Fed. Cir. affirms PTAB decision over Neapco's patent being obvious

Fed. Cir. affirms PTAB decision over Neapco's patent being obvious

Federal Circuit affirms the Patent Trial and Appeal Board (PTAB) decision over Neapco's vented slip-joint coupling Patent No. 5,772,520, stating that the Neapco's patent is anticipated and obvious in the light of the prior art of Burton's U.S. Patent No. 5,655,968.

Neapco's Patent was challenged by American Axle. The '520 patent was transferred to Neapco by Ford as a part of the overall sale of Ford's driveshaft unit back in 2008. Despite getting the patent expired in 2016, Neapco sued American Axle in 2017, which was stayed.

The disputes relate to the claim that mentions the method of venting a slip joint assembly. The claims appear to be directed towards the method of assembling the vented slip joint for a vehicle driveshaft. This was designed to allow some axial compression of the driveshaft, the slip joint looks like a hydraulic shock absorber. The Neapco's patent had air inside the assembly (not hydraulic fluid) whereby the venting allows the compressed air to escape.

This venting was debated of whether the prior art of Burton's patent discloses the venting technology, thereby making the Neapco's patent mere anticipated and obvious. The patentee (Neapco) contended that the claim must be interpreted concerning venting to the outside and not inside, which was rejected by the Federal Circuit. The Federal Circuit states that the claim language did not support such a construction.

Burton's patent includes a "passage 130" that allows fluid communication from inside the slip assembly's two operational main parts (stud yok and slip yok) to a third chamber within the assembly. Neapco argues Burton does not disclose claim 11's "providing a vent" limitation because there is no evidence Burton's passage 130 permits "escape of compressed air." The evidence instead shows, according to Neapco, that passage 130 merely facilitates air circulation between Burton's internal cavities and therefore does not relieve pressure.

Finally, the court affirming the PTAB decision rejected the contention of the Neapco's and affirmed that claim 11 anticipated and its dependent claim 12 obvious in light of the prior art. Federal Circuit affirms that Neapco has, therefore, not shown that the preamble informs the meaning of, or provides the necessary structure to, the claim body.