Shimano, Inc. v. Rea , 527 F. App'x 1002 ( 2013 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
SHIMANO, INC.,
Appellant,
v.
Teresa Stanek Rea, ACTING DIRECTOR, U.S.
PATENT AND TRADEMARK OFFICE,
Appellee,
AND
MBI CO., LTD.,
Cross Appellant.
______________________
2012-1286, -1294
______________________
Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences in
Reexamination No. 95/001,051.
______________________
Decided: April 29, 2013
______________________
2 SHIMANO, INC. v. REA
JAMES A. DELAND, Deland Law Office, of Klamath
River, California, argued for appellant.
JOSEPH G. PICCOLO, Associate Solicitor, Office of the
Solicitor, United States Patent and Trademark Office, of
Alexandria, Virginia, argued for appellee. With him on
the brief were RAYMOND T. CHEN, Solicitor, and SCOTT C.
WEIDENFELLER, Associate Solicitor.
RICHARD WYDEVEN, Rothwell, Figg, Ernst & Manbeck,
P.C., of Washington, DC, argued for cross-appellant.
With him on the brief were R. ELIZABETH BRENNER-
LEIFER, JOO MEE KIM and MICHAEL V. BATTAGLIA.
______________________
Before NEWMAN, BRYSON, and DYK, Circuit Judges.
BRYSON, Circuit Judge.
This is an appeal from an inter partes reexamination
of U.S. Patent No. 6,478,711 (“the ’711 patent”), which is
owned by the appellee/cross-appellant MBI Co., Ltd. The
appellant, Shimano, Inc., sought the reexamination and
now appeals from the decision of the Patent and Trade-
mark Office Board of Patent Appeals and Interferences
sustaining the patentability of various claims of the ’711
patent. MBI cross-appeals from the Board’s decision
holding that the newly amended claim 7 of the ’711 patent
is invalid. We affirm the Board on both the main appeal
and the cross-appeal.
I
The ’711 patent claims an apparatus for changing the
speed of a bicycle by altering the gear ratios in a gear-
shifting mechanism. The claimed gear-shifting mecha-
nism contains one or more rings that control “pawls.”
Through a mechanism controlled by the bicycle rider, the
pawls can be caused to engage multiple “sun gears.” By
engaging the sun gears, the pawls link those gears me-
SHIMANO, INC. v. REA 3
chanically with other gears and with the bicycle’s rear
wheel shaft, thereby giving the rider the ability to change
the gear ratio of the bicycle’s drive mechanism.
The ’711 patent was issued in 2002 with 15 claims.
In 2008, Shimano requested reexamination of the ’711
patent. In response, the PTO ordered reexamination of
claims 1-8 and 11-15 of the patent. In the course of the
reexamination, MBI amended original claim 7 and added
new claims 16-25.
The examiner rejected all of the claims in the reexam-
ination on several grounds. First, the examiner rejected
claims 1-8, 13-20, 22, 24, and 25 as anticipated by a prior
art patent to Nagano (U.S. Patent No. 5,078,664). Sec-
ond, the examiner rejected claims 1-8, 11-20, and 22-25 as
obvious over Nagano alone (claims 11 and 23) and over
various combinations of Nagano and prior art patents to
Huang (U.S. Patent No. 5,855,530) and Matsuo (U.S.
Patent No. 5,785,625). Third, the examiner rejected claim
21 for indefiniteness and rejected claims 7, 22, and 23 for
lack of written description. Fourth, the examiner rejected
amended claim 7 on the ground that it enlarged the scope
of the previously issued claims, in violation of 35 U.S.C.
§ 314.
On appeal, the Board reversed all of the rejections
except for the written description rejections of claims 7
and 22. Both parties then appealed to this court. Shima-
no has sought reversal of the Board’s rulings with respect
to the claims on which the Board reversed the examiner’s
rejections. MBI has cross-appealed, seeking reversal of
the Board’s ruling sustaining the examiner’s written
description rejection of claim 7.
II
The parties have skirmished at length as to what is-
sues have been preserved for our review. We have exam-
ined the briefs before us and the record in this case with
4 SHIMANO, INC. v. REA
care and have concluded that the only issues properly
before this court on the main appeal are (1) whether the
Board erred in its construction of the disputed language of
claim 1; (2) whether various claims of the ’711 patent are
anticipated by the Nagano prior art reference; (3) whether
claims 11 and 12 would have been obvious in light of
Nagano, or Nagano in view of Matsuo; (4) whether the
Board erroneously failed to address Shimano’s “composite
pawl-controlling ring” argument; and (5) whether claim
23 fails to satisfy the written description argument. The
sole issue presented on MBI’s cross-appeal is whether the
Board’s finding that claim 7 is unpatentable for lack of
written description is not supported by the evidence. We
accordingly confine our discussion to those issues. 1
A
The main issue raised by Shimano on appeal is the
construction of independent claim 1. The portion of claim
1 that is in dispute recites “a speed-change controlling
portion, comprising . . . at least two sets of pawls engage-
able with and releasable from the ratchet-teeth of the sun
1 In post-argument submissions, the parties have
debated whether particular arguments were made to the
examiner and the Board during the reexamination pro-
ceedings. Rather that address those issues, we address
the arguments made in the parties’ opening briefs on
appeal and cross-appeal. Arguments not made in the
parties opening briefs are ordinarily deemed waived, see
Aventis Pharma, S.A. v. Hospira, Inc., 675 F.3d 1324,
1332-33 (Fed. Cir. 2012), and in a case such as this one, in
which the record is very large and in which the parties
have made a variety of different arguments at various
stages of the proceedings, it is entirely appropriate to hold
the parties to the specific arguments they have elected to
present to this court in their opening briefs.
SHIMANO, INC. v. REA 5
gears; [and] a pawl-controlling ring for controlling the
position of the pawls.”
Shimano argues that the Board’s construction of that
claim language was in error. Taking account of the
language of both limitations together and the associated
portions of the specification, the Board held that claimed
device must contain at least one “pawl-controlling ring”
that is capable of controlling the position of at least two
sets of pawls. Shimano contends, instead, that “the
pawls” referenced in the limitation reciting “a pawl-
controlling ring for controlling the positions of the pawls”
should be read to include “any subset of the ‘at least two
sets of pawls’” referred to in the prior limitation.
We agree with the Board’s construction of the perti-
nent language of claim 1. The reference to “the pawls” in
the limitation reciting a pawl-controlling ring is most
naturally understood to refer back to the “at least two sets
of pawls” in the immediately preceding limitation. More-
over, that interpretation is supported by the description
in the specification of the pawl-controlling ring “control-
ling the position of two or more sets of pawls.” ’711 pa-
tent, col. 4, ll. 11-12. 2
Shimano also argues that the Board’s claim construc-
tion is inconsistent with the embodiment illustrated in
Figure 8 of the ’711 patent but that its own construction is
not. According to Shimano’s brief, Figure 8 depicts an
embodiment in which a control ring controls only one set
of pawls associated with a single sun gear. In fact, how-
ever, Figure 8 is consistent with the Board’s construction.
2 As part of its challenge to the Board’s claim con-
struction, Shimano argues that the Board improperly
permitted MBI to “change the scope of Claim 1 by prose-
cution disclaimer.” We disagree. The Board based its
claim construction on the language of the claims and the
specification, not on any disclaimer by MBI.
6 SHIMANO, INC. v. REA
It shows three sets of pawls (designated as 421, 422, and
423), and two pawl-controlling rings (both designated as
430). One of the two depicted pawl-controlling rings
controls two of the sets of pawls (designated as 422 and
423), which are associated with the sun gears designated
as 232 and 233, respectively. In other words, the figure
shows a single pawl-controlling ring that controls two sets
of pawls.
In its brief, Shimano acknowledges (Br. 43) that its
anticipation argument depends on the court’s acceptance
of its proposed claim construction of the “pawl-controlling
rings” limitation, because the structure in Nagano corre-
sponding to the pawl-controlling ring was not shown to be
capable of controlling two sets of pawls. We do not agree
with Shimano’s proposed construction of that limitation,
and we therefore reject its argument that Nagano antici-
pates claims 1-8, 13-19, 24, and 25 of the ’711 patent.
Shimano separately contends (Br. 54-55) that the
Board improperly failed to address what it refers to as its
“composite pawl-controlling ring” argument. That argu-
ment, at least as presented to the examiner and incorpo-
rated by reference in Shimano’s brief to the Board, was
that because the two structures disclosed in Nagano,
identified as 80i and 80j, are rings and are connected by a
bridging portion, they can be regarded as parts of a single
pawl-controlling ring that controls two or more sets of
pawls.
The Board addressed that argument by stating that
Nagano’s structures 80i and 80j were not shown to be part
of a single pawl-controlling ring that controls two sets of
pawls. What a prior art reference discloses is a question
of fact as to which the Board’s findings are entitled to
deference under the “substantial evidence” standard. In
re ICON Health & Fitness, Inc., 496 F.3d 1374, 1378 (Fed.
Cir. 2007). The Board found that the term “ring,” as used
in the ’711 patent, would not be understood by one of skill
SHIMANO, INC. v. REA 7
the art to include a structure having “an elongated circu-
lar or cylindrical configuration.” As MBI pointed out in
its briefs to the Board, the “composite” structure compris-
ing 80i, 80j, and a bridging portion, when viewed as a
whole, has an elongated cylindrical configuration. Thus,
the composite structure cannot be a “ring” within the
meaning of the ’711 patent. It is undisputed that 80i and
80j individually are rings, but it is also undisputed that
neither 80i nor 80j individually is capable of controlling
two or more sets of pawls. Thus, the Board’s finding that
Nagano does not teach a “pawl-controlling ring” is sup-
ported by substantial evidence. 3
We also reject Shimano’s obviousness argument,
which is directed solely at claims 11 and 12. Those argu-
ments, which address additional limitations found in
claims 11 and 12, depend on the acceptance of Shimano’s
underlying claim construction argument as to the “pawl-
controlling ring” limitation. Because we agree with the
Board’s rejection of that argument, we likewise reject
Shimano’s arguments as to dependent claims 11 and 12.
Shimano’s final argument is that claim 23 of the ’711
patent is invalid for failing to satisfy the written descrip-
tion requirement. Shimano contends that the limitation
3 The same can be said for Shimano’s contention
that the “tube” disclosed in the prior art patent to Huang
can be regarded as a “ring” that controls at least two sets
of pawls. The Board found that Huang’s tube “has an
elongated cylindrical configuration with a significant
axial length relative to the diameter” and is “not a ‘ring,’
as that term would have been understood by one skilled in
the relevant art given the enlightenment found in the 711
Patent Specification.” To the extent that Shimano is
making a separate invalidity argument based in part or in
whole on Huang, we reject that argument based on those
factual findings by the Board.
8 SHIMANO, INC. v. REA
in claim 23 reciting “a ring-engaging portion [of the pawl]
adapted to be selectively engageable with the pawl-
controlling ring” is not supported by the ’711 specification,
because the specification shows that the pawls are always
in contact with the inner surface of the pawl-controlling
ring. The short answer to that argument is that the
pertinent figures in the ’711 patent show that each pawl
can be controlled so that it either engages the pawl-
controlling ring through grooves or does not engage the
grooves of the ring. “Engagement” in this context means
more than mere contact, as the ’711 specification makes
clear. The Board explicitly so found, based on Figures 9A
through 9C of the patent, and we sustain the Board’s
finding on that issue as amply supported by the evidence.
B
In its cross-appeal, MBI argues that the Board erred
by sustaining the examiner’s rejection of amended claim
7. We agree with the Board that the amendment to claim
7 during the reexamination had the effect of broadening
that claim in a manner that was not supported by the
specification. We therefore affirm that aspect of the
Board’s decision as well.
Claim 7 depends from claim 6, which in turn depends
from claim 1. Claim 6 recites that each pawl comprises a
“sag portion positioned inside of the pawl-controlling ring”
and a “stopper portion engageable with and releasable
from the ratchet-teeth at the inner circumference of the
sun gear.” In its original form, claim 7 recited the further
limitation that the pawls “positioned relatively far from
the pawl-controlling ring further comprise an extended
portion that is thinner than the pawl bodies.” The portion
of the specification supporting claim 7 described and
depicted an extended portion of the pawl “that is thinner
than the pawl body, so that it prevents the pawl . . . from
engaging other elements.” ’711 patent, col. 4, ll. 51-52;
Fig. 7.
SHIMANO, INC. v. REA 9
In reexamination, MBI amended claim 7, broadening
it to recite “an extended portion that is thinner than at
least one of the sag portion and the stopper portion.” In
effect, the amended claim, unlike the original claim, read
on embodiments in which the extended portion would be
as thick as, or thicker than, either the sag portion or the
stopper portion of the pawl. The Board concluded, in
accordance with the examiner’s findings, that the original
patent disclosure did not show that the patentee had
possession of an apparatus in which the extended portion
of the pawl was as thick as, or thicker than, either the sag
or stopper portions, and that the amended claim was
therefore invalid for failure to comply with the written
description requirement.
We sustain the Board’s ruling. Because the disclosure
in the specification of the structure of the extended pawl
was very detailed, and because the reason for the extend-
ed portion being narrower than the other portions of the
pawl was explicitly identified, the effect of the amend-
ment to the claim language was to extend the reach of
that claim to structures not described in the specification,
without any disclosure as to how those modified struc-
tures would perform the function designated for them by
the patent. Accordingly, we agree with the Board that
expanding the scope of claim 7 to reach structures not
disclosed in the specification of the ’711 patent rendered
that amended claim invalid.
AFFIRMED