NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
HAYWARD INDUSTRIES, INC.,
Appellant
v.
PENTAIR WATER POOL AND SPA, INC., DANFOSS
POWER ELECTRONICS A/S,
Appellees
______________________
2017-1021
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 95/002,006.
______________________
Decided: February 7, 2018
______________________
STEVEN HALPERN, McCarter & English, LLP, Newark,
NJ, argued for appellant. Also represented by SCOTT S.
CHRISTIE, TIMOTHY PATRICK HOMLISH, MARK NIKOLSKY,
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.
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 (“Board”) in an inter partes reexamina-
tion (“IPX”) of U.S. Pat. No. 7,854,597 (“’597 patent”),
owned by Pentair Water Pool and Spa, Inc. (“Pentair”).
Hayward Indus., Inc. v. Pentair Water Pool & Spa, Inc.,
Appeal No. 2016-002780 (P.T.A.B. Aug. 30, 2016) (“Board
Decision”). The court addresses each of the issues raised,
in turn. For the reasons stated, we affirm-in-part, vacate-
in-part and remand.
I. DISCENZO
The Board reversed the Examiners rejections of
claims 1–16, 18–32, 34–37, 40–43 and 45–57 of the ‘597
patent based on U.S. Pat. Pub. No. 2003/0061004 (“Dis-
cenzo”), concluding that the reference did not disclose or
teach a “control system operating as a master controller”
and a “pump controller operating as a slave controller
when connected to the control system.” ’597 patent,
col. 13, ll. 37–45. Specifically, the Board agreed with
Pentair’s expert, Dr. Collins, and concluded that in Dis-
cenzo, “the pump control system contains an active opti-
mization component 970 that independently provides a
motor speed output signal 964 that commands the motor’s
speed. . . .[such that] the peer in Discenzo maintains a
significant amount of control so as not properly to be
considered a slave.” Board Decision at 6–7. The Board’s
conclusion is not supported by substantial evidence and
cannot be sustained.
Paragraph 160 of Discenzo discloses two discrete rela-
tionships between the host computer and the individual
controllers. In one “possible configuration [] illustrated in
HAYWARD INDUSTRIES, INC. v. PENTAIR WATER POOL AND SPA 3
FIG. 17,” “[t]he host [computer] 1704 may provide central-
ized operation,” “whereby an efficiency optimization
component 1706 in the host computer 1704 may deter-
mine desired operating points for one or more of the
controllers MC1, MCN, and VC1.” Discenzo at ¶ 160.
Discenzo then states, “Alternatively or in combination, one
or more of the individual controllers MC1, MCN, and VC1
may determine desired operating points for the associated
sub-systems according to performance characteristic
information obtained from the host computer 1704, from
other controllers via the network 1702, and/or from the
sensors associated with the individual sub-systems.”
Id.
Paragraph 160 unambiguously teaches one embodiment
wherein the host computer “determine[s]” the desired
operating point for a controller, as well as an “alterna-
tive[]” embodiment wherein the controllers themselves
maintain some or all of the control over of the operating
point. Neither the Board nor Pentair’s expert, Dr. Collins,
discussed the “alternatively” language in paragraph 160
in any meaningful way, despite the fact that it was cen-
tral to the Examiner’s rejection and was argued by Hay-
ward on appeal to the Board. See J. App’x 15989–90
(Right of Appeal Notice); J. App’x 18278 (Hayward’s brief
to the Board) (“The RAN, pp. 163-165, correctly finds
Discenzo ¶ 160 teaches master-slave.”). The contrast of
these two embodiments undermines the Board’s conclu-
sion that the controller described in paragraph 160 and
shown in Figure 17 necessarily retains a measure of
independent control.
The Board incorrectly assumed that the controllers in
the embodiment shown in Figure 17 and described in
paragraph 160 necessarily include components from the
controllers embodied in Figure 9 and described in para-
graphs 132–157. Board Decision at 7–8. The Figure 9
embodiment discloses an individual controller, 966, that
includes its own optimization component, 970, which
“may select the desired operating point according to
4 HAYWARD INDUSTRIES, INC. v. PENTAIR WATER POOL AND SPA
performance characteristics associated with one or more
components in the system 902 or associated therewith.”
Discenzo at ¶ 141. The Board understood the presence of
this optimization component within the controller of
Figure 9 to fatally undermine the teaching in paragraph
160 of host computer control of the system. The Board
relied on the declaration of Pentair’s expert, Dr. Collins,
who similarly assumed that the controllers of Figure 9
were a necessary part of the embodiment in 17. J. App’x
15158 (Collins Supp. Dec’l, ¶ 30) (“Thus, when the embod-
iments of FIG. 9 and FIGS. 17 are combined, the control
system acts as the local agent . . . . Discenzo never dis-
closes that this local component 970 is disabled, and in
fact, clearly teaches that it is active even when coupled
with a large collection of agents as shown in FIG. 17.”); J.
App’x 17642–43 (Collins Dec’l, ¶¶ 87–89) (discussing the
embodiment in Figure 17 with reference to components
from Figure 9). Dr. Collins opined that “Discenzo does not
disclose that if setpoints or desired operating points are
received from the host computer 1704, even if optimized
by optimization component 1706, the controller 966 and
its optimization component 970 would lose independent
control.” J. App’x 15160 (Collins Supp. Dec’l, ¶ 36).
The controllers in the embodiment in Figure 9 do not
limit the disclosure of the embodiment in Figure 17
described in paragraph 160. Elements within one embod-
iment in a prior art reference do not necessarily limit
another embodiment unless there is some disclosure that
justifies such a conclusion. The written description of
Figure 9 in paragraph 132 of the ‘597 patent characterizes
the pump system of Figure 9 as “exemplary” and is not
described as limiting the invention. Moreover, nothing in
paragraph 160 of the ‘597 patent specifies that the only
controllers that can be used in the embodiment of Figure
17 are those shown in Figure 9. Pentair’s expert, Dr.
Collins, recognized that Figure 17 shows “a separate
embodiment,” in which “Discenzo only discloses optimiza-
HAYWARD INDUSTRIES, INC. v. PENTAIR WATER POOL AND SPA 5
tion within the host computer 1704, not within the con-
trollers MC1, MCN, and VC1.” J. App’x 17642 (Collins
Dec’l, ¶ 87). But he then went on, without explanation, to
describe the controllers in Figure 17 as being limited to
Figure 9’s controller 966 and failed to cite anything in the
specification that would lead one to that conclusion. Such
a shortcoming undermines the persuasiveness of Dr.
Collins’s declaration. Vitronics Corp. v. Conceptronic,
Inc.,
60 F.3d 1576, 1584 (Fed. Cir. 1996) (“[T]he expert
testimony, which was inconsistent with the specification
and file history, should have been accorded no weight.”).
The Board’s reliance on Dr. Collins’s declaration in con-
cluding that the controllers in Figure 17 do not operate as
slaves is unsupported.
Pentair looks to the characterization in paragraph 160
of the relationship between the host and the controllers as
“host-to-peer” as distinguishing that relationship from the
“master/slave” relationship recited in the claims. Pentair
reads too much into the “host-to-peer” phraseology.
Nothing in that phraseology explicitly or implicitly dis-
closes or teaches that the controllers in the embodiment of
Figure 17 necessarily maintain independent control.
Because substantial evidence does not support the
Board’s determination that Discenzo lacks disclosure of
the claimed master/slave relationship between the host
and the controllers, the Board’s reversal of the Examiner’s
rejections of claims 1–16, 18–32, 34–37, 40–43, 45–57
based on Discenzo cannot be sustained.
In view of our holding with respect to Discenzo, we
need not and do not consider whether the Carrow refer-
ence, Robert S. Carrow, Electrician’s Technical Reference,
Variable Frequency Drives, 2001, also discloses or teaches
the master/slave relationship.
Pentair also argued to the Board that Discenzo did
not meet the “optimize energy consumption” limitation of
these claims. Because the Board found Discenzo lacking
6 HAYWARD INDUSTRIES, INC. v. PENTAIR WATER POOL AND SPA
in a disclosure or teaching of the master/slave limitation,
the Board did not consider this issue. Accordingly, we
remand the question of whether Discenzo also discloses or
teaches the “optimize energy consumption” limitation of
claims 1–16, 18–32, 34–37, 40–43, 45–57 to the Board for
its consideration in the first instance.
II. CONSTRUCTION OF “OPTIMIZE ENERGY CONSUMPTION”
The Board agreed with the Examiner’s construction of
“optimize energy consumption” as “a reduction of energy
consumed over time relative to the ultimate pumping
application/function.” Board Op. at 7-9; J. App’x 15985.
Hayward contests the Board’s construction of “optimize
energy consumption” and various rejections based on that
limitation. Hayward contends that the Board improperly
read into its construction limitations from the specifica-
tion that rendered the construction both wrong and
indefinite. Hayward instead argues that the proper
construction of “optimize energy consumption” is “use the
minimal amount of energy possible by continuously
adjusting speed in real-time response to the sensed pa-
rameters of the water.” Hayward stresses the need to
adjust the pump “continuously” to provide optimal opera-
tion in response to changing conditions. Appellant’s Br.
at 49. Hayward further contends that its construction is
properly directed to the optimization of the pump itself
and not to other parameters of the ultimate pumping
system. More specifically, it argues that its construction
is supported by the specification’s description of closed-
loop systems responsive to “the sensed parameters of the
water” as contrasted to open loop systems limited to
“blindly guessing the right speed and hoping for the best.”
Id.
In construing the claims, we look to the description of
the invention in the specification. Phillips v. AWH Corp.,
415 F.3d 1303, 1315 (Fed. Cir. 2005) (the specification “is
the single best guide to the meaning of a disputed term”)
HAYWARD INDUSTRIES, INC. v. PENTAIR WATER POOL AND SPA 7
(quoting Vitronics Corp. v. Conceptronic, Inc.,
90 F.3d
1576, 1582 Fed. Cir. 1995)). The Board properly consid-
ered the written description and we find no basis to
overturn its construction.
The ’597 patent requires consideration of multiple
components of the system.
Energy conservation in the present invention is
based upon an appreciation that such other water
movement [“[a]ssociated with operation of various
functions and auxiliary devices”] may be consid-
ered as part of the overall desired water move-
ment, cycles, turnovers, filtering, etc. . . . This
permits increased energy efficiency by avoiding
unnecessary pump operation.”
Id. at col. 12, ll. 10–23. The remainder of the ’597 patent
confirms that energy optimization requires consideration
of holistic factors that are not necessarily responsive to a
simple feedback mechanism.
Id. at col. 12, ll. 18–23
(“Thus, control of a first operation (e.g. filtering) in re-
sponse to performance of a second operation (e.g. running
a pool cleaner) can allow for minimization of a purely
filtering aspect.”);
id. at col. 12, ll. 24–50 (providing ex-
amples of functions taken into consideration beyond flow
feedback to optimize energy consumption);
id. at col. 1, ll.
33–49 (discussing auxiliary devices);
id. at col. 1, ll. 50–59
(discussing consideration of auxiliary devices as an aspect
of energy optimization);
id. at col. 1, ll. 60–67 (noting the
benefits of a pump that communicates with auxiliary
devices and responds to changing conditions thereof);
id.
at col. 11, ll.:58–62 (optimizing power consumption of the
motor “based upon the parameter(s) received from the
auxiliary device(s).”);
id. at col. 12, ll. 45–50 (“For exam-
ple, where a filter arrangement has become clogged over
time and requires an ever-increasing water flow or pres-
sure, the means for controlling could choose to delay
operation of an automatic pool cleaner until after the
8 HAYWARD INDUSTRIES, INC. v. PENTAIR WATER POOL AND SPA
filter arrangement has been cleaned.”); J. App’x at 15211
(Dec’l of Dr. Toliyat, “[I]n practice there are challenges to
actually achieving energy optimization even with a varia-
ble speed pump because the desired results—i.e., a certain
flow rate and/or pressure—are dependent upon factors
other than the speed of the pump.”).
Recognizing that the ’597 patent requires considera-
tion of more than the bare flow rate in comparison with a
target rate is not reading limitations from the specifica-
tions into the claims. As noted above, the specification
explicitly requires consideration of the interrelation of
water movement associated with various functions and/or
auxiliary devices in conserving energy. Hayward’s argu-
ment that a closed-loop feedback controller provides
optimized energy consumption does not take this into
account.
Hayward argues that claim 1 does not require auxilia-
ry devices, and that optimizing energy consumption in
claim 1 cannot require consideration of such unclaimed
components. However, as described above, the claimed
“control system” must be capable of taking into account
more than the mere flow rate compared to a desired
setpoint to adjust the motor speed—a capability that a
closed loop feedback controller by definition lacks.
Moreover, even though “continuous” adjustment is
important, the pump need not do that by always increas-
ing the speed when the flow is too low or decreasing it if it
is too high. As noted above, other considerations may
override that type of adjustment. Properly construing the
claims in light of the specification requires more than a
simple closed-loop system--it must take into account the
effect of the speed adjustment on the other components.
These considerations are properly taken into account
under the Board’s construction. See, Cuozzo Speed
Techs., LLC. v. Lee,
136 S. Ct. 2131 (2016) (approving the
broadest reasonable construction in inter partes review).
HAYWARD INDUSTRIES, INC. v. PENTAIR WATER POOL AND SPA 9
Hayward argues that the Examiner and the Board re-
peatedly changed the construction of “optimize energy
consumption.” The Board and the Examiner maintained
the same construction throughout all relevant parts of the
IPX. Compare J. App’x 7–9 (Board Opinion) (“a reduction
of energy consumed over time relative to the ultimate
pumping application/function”) with J. App’x 15985 (Right
of Appeal Notice) (“a reduction of energy consumed over
time relative to the ultimate pumping applica-
tion/function”) with J. App’x 15432–33 (Second Action
Closing Prosecution) (“a reduction of energy consumed
over time relative to the ultimate pumping applica-
tion/function”) with J. App’x 14471 (First Action Closing
Prosecution) (requiring consideration of “the overall
desired water movement” and holding that Carrow does
not teach “overlapping the required flows from various
functions to avoid unnecessary flow”). The first three
above-noted constructions are identical, and the one noted
from the First Action Closing Prosecution is essentially
the same, and similarly requires more than a mere closed-
loop feedback arrangement.
Hayward is incorrect that “relative to the ultimate
pumping application/function” is “uselessly vague.” The
baseline of comparison remains the amount of energy that
would have been consumed to execute those pumping
applications/functions absent optimization. ’597 patent,
col. 1, ll. 21–66 (contrasting conventional pumping sys-
tems with optimized systems). Such construction is not
indefinite simply because different applications/functions
have different baseline energy usages. See Young v.
Lumenis, Inc.,
492 F.3d 1336, 1346 (Fed. Cir. 2007) (hold-
ing the claim language “incision . . . near the edge of the
ungual crest of the claw” of an animal is not indefinite
even though “near” depends on the animal being consid-
ered).
Hayward is also incorrect that Geneva Pharms., Inc.
v. GlaxoSmithKline PLC,
349 F.3d 1373 (Fed. Cir. 2003)
10 HAYWARD INDUSTRIES, INC. v. PENTAIR WATER POOL AND SPA
compels a contrary conclusion. The court in that case, in
the context of a double patenting rejection, considered the
limitation “synergistically effective amount” and made the
observation that “one of skill would not know from one
bacterium to the next whether a particular composition
standing alone is within the claim scope or not.”
Id. at
1384. Here, whether there is energy optimization within
a particular system is easily determined by comparing the
energy use of a pump that takes into account the various
functions and requirements of the system and one that
does not take those functions into account. Nothing in the
record suggests that such a comparison would not be well
within the grasp of one of ordinary skill in the art.
For these reasons, we affirm the Board’s construction
of the “optimize energy consumption” limitation.
III. JONES, DANFOSS AND CARROW
Hayward next argues that even under the Board’s
construction of “optimize energy consumption,” U.S.
Patent Publication No. 2003/0196942 (“Jones”), Danfoss
VLT 8000 AQUA Instruction Manual, April 16, 20014
(“Danfoss”), and Carrow meet that limitation. Each of
those references discloses a closed-loop feedback system,
which recognizes the flow rate and increases or decreases
the motor speed to use the least energy possible to reach
that flow rate. 1 As noted above, however, the “optimize
energy consumption” claim limitation requires considera-
tion of factors outside the universe of a closed-loop sys-
tem. Because Jones, Danforth and Carrow do not disclose
or teach systems with this additional capability, substan-
tial evidence supports the Board’s decision.
1 Hayward does not argue on appeal that U.S. Pat.
Pub. No. 2004/0117330 (“Ehlers”) discloses or teaches
optimizing energy consumption under the Board’s con-
struction.
HAYWARD INDUSTRIES, INC. v. PENTAIR WATER POOL AND SPA 11
IV. DEPENDENT CLAIMS ARGUED SEPARATELY
The Board held that claims 17, 33, 58 and 59 were al-
lowable over the prior art, that claims 38 and 39 were not
indefinite, and that claim 44 was enabled and was sup-
ported by the written description. Hayward challenges
each of those determinations.
Claim 17 and its substantively identical independent
counterpart, claim 58, contain the so-called “ignoring”
limitation: “the pump controller ignores a request for
increased flow rate from the control system during at
least one of a backwash cycle and a lock out state.” Hay-
ward argues that these claims are obvious over an uni-
dentified combination, presumably involving Discenzo in
combination with U.S. Patent Publication No.
2005/0123408 (“Koehl”), U.S. Patent Publication No.
2005/0226731 (“Mehlhorn”), or Jones. Hayward’s argu-
ments fail. On appeal, Hayward does not put forth any
discernible reason an ordinary artisan would combine
Discenzo with any of these references. Moreover, sub-
stantial evidence supports the Board’s holding that the
cited references, alone or in combination, do not disclose
or teach the “ignoring” limitation. Jones and Koehl
respectively teach an emergency shutdown of the motor in
case of a life-threatening suction entrapment or a fault
condition. The Board correctly recognized that teaching
shutting off a motor entirely is not “ignoring” a signal—it
is failing to receive a signal in the first place. Regarding
Mehlhorn, while Hayward maps the “pump controller” in
the ’597 patent to the “controller 150” in Mehlhorn, it does
not identify anything in Mehlhorn that can be mapped to
“the control system,” as the claims require. Hayward has
thus failed to show any teaching in the cited references of
the “ignoring” limitation.
Claim 33 and its substantively identical independent
counterpart, claim 59, do not contain the “ignoring”
limitation but instead recite “wherein the pump controller
12 HAYWARD INDUSTRIES, INC. v. PENTAIR WATER POOL AND SPA
alters the performance of the pumping system to provide
an increased flow rate necessary for proper operation of
the heater.” The Board did not explicitly address this
limitation, instead grouping claims 33 and 59 with claims
17 and 58 without comment, despite the fact that these
two sets of claims contained different limitations. We
thus vacate the Board’s holding that claims 33 and 59 are
not invalid, and remand to the Board for consideration in
the first instance.
Hayward next argues that newly added claims 38 and
39 are indefinite. Those claims recite the limitations “the
pumping system considers the amount of water movement
in determining whether the number of turnovers over the
specified time period is achieved” and “wherein an
amount of water movement is associated with operation of
at least one auxiliary device.” We agree with the Board
that the component doing the “considering” can be any
part of the pumping system, and that this is not indefi-
nite.
Hayward argues that newly added claim 44 lacks en-
ablement and written description support. That claim
adds the limitation: “wherein the information received
from the control system includes an operational state
including at least one of a filtration mode, a vacuum
mode, and a heating mode.” The Board correctly held
that claim 44 is fully supported under 35 U.S.C. § 112 ¶ 1.
Although Hayward is correct that the ’597 patent does not
use the word “mode” in the specification, it does disclose
receiving information from a control system, including
receiving operational states. ’597 patent, col. 10, ll. 37–43
(generally teaching the use of various operational states;
id. at col. 10, ll. 60–62 (teaching altering motor operations
based on the received parameter with respect to the needs
of a water heater);
id. at col. 7, ll. 38–46. Moreover, we
agree with Pentair that the ’597 patent supports the
modes limitation through the incorporation by reference
of U.S. Pat. No. 8,019,479 (“’479 patent”), from which the
HAYWARD INDUSTRIES, INC. v. PENTAIR WATER POOL AND SPA 13
’597 patent claims priority. ’597 patent, col. 1, ll. 6–10; 37
C.F.R. § 1.57(d) (allowing disclosures in a U.S. Patent
incorporated by reference to provide § 112 support).
Hayward provides no support for its argument that the
publication of the’479 patent after the filing date of the
’597 patent disqualifies the ’479 patent from providing
§ 112 support.
Finally, we reject Hayward’s cursory and unsupported
arguments that claim 44 is invalidated (presumably as
obvious) by nine rejection sets that disclose a swimming
pool pump with filter.
CONCLUSION
For the reasons discussed above, we vacate the
Board’s conclusion that claims 1–16, 18–32, 34–37, 40–43
and 45-57 are allowable based on the master/slave limita-
tion and remand to the Board for reconsideration of the
rejections based on Discenzo, consistent with this opinion.
We affirm the Board’s construction of “optimize energy
consumption” as the broadest reasonable construction.
We also affirm the Board’s conclusion that Carrow, Jones,
and Danfoss do not disclose or teach the “optimize energy
consumption” limitation.
We affirm the Board’s conclusion that claims 17 and
58 are not obvious, that claims 38 and 39 are not invalid
as indefinite, and that claim 44 is not invalid for lack of
enablement or written description. We vacate the Board’s
conclusion that claims 33 and 59 are not obvious, and
remand that question to the Board for consideration in
the first instance.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED.
