NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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HAYWARD INDUSTRIES, INC.,
Appellant
v.
PENTAIR WATER POOL AND SPA, INC.,
Appellee
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2017-1124
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 95/002,008.
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Decided: February 26, 2018
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MARK NIKOLSKY, McCarter & English, LLP, Newark,
NJ, argued for appellant. Also represented by STEVEN
HALPERN, SCOTT S. CHRISTIE, TIMOTHY PATRICK HOMLISH,
MATTHEW ADAM SKLAR; LEE CARL BROMBERG, KEITH E.
TOMS, Boston, MA.
CHRISTOPHER JAMES FAHY, Quarles & Brady, LLP,
Chicago, IL, argued for appellees. Also represented by
JOEL AUSTIN, RAYE LYNN DAUGHERTY, MICHAEL PIERY,
Milwaukee, WI.
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2 HAYWARD INDUSTRIES, INC. v. PENTAIR WATER POOL AND SPA
Before DYK, LINN, and HUGHES, Circuit Judges.
LINN, Circuit Judge.
Hayward Industries, Inc. (“Hayward”) raises several
issues in this appeal from a decision of the Patent Trial
and Appeal Board (“PTAB”) in an inter partes reexamina-
tion (“IPX”) of U.S. Patent No. 7,686,587 (“’587 patent”),
owned by Pentair Water Pool & Spa (“Pentair”). Hayward
Indus., Inc. v. Pentair Water Pool & Space, Inc., Appeal
No. 2015-007909 (P.T.A.B. Apr. 1, 2016). The court
addresses each of the issues raised, in turn. For the
reasons stated, we affirm-in-part and reverse-in-part.
1. CONSTRUCTION OF “DRIVE”
Both parties agree with the Examiner’s construction
of “drive” as “a term of art for the electronics that produce
[or provide] the proper electrical signal to power the
electric motor.” The parties disagree, however, on wheth-
er the term “drive” is properly limited to a variable speed
drive.
The term drive is not defined in the specification of
the ‘587 patent. Moreover, there is nothing in the specifi-
cation to suggest that the motor protection invention
broadly recited in the claims should be limited to the
variable speed motor and drive of the disclosed embodi-
ment. The Board recognized that the claims do not specif-
ically recite a variable speed motor or drive but found
reason to limit the claims to variable speed drives based
on its finding that the “‘587 patent, as a whole, contextu-
ally discloses a variable speed motor and associated
drive.” Board op. at 6. But in doing so, the Board makes
the classic mistake of reading limitations from the specifi-
cation into the claims. See Phillips v. AWH Corp.,
415
F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (“[A]lthough
the specification often describes very specific embodi-
ments of the invention, we have repeatedly warned
against confining the claims to those embodiments.”).
HAYWARD INDUSTRIES, INC. v. PENTAIR WATER POOL AND SPA 3
The ’587 patent specification only describes variable
speed drives in two instances, both of which support a
broader reading of drive. First, the ’587 patent notes that
“[t]he controller can act as a . . . variable-speed drive.”
4:61–63 (emphasis added). There is nothing in the speci-
fication to suggest that the controller must act as a varia-
ble speed drive. To the contrary, the specification teaches
that controller 24 can act as a “power conditioner, a
variable-speed drive, a pressure regulator, and/or a motor
protector in the pump control system.”
Id.
Second, in the IPX proceeding, Pentair added claim
13, dependent from claim 1, which adds the limitation
“wherein the drive is a variable speed drive and the motor
is an alternating current motor.” The first half of this
limitation implies that “drive” is a genus and “variable
speed drive” is a particular species, and that the terms
are thus not intended to be coextensive. See Liebel-
Flarsheim Co. v. Medrad, Inc.,
358 F.3d 898, 910 (Fed.
Cir. 2004) (“As this court has frequently stated, the pres-
ence of a dependent claim that adds a particular limita-
tion raises a presumption that the limitation in question
is not found in the independent claim.”). We endeavor to
give meaning to every limitation when construing claims.
If “drive” in claim 1 is read to mean “variable speed
drive,” this first limitation in claim 13 would be rendered
superfluous. Pentair is incorrect that the inclusion of a
second limitation in claim 13 undermines the strength of
claim differentiation in this case.
The Board also found persuasive the statement of
Pentair’s expert, Dr. Collins, that “the term ‘motor drive’
applies to a variable speed motor drive.” Board op. at 7.
But even accepting that statement as true does not mean
that the term “drive” should take on that limited meaning
in the context of the claims at issue, which are not limited
to variable speed motors.
4 HAYWARD INDUSTRIES, INC. v. PENTAIR WATER POOL AND SPA
For the foregoing reasons, we agree with Hayward
that the broadest reasonable construction of “drive” in the
claims of the ’587 patent should not be limited to a varia-
ble speed drive. Such a narrow construction is incon-
sistent with the broadest reasonable interpretation
standard. We thus reverse the Board’s contrary ruling.
II. THE ADOPTED GROUNDS OF REJECTION OF CLAIMS 1-7
AND 9-14 BASED ON GENHEIMER
Substantial evidence does not support the Board’s
finding that starter 36 in the Genheimer reference, U.S.
Patent No. 4,286,303, fails to meet the “drive” limitation
of the ‘587 patent, as properly construed. The starter sits
between the power source and the power lines leading to
the electric motor, Genheimer at FIG. 1, and “operate[s]
under the control of a coil” to function as a “drive,” as
recited in the claims. Genheimer at 2:44-45. Under
normal circumstances, current from the power source
activates the coil, which in turn controls switches within
the starter to produce a current in the power lines leading
to the motor, thus activating the motor.
Id. at 4:2-5.
When a fault such as overheating occurs, the control unit
and control, connected in series with the coil,
id. at 2:42-
49, respond to the fault by deenergizing the coil and
disconnecting the motor from the power supply at the
starter,
id. at 4:5-9.
The parties dispute whether the starter 36, coil 38
and associated circuitry in Genheimer “produce[s]” or
“provide[s]” an electrical signal, and whether the signal is
“proper.” Substantial evidence does not support Pentair’s
argument that “produce[s] or “provide[s]” requires that
the drive comprise a generator or battery or similar
electrical production capacity, or that because the power
originates from the three-phase power line, it is not being
provided by the starter. The Examiner’s construction of
“drive” as “a term of art for the electronics that produce
[or provide] the proper electrical signal to power the
HAYWARD INDUSTRIES, INC. v. PENTAIR WATER POOL AND SPA 5
electric motor” requires no more than the control of cur-
rent to the motor.
Nothing in the claims or specification requires that
the drive must modify, condition, or alter the electrical
power between the power source and the motor in order to
provide the “proper electrical signal.” Indeed, Genheimer
notes that “different motor types or ratings have different
current operating levels,” and that a component of the
control unit (which determines the energization of the coil
and thus the starter) “makes it possible for the control
unit to be used with a variety of motors having different
ratings.”
Id. at 4:19-22. All that the claims require is a
signal that is proper for the selected motor type and
rating.
Finally, we agree with Hayward that the starter 36 in
Genheimer is not merely a switch, even though it includes
switches. As
noted, supra, the starter selectively provides
current to the motor depending on the operating or fault
condition extant. Nothing more is required.
For the above reasons, the Board’s reversal of the Ex-
aminer’s rejections 1-3, 7 and 10 cannot be maintained,
and the Examiner’s rejections of claims 1–7 and 9–14
based on Genheimer are sustained.
Because of our ruling on the rejections based on Gen-
heimer, we need not and do not address the rejections of
claims 1-7 and 9-14 based on Baldor and Carrow.
III. WRITTEN DESCRIPTION OF CLAIMS 8 AND 15
The Examiner rejected claims 8 and 15 under 35
U.S.C. § 112 as lacking written description support for the
claimed limitation, “wherein the direct current power
supply is provided to the bus when the drive is shut down
for the predetermined time.” The Board reversed that
rejection based on the operation of LED A as described in
the ‘587 patent at 12:10-15, inferring from that descrip-
tion that the patent “discloses that the drives 46, which
6 HAYWARD INDUSTRIES, INC. v. PENTAIR WATER POOL AND SPA
are powered by the DC bus, can be powered while not
driving the motor 16.” Board op. at 12.
Hayward argues that substantial evidence does not
support the Board’s reversal of that rejection, emphasiz-
ing specifically that nothing in the specification indicates
that the patentee was in possession of the concept of
supplying direct current power to the bus when the drive
is shut down for the claimed “predetermined time.” We
disagree.
The reference in dependent claims 8 to “the predeter-
mined time” (emphasis added) refers back to the prede-
termined time for the shut down recited in parent claim 1
and is not a separate requirement for the power to be
supplied for a different or limited period of time upon
shutdown. Independent claim 15 similarly ties the recita-
tion of “the predetermined time” to the predetermined
time recited earlier in the claim. Because substantial
evidence supports the Board’s conclusion that the ’587
patent discloses that power is provided to the bus during
the predetermined time when the drive is shut down, we
are not persuaded that the Board’s determination should
be overturned. We also decline to address Hayward’s
arguments based on the disclosures of Baldor and Carrow
that were first presented to the Board on rehearing and
for that reason not considered by the Board.
IV. CROSS-APPEAL REJECTIONS
Hayward argues that the Board failed to consider its
cross-appeal arguments challenging the validity of vari-
ous groups of claims on different grounds. Our decision
sustaining the Examiner’s rejection of claims 1-7 and 9-14
based on Genheimer moots all of the issues raised in
Hayward’s cross-appeal before the Board, except as they
may relate to claim 8. Hayward argues that the Board
failed to provide a thorough analysis of the various
grounds it argued in challenging claim 8, inter alia.
Hayward’s cross-appeal arguments, however, were con-
HAYWARD INDUSTRIES, INC. v. PENTAIR WATER POOL AND SPA 7
clusory at best. The Board was not required to more
thoroughly address issues that Hayward itself deemed
worthy of only cursory argument. See Conocophillips v.
United States,
501 F.3d 1374, 1382 (Fed. Cir. 2007) (citing
20A James W. Moore et al., Moore’s Federal Practice §
328.20 [9] (3d ed. 2007)). Because substantial evidence
supports the Board’s conclusion that the cross-appeal
arguments relating to claim 8 had no merit, we see no
reason to disturb the Board’s decision on that basis.
CONCLUSION
For the above reasons, we reverse the Board’s deter-
mination that “drive” is limited to a variable speed drive,
sustain the Examiner’s rejection of claims 1-7 and 9-14
based on Genheimer, affirm the Board’s determination
that claims 8 and 15 are supported by the written descrip-
tion, and affirm the Board’s treatment of Hayward’s cross-
appeal with respect to claim 8.
AFFIRMED-IN-PART AND REVERSED-IN-PART
COSTS
No costs.
