APA") by changing claim construction theories midstream without providing the parties an opportunity to respond, and additionally erred in construing the "nozzle" terms so as to require that the nozzles be prepositioned.
As formal administrative adjudications, IPRs are subject to the APA.
See
Dell Inc. v. Acceleron, LLC
,
In making its APA challenge, Hamilton Beach argues that the Board violated
SAS Institute, Inc. v. ComplementSoft, LLC
,
In
SAS
, the parties had agreed to the construction adopted by the Board at institution, and without
any
further discussion during briefing or at oral hearing, the Board adopted a different claim construction in its Final Written Decision.
SAS Inst.
,
Nor did the Board err in its construction of the nozzle terms. "The ultimate construction of the claim is a legal question and, therefore, is reviewed de novo."
Info-Hold, Inc. v. Applied Media Techs. Corp
.,
Claim construction seeks to ascribe the meaning to claim terms as a person of ordinary skill in the art at the time of invention would have understood them.
Phillips v. AWH Corp
.,
The Board's constructions require that the nozzles are pre-positioned-i.e., fixed, without manual adjustment-in a position that points at the splash shield. We begin our analysis with the claim language.
In re Power Integrations, Inc.,
On appeal, Hamilton Beach's primary assertion on the merits of the claim construction is that the Board's construction incorporates limitations from the specification that are not present in the claim. We disagree because claim 21 itself contains language that provides support for the Board's construction. Method claim 21 describes the mixing machine as having "a nozzle oriented " towards the splash shield. This limitation is stated as a feature of the "machine"; it is not phrased in "orienting" process terms. This suggests a fixed orientation. Additionally, the Board's construction properly draws support from the claim's use of both the terms "positionable" (for the shield) and "oriented towards" (for the nozzle). Were the nozzle also capable of being moved around and positioned in various ways, the word "positionable" could have been repeated. Instead, the patentee chose to use oriented , which suggests that the nozzle is pointed at a particular location, i.e., fixed. Notably, Hamilton Beach makes no meaningful arguments against this specific claim-language analysis, instead focusing its efforts on arguing that f'real did not seek construction of "oriented" or contest its meaning.
In light of the foregoing, we conclude that the Board did not err in its construction of the "nozzle" terms requiring the nozzles to be prepositioned, as this construction follows the claim's plain language read in line with the specification.
2. Obviousness under
Under
Obviousness is a question of law with underlying factual findings relating to the scope and content of the prior art; the differences between the claims and the prior art; the level of ordinary skill in the pertinent art; and any secondary considerations of nonobviousness.
ZUP, LLC v. Nash Mfg., Inc.
,
Hamilton Beach argues that the Board erred by relying on hindsight in its finding that there was no sufficiently proved motivation to combine the prior art references. Hamilton Beach contends that Neilson provides motivation to a person of ordinary skill ("POSITA") "for the combination with Kelly and Miller by (1) identifying the desirability of a mixing apparatus that is easy to clean and (2) the requirement to clean the splash shield." Appellant's Br. 33. Hamilton Beach also contends that Kelly and Miller "provide express motivation to clean components in place with a nozzle after each blending cycle." Id. at 38.
We conclude that substantial evidence supports the Board's finding that Hamilton Beach did not persuasively establish a motivation to combine the prior art references to arrive at claim 21. Although the prior art recites cleaning the mixing machine,
5
substantial evidence supports the Board's finding that Hamilton Beach did not prove that the prior art provides a motivation to clean components in place with a fixed nozzle directed towards the splash shield.
See
Final Written Decision
,
Even if the prior art discloses the limitations Hamilton Beach identifies, such as cleaning components in place and a nozzle, the prior art does not identify a reason
why
a POSITA would have been motivated to combine those limitations.
See
KSR
,
Nor does Hamilton Beach point to testimony that would compel the Board to find that a POSITA would have been motivated to combine or modify the prior art elements to reach the claimed invention.
6
For instance, Kelly contemplates that components can be cleaned without necessarily being removed from the machine, but Kelly provides no incentive or motivation or even commentary on why that would be desirable. Hamilton Beach also argues that the Board improperly assumed that the method of claim 21 involves an automatic rinsing step. Appellant's Br. 34-35. Hamilton Beach disputes that the cleaning has to be done automatically, noting that claim 21 includes no reference to automation, and that claim 2, which claims the method of claim 1 in which the step "directing hot rinsing fluid onto the splash shield using the nozzle" is performed automatically. We disagree. Although the Board noted that the prior art references all disclose manual cleaning of a splash shield,
7
its findings or conclusions regarding obviousness did not depend on the claimed method being automatic. On the contrary, the Board used language that expressly contemplates that the claimed method may be automatic or manual, and considered the obviousness of the claim in light of the prior art for both.
Final Written Decision
,
We have considered Hamilton Beach's other arguments and find them unpersuasive. Thus, in light of the foregoing, we hold that substantial evidence supports the Board's determination that Neilson, Kelly, and Miller do not teach or suggest a method of rinsing a splash shield in which a nozzle is pre-positioned such that it points at the splash shield and rinsing fluid is sprayed onto the splash shield from the pre-positioned nozzle. That is, the Board did not err in its decision that the prior art did "not teach or suggest the nozzle limitations
*1343
of claim 21."
Final Written Decision
,
Hamilton Beach also challenges the Board's determination that f'real's evidence of secondary considerations supports nonobviousness. See id. at *8-11. But since we affirm Board's findings regarding the failure of the prior art to teach or suggest all limitations of claim 21, we need not address Hamilton Beach's assertions of error in the Board's consideration of the objective indicia of nonobviousness.
AFFIRMED
COSTS
No costs.
f'real suggests no basis for excusing non-compliance with the cross-appeal requirement in this case.
For the claim term "nozzle oriented towards the splash shield," f'real proposed a construction of "having at least one nozzle oriented towards a soiled area of the splash shield." J.A. 1330. The Board construed the term as "a nozzle pre-positioned such that it points at the splash shield."
Final Written Decision
,
For the claim term "directing rinsing fluid onto the splash shield using the nozzle," f'real proposed a construction of "directing rinsing fluid onto a soiled area of the splash shield using the pre-positioned nozzle as oriented towards that soiled area." J.A. 1330-31. The Board construed the term to mean "spraying rinsing fluid onto the splash shield from the pre-positioned nozzle."
Final Written Decision
,
On October 11, 2018, the United States Patent and Trademark Office issued a final rule revising the claim construction standard for interpreting claims in
inter partes
review, post-grant review, and covered business method patent review proceedings before the Board.
Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board
,
Congress amended § 103 when it passed the Leahy-Smith America Invents Act (AIA). Pub. L. No. 112-29, § 3(c),
Miller notes the importance of cleaning the spindle after each use. J.A. 135 (disclosing "delivery of the sterilizing solution or fresh water through a dedicated nozzle 129 for flushing and cleaning the spindle 114 after each use in preparing a flavored shake"). Neilson describes a stationary lid, analogous to a splash shield, being "readily detachable for cleaning." J.A. 119. Kelly emphasizes the importance of cleaning the auger (i.e., the component doing the mixing), and discloses using "at least one spray device" to clean "the entire interior" of the blending device. J.A. 100-01.
While Hamilton Beach's expert Dr. Slocum testified before the Board that a POSITA would have modified Miller to achieve the claimed invention, the Board discounted his testimony as being inconsistent with Miller's teachings.
Final Written Decision
,
Neilson contains no particular cleaning mechanism; Kelly discloses a hose-like nozzle that must be operated and pointed by a user; and Miller discloses a nozzle which is fixed to clean the spindle, but the splash shield/sleeve must be removed and cleaned by hand.
Reference
- Full Case Name
- HAMILTON BEACH BRANDS, INC., Appellant v. F'REAL FOODS, LLC, Appellee
- Cited By
- 24 cases
- Status
- Published