Court Affirms Claim Construction of “POL Regulator” and Denial of JMOL of Invalidity Based on Obviousness
March 30, 2010
Last Month at the Federal Circuit - April 2010
Judges: Michel, Gajarsa, Kendall (District Judge sitting by designation, author)
[Appealed from: E.D. Tex., Magistrate Judge Love]
In Power-One, Inc. v. Artesyn Technologies, Inc., Nos. 08-1501, -1507 (Fed. Cir. Mar. 30, 2010), the Federal Circuit affirmed the district court’s claim construction of the term “POL regulator” and the district court’s denial of Artesyn Technologies, Inc.’s (“Artesyn”) motion for JMOL of invalidity based on obviousness.
Power-One, Inc. (“Power-One”) sued Artesyn for infringement of U.S. Patent No. 7,000,125 (“the ’125 patent”), among others, which relates to power supply systems for controlling, programming, and monitoring point-of-load (“POL”) regulators. A regulator is a power supply that receives input power at one level and provides regulated output power at a different level. The devices powered by a regulator are referred to as “loads.”
The term “POL regulator” is not defined in the ’125 patent. After a Markman hearing, the district court construed the term to mean: “[A] dc/dc switching voltage regulator designed to receive power from a voltage bus on a printed circuit board and adapted to power a portion of the devices on the board and to be placed near the one or more devices being powered as part of a distributed board-level power system.” Slip op. at 4 (alteration in original).
Following trial, the jury found that Artesyn infringed claims of the ’125 patent and failed to prove that any of the asserted claims were invalid. Artesyn moved for JMOL, claiming invalidity and noninfringement of the ’125 patent. The district court denied the motion.
On appeal, the Federal Circuit first reviewed de novo the adequacy of the district court’s construction of the term “POL regulator.” Artesyn asserted that the district court did not provide an adequately precise construction of the term. Specifically, Artesyn argued that the terms “adapted to” and “near” in the district court’s construction were facially vague and subjective. Alternatively, Artesyn suggested that the term “POL regulator” was indefinite.
The Federal Circuit determined that the terms “adapted to” and “near” were not facially vague or subjective. At the outset, the Court explained that “[c]laims using relative terms such as ‘near’ or ‘adapted to’ are insolubly ambiguous only if they provide no guidance to those skilled in the art as to the scope of that requirement.” Id. at 5 (citing Datamize LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005)). The Court concluded that a person of ordinary skill in the field would understand the meaning of “near” and “adapted to” because the environment dictates the necessary preciseness of the terms.
According to the Federal Circuit, the phrase “[t]o be placed near the one or more devices being powered as part of a distributed board-level power system,” as recited in the district court’s construction, implies that the regulator is to be placed on the circuit board somewhere “close to or at” the load. The Court found that the specification of the ’125 patent stated that it was known to distribute an intermediate bus voltage throughout the electronic system and include an individual POL regulator at the point of power consumption within the system. The Court noted also that Figure 1 of the ’125 patent illustrates a prior art system where the POL regulator is located at the point of power consumption, thus providing a standard for measuring the term “near.”
The Federal Circuit further recognized that the specification unambiguously states that the regulator is to be placed “adjacent to” the corresponding load that it is powering so that low voltage/high currents will not be delivered over relatively long distances. Thus, according to the Court, the patent’s functionality requirement restricts the boundaries of where the regulator can be located in relation to the load it is powering. The Court concluded that a skilled artisan in distributed power systems would know where to place the regulator to accomplish that stated objective.
Similarly, the Court found that the phrase “adapted to power a portion of the devices on the board,” when read in conjunction with the intrinsic record, makes clear that a POL regulator is one that is capable of delivering power, at the appropriate intensity, to one or more loads on the circuit board. The Court quoted language from the specification stating that “[a] POL regulator would be included with each respective electronic circuit to convert the intermediate bus voltage to the level required by the electronic circuit,” and determined that this language unambiguously indicates to a skilled artisan that the output power of a POL regulator would be at the level required by, and thus “adapted to,” the electronic circuit receiving power from the POL regulator.
The Court stressed that “[t]he fact that the claim is not defined using a precise numerical measurement does not render it incapable of providing meaningful guidance to the jury because the claim language, when taken in context of the entire patent, provides a sufficiently reasonable meaning to one skilled in the art of distributed power systems.” Id. at 7. Accordingly, the Court held that the district court’s construction of the term “POL regulator” was adequate to fully describe the scope of the claims.
The Federal Circuit turned next to Artesyn’s indefiniteness argument. The Court provided that, to comply with the definiteness requirement of 35 U.S.C. § 112, ¶ 2, “the boundaries of the claim, as construed by the court, must be discernable to a skilled artisan based on the language of the claim, the specification, and the prosecution history, as well as her knowledge of the relevant field of art.” Id. at 8. The Court noted that, while a claim is indefinite where it is “not amenable to construction” or is “insolubly ambiguous,” a claim is not indefinite “merely because it poses a difficult issue of claim construction.” Id. The Court further explained that, “if the meaning of the claim is discernable, even though the task may be formidable and the conclusions may be one over which reasonable persons will disagree, we have held the claim sufficiently clear to avoid invalidity on indefiniteness grounds.” Id. (quoting Exxon Research & Eng’g Co. v. United States, 265 F.3d 1371, 1373 (Fed. Cir. 2001)).
The Federal Circuit held that the term “POL regulator” was not indefinite because the intrinsic evidence of the ’125 patent supports that POL regulators were well-known devices whose locations and functions relative to other components in the power system were understood by those of ordinary skill in the art. In other words, in the Court’s view, the term “POL regulator” was not indefinite because a person having ordinary skill in the art would know where to place the POL regulator and how to use it.
Next, the Federal Circuit considered Artesyn’s challenge of the district court’s denial of its JMOL on validity because the power system described in the ’125 patent would have been obvious to one of ordinary skill in the art. Applying Fifth Circuit law, the Federal Circuit stated that the district court’s denial of a JMOL motion is reviewed de novo, and the jury’s verdict must be affirmed unless there is no legally sufficient evidentiary basis for a reasonable jury to have found for the nonmovant.
The Court explained that 35 U.S.C. § 103 “forbids issuance of a patent when ‘the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’” Id. at 10 (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 405 (2007)). The Court provided that the determination of obviousness is a legal question based on underlying questions of fact, which include “1) the scope and content of the prior art; 2) the differences between the prior art and the claimed invention; 3) the level of ordinary skill in the art; and 4) any relevant secondary considerations.” Id. The Court noted that relevant secondary considerations include commercial success, long-felt but unsolved need, failure of others, and the presence of a motivation to combine, or avoid combining, prior art teachings.
Under this framework, the Court first acknowledged that Artesyn’s expert gave testimony that the scope of the asserted prior art was broad and the differences between the prior art and the invention claimed in the ’125 patent were minor. The Court then noted, however, that Power-One’s expert both opined that a person of ordinary skill in the art would not have considered the invention obvious and cited significant differences between the prior art and the claimed invention. The Court observed that, in the end, the jury credited Power-One’s expert.
The Federal Circuit rejected Artesyn’s argument that the ’125 patent was obvious because all of the elements that comprise the invention were known in the prior art. The Court explained that “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements is, independently, known in the prior art.” Id. at 11 (quoting KSR, 550 U.S. at 418).
Finally, the Court recognized that Power-One provided evidence of secondary considerations of nonobviousness that supported the jury’s conclusion that the ’125 patent was not invalid. In response to Power-One’s invention, Artesyn launched its own infringing product, touting features of the invention as an advancement in the industry, which the Court found to be inconsistent with the contention that
Power-One’s invention was obvious. In addition to Artesyn’s contemporaneous reaction to the invention, the Court noted that Power-One presented evidence of the industry’s reaction, which included praise that specifically related to the features of the patented invention. The Court also stated that another factor to be considered as a secondary consideration when determining obviousness was the sufficient evidence presented by Power-One for a jury to conclude that Artesyn copied the patented invention.
The Federal Circuit held that sufficient evidence supports the district court’s finding that the scope of the prior art is limited, that there are significant differences between the invention disclosure in the ’125 patent and the prior art, and that the relevant secondary considerations support a finding of nonobviousness.
Summary authored by C. Brandon Rash, Esq.