Appeals from the United States Patent and Trademark Office,
Patent Trial and Appeal Board in Nos. IPR2016-01385,
Stewart Jackson, Kutak Rock LLP, Omaha, NE, argued for
appellant. Also represented by NIALL Andrew MacLeod,
Michael T. Griggs, Boyle Fredrickson, S.C., Milwaukee, WI,
argued for appellee. Also represented by Eric J. Lalor, Sarah
Prost, Chief Judge, Reyna and TARANTO, Circuit Judges.
TAEANTO, CIRCUIT JUDGE.
Cat Inc. owns U.S. Patent Nos. 7, 072, 188 and 7, 420, 822,
which are both titled "Power Distribution Module for
Personal Recreational Vehicle." The patents describe an
assertedly inventive electrical-connection box having an
array of receptacle openings that allow wires to be arranged
and secured in various positions for distributing power to
various electrical components, including components of a
personal recreational vehicle. GEP Power Products, Inc.
petitioned the Patent Trial and Appeal Board for inter partes
reviews of all claims of both patents. The Board determined
that all claims of the '188 and '822 patents are
Cat appeals. It argues principally that the Board erred by
(1) rejecting Arctic Cat's submission of the full
transcript of its inventor's deposition, (2) construing
various claim preambles as not stating limitations on the
claimed inventions, and (3) finding U.S. Patent No. 6, 850,
421 (Boyd) to be prior art applicable against the '188
and '822 patents. We conclude that the Board did not
abuse its discretion in rejecting the deposition-transcript
submission; that the Board correctly held preamble references
to a vehicle in the claims at issue not to be limiting; but
that the Board improperly determined that Boyd was prior art.
Based on those conclusions, as to the '188 patent, we
reverse in part, vacate in part, and remand for further
proceedings. As to the '822 patent, we affirm.
'822 patent issued from an application that was a
continuation of the application from which the '188
patent issued. The patents claim the same priority date of
October 29, 2002, when the application for the '188
patent was filed, and they have essentially the same
specification. The specification describes a power
distribution module, which includes a housing and a cover.
'188 patent, col. 1, lines 61-64; '822 patent, col.
2, lines 5-7. The interior of the housing includes a
"component attachment portion," which is a wall
with an array of electric-receptacle openings meant for
"receiving and securing electrical components."
'188 patent, col. 1, line 61 through col. 2, line 1;
'822 patent, col. 2, lines 8-11. The module also includes
a distribution harness with electrical conductors that
connect electrical components to the receptacles and
facilitate power distribution. '188 patent, col. 2, lines
1-6; '822 patent, col. 2, lines 12-16. The specification
states that "[a]nother aspect of the present invention
is directed to a personal recreational vehicle having an
electrical distribution system" that includes the same
power distribution module. '188 patent, col. 2, lines
7-9; '822 patent, col. 2, lines 17-19. The invention is
purportedly useful because standardization of components
across different vehicle models reduces manufacturing time
and costs. See'188 patent, col. 1, lines 38-55; '822
patent, col. 1, lines 50-67.
'188 patent, claims 1, 11, and 19 are independent. Claim
1. A power distribution module for a personal recreational
a housing defining an interior, including a component
attachment portion and a cover, the cover comprising a first
surface substantially surrounding the perimeter thereof, the
first surface conforming to a first edge surrounding the
perimeter of the component attachment portion, the component
attachment portion comprising a fastener secured thereto
proximate the first edge thereof, the fastener selectively
securing the component attachment portion to the cover having
the first surface of the cover in engagement with the first
edge of the component attachment portion, the housing further
including a plurality of receptacle openings in a wall in the
component attachment portion, wherein the receptacle openings
are spaced-apart in rows and columns of openings, the spacing
between the rows and the spacing between the columns being
substantially the same for receiving and securing at least
one electrical component within the housing across multiple
rows or across multiple columns of openings; and
a distribution harness having a plurality of electrical
conductors, wherein the electrical conductors electrically
cooperate with the receptacle openings to connect to the at
least one electrical component, wherein the conductors are
adapted to distribute power.
'188 patent, col. 7, lines 5-30. The preamble of claim 11
is the same as the preamble of claim 1: "[a] power
distribution module for a personal recreational
vehicle." Compare id., col. 7, lines 5-6,
with id., col. 7, lines 60-61. The preamble of claim
19 recites only a "power distribution module."
Id., col. 8, line 53.
'822 patent, claims 1, 5, and 10 are independent. Claim 1
1. A personal recreational vehicle comprising:
an electrical distribution system for distributing electrical
signals and power, the electrical distribution system
including a power distribution module, wherein at least a
portion of the electrical signals and power passes through
the power distribution module, the power distribution module
a housing having a plurality of receptacle openings in a
substantially flat wall, the wall having a front side and a
back side, wherein the receptacle openings are positioned in
an array of at least three equally spaced-apart rows and at
least three equally spaced-apart columns, the receptacle
openings positioned to receive electrical components on the
front side of the wall across any adjacent openings in at
least one row of the array; and
a distribution harness on the backside of the wall opposite
the receptacle openings, the distribution harness having a
plurality of electrical conductor cables, wherein the
electrical conductor cables electrically cooperate with the
receptacle openings for receiving electrical components.
'822 patent, col. 7, lines 7-27. Claim 5's preamble
recites an "electrical distribution module for a
vehicle," id., col. 7, line 41, and claim
10's preamble recites a "power distribution
module," id., col. 8, line 29. We do not set
out those claims in full, as any differences from claim 1 are
not material to the issues we decide.
2016, GEP filed petitions for inter partes reviews of the
'188 and '822 patents under 35 U.S.C.
§§311-19, challenging all claims as unpatentable
for anticipation or obviousness under 35 U.S.C. §§
102 and 103. For the '188 patent, the Board
instituted a review on three grounds: (1) anticipation of
claims 1-6, 11, 19, 22, and 23 by Boyd; (2) obviousness of
claims 12-18 over Boyd, U.S. Patent No. 5, 354, 211 (Svette),
and U.S. Patent No. 3, 660, 869 (Caveney); and (3)
obviousness of claims 1-12 and 19-23 over Svette alone. For
the '822 patent, the Board also instituted a review on
three grounds: (1) anticipation of claims 1, 2, 5, 9, and 10
by Boyd; (2) obviousness of claims 3, 4, and 6-8 over Boyd
and Svette; and (3) obviousness of claims 1-10 over Svette
and U.S. Patent No. 6, 121, 548 (Matsuoka).
the Board instituted its reviews, Arctic Cat filed its Patent
Owner Responses on April 3, 2017. In its responses, Arctic
Cat relied on statements in a declaration by Mr. Darrel
Janisch, an Arctic Cat employee and the sole inventor listed
on the '188 and '822 patents. GEP cross-examined Mr.
Janisch in a deposition on May 25, 2017. GEP filed its
replies in the two proceedings on June 30, 2017, citing
statements that Mr. Janisch made during his deposition.
Rather than filing the full deposition transcript with its
replies, GEP submitted only the portions it cited. Nearly
three months later, on September 20, 2017, Arctic Cat
submitted the full deposition transcript to the Board,
without any request for permission. In orders dated the same
day, the Board expunged that submission from the record.
Citing 37 C.F.R. § 42.7(a), which permits the Board to
expunge papers that are "not authorized," the Board
determined that Arctic Cat's submission was
"unauthorized and untimely." J.A. 81. More
specifically, it noted that Arctic Cat "did not seek
authorization" to file the transcript, nor did Arctic
Cat "explain why . . . the transcript could not have
been filed earlier (for example, by the due date in the
Scheduling Order for Motions for Observation)."
Board issued its final written decisions on December 5, 2017.
GEP Power Prods., Inc. v. Arctic Cat Inc., No.
IPR2016-01385 (P.T.A.B. Dec. 5, 2017), Paper No. 27
('188 Board Decision); GEP Power Prods., Inc. v.
Arctic Cat Inc., No. IPR2016-01388 (P.T.A.B. Dec. 5,
2017), Paper No. 31 ('822 Board Decision).
initial matter, the Board rejected part of Arctic Cat's
argument that certain language in the claim preambles is
limiting, i.e., defines the inventions to be
assessed for patentability. Specifically, the Board concluded
that the asserted claims in the '188 patent are not
limited by preamble language referring to a personal
recreational vehicle and that the same is true of claims 1-4
of the '822 patent. '188 Board Decision at
9-12; '822 Board Decision at 9-12. With respect
to those claims, the Board reasoned that "the claim
bodies . . . describe structurally complete inventions"
that do not include personal recreational vehicles and that
the preambles "recite only an intended use for the
otherwise complete claimed apparatus." '188
Board Decision at 11; see '822 Board
Decision at 9-12. The Board did not decide the limiting
effect of preamble language in claims 5-10 of the '822
patent, deeming such a ...