iTakeaway: The test for obviousness is not whether the features of a secondary reference may be incorporated bodily into the structure of the primary reference.
In its Final Written Decision, the Board found all challenged claims, claims 1-6, of the ’719 Patent unpatentable. The ’719 Patent relates to a gas furnace control circuit and electronic ignition of a gas burner. The Board began with claim construction, stating that the terms are to be interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. The Board first reviewed the construction of the terms “coil” and “said relay coil,” which Patent Owner contends mean “winding of a conductor.” The Board agreed with Patent Owner based upon a consistent definition in a technical dictionary. The Board then determined that the preamble to claim 1 is limiting to the extent it recites structure that provides antecedent basis to the terms “said relay coil” and “the igniter,” but did not agree with Patent Owner that “to actuate the furnace” as recited in the preamble is limited to actuating or activating a component other than the igniter. The Board next discussed the corresponding structure for the “charge storage means,” agreeing with both Patent Owner and Petitioner as to the corresponding structure.
The Board then discussed the ground of unpatentability – obviousness over Courier and Potts. The Board reviewed Petitioner’s arguments as to claim 1 and stated that Petitioner had shown by a preponderance of the evidence that those claims were obvious through its expert declaration and detailed claim analysis. The Board stated that Patent Owner’s contentions otherwise were based on claim construction positions that were not adopted. Further, as to Patent Owner’s argument that a person of ordinary skill in the art would have no reason to combine Courier with Potts because Courier teaches circuits with DC power supplies and Potts teaches a voltage doubler with an AC power supply, the Board found that the test for obviousness is not whether the features of a secondary reference may be incorporated bodily into the structure of the primary reference, but whether one of ordinary skill in the art would have been motivated to pursue a voltage doubling circuit to increase the amount of voltage accumulated. The Board then further held that the additional limitations of dependent claims 2-6 were taught by the prior art.
Honeywell International Inc. v. International Controls and Measurements Corp., IPR2014-00219
Paper 43: Final Written Decision
Dated: April 1, 2015
Patent: 6,222,719 B1
Before: Howard B. Blankenship, Karl D. Easthom, and Barbara A. Parvis
Written by: Parvis
Related Proceeding: Int’l Controls & Measurements Corp. v. Honeywell Int’l, Inc., No. 5:12-cv-1766-LEK-ATB (N.D.N.Y.)
