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Arctic Cat Inc. v. GEP Power Products, Inc.

United States Court of Appeals, Federal Circuit

March 26, 2019

ARCTIC CAT INC., Appellant
v.
GEP POWER PRODUCTS, INC., Appellee

          Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2016-01385, IPR2016-01388.

          Jason Stewart Jackson, Kutak Rock LLP, Omaha, NE, argued for appellant. Also represented by NIALL Andrew MacLeod, Minneapolis, MN.

          Michael T. Griggs, Boyle Fredrickson, S.C., Milwaukee, WI, argued for appellee. Also represented by Eric J. Lalor, Sarah M. Wong.

          Before Prost, Chief Judge, Reyna and TARANTO, Circuit Judges.

          TAEANTO, CIRCUIT JUDGE.

         Arctic 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 unpatentable.

         Arctic 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.

         I

         A

         The '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.

         In the '188 patent, claims 1, 11, and 19 are independent. Claim 1 reads:

1. A power distribution module for a personal recreational vehicle comprising:
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.

         In the '822 patent, claims 1, 5, and 10 are independent. Claim 1 reads:

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 including:
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.

         B

         In July 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.[1] 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).

         After 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)." Id.

         The 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).

         As an 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 ...


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