Siemens Industry Inc v. EMA ElectRomeCHanics Inc

1. Case Identification

• Case #: IPR2021-01517
• Patent #: 7,724,489
• Filed: September 8, 2021
• Petitioner(s): Siemens Industry, Inc.
• Patent Owner(s): EMA Electromechanics, Inc.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Circuit Breaker with High Speed Mechanically-Interlocked Grounding Switch
• Brief Description: The ’489 patent is directed to a circuit breaker apparatus that uses two mechanically interlocked vacuum circuit breakers. The interlock ensures that only one of the two breakers can be in a closed state at any given time, allowing the system to switch between connecting a power source to a load and connecting it to ground.

3. Grounds for Unpatentability

Ground 1: Claims 1-13 and 15-20 are obvious over Anger in view of Field

• Prior Art Relied Upon: Anger (WO 2007/031040) and Field (Patent 3,502,834).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Anger, a reference describing a vacuum interrupter, discloses the core invention of the ’489 patent. Anger teaches a device with two separate, vacuum-sealed internal areas (corresponding to the claimed "vacuum bottles") containing contacts. It further discloses a movable contact rod (the "mechanical linkage") that shifts between a first position connecting a power supply to a load and a second position connecting the power supply to ground. While Anger teaches the internal mechanism, Petitioner asserted that Field teaches placing such vacuum interrupters within an external "housing" with outwardly extending "bushings" for electrical connections, satisfying the remaining limitations of independent claims 1, 7, and 17.
  • Motivation to Combine: A POSITA would combine Anger’s interrupter with Field’s housing and bushings for predictable and well-established reasons. Placing the live components of Anger inside a protective housing as taught by Field is standard engineering practice to protect the device from the environment and to ensure human safety. Similarly, using insulated bushings to pass high-voltage conductors through a grounded housing is a fundamental and necessary technique to prevent arcing.
  • Expectation of Success: The combination would yield predictable results, as it involves applying known, standard components (a housing and bushings) to a circuit interrupter for their conventional purposes.

Ground 2: Claims 1-13 and 15-20 are obvious over Takahashi in view of Marchand

• Prior Art Relied Upon: Takahashi (Japanese Patent No. 3,683,089) and Marchand (Patent 6,242,708).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner contended that Takahashi discloses a complete vacuum switchgear system with a housing, bushings, and a mechanical linkage capable of switching between a power-to-load connection and a load-to-ground connection. However, Takahashi accomplishes this using multiple sets of contacts within a single, large evacuated container. Marchand, in contrast, teaches a similar switching function but implements it using two separate, modular vacuum bottles. Petitioner argued that modifying Takahashi’s single-container design to use Marchand’s dual-bottle configuration would have been obvious.
  • Motivation to Combine: A POSITA would have been strongly motivated to substitute Marchand's dual-bottle design into Takahashi's system for several reasons. Primarily, it offers significant cost savings and improved maintainability; the power-to-load contacts wear out faster, and replacing a single, small vacuum bottle is far cheaper and easier than replacing Takahashi’s entire large, sealed container. Other motivations included reduced manufacturing costs by using common off-the-shelf bottles and improved reliability by minimizing the number of seals required for the vacuum enclosure.
  • Expectation of Success: A POSITA would have had a high expectation of success, as combining the two designs involves the simple substitution of one known containment method (dual bottles) for another (single container) to gain well-understood benefits in cost and serviceability.

• Additional Grounds: Petitioner asserted additional obviousness challenges for claim 14 over the combinations of Anger/Field and Takahashi/Marchand, each further in view of Hamm (Patent 5,059,753). Hamm was cited for its teaching of using current transformers around both input and output bushings to monitor current and detect faults, which Petitioner argued was a well-known feature that a POSITA would have been motivated to add for its conventional purpose.

4. Key Claim Construction Positions

• Petitioner argued that several terms in the challenged claims are means-plus-function limitations under 35 U.S.C. § 112, para. 6. The proposed constructions were critical to mapping the prior art.
• "actuating means" (Claim 2) and "means for moving said actuator arm" (Claim 7): Petitioner proposed construing this term to cover the corresponding structures disclosed in the ’489 patent’s specification, namely "an actuator, latches, springs, or magnets, and their equivalents" that perform the recited function of moving the mechanical linkage.
• "means for passing power" (Claim 10[b]): Petitioner proposed this term should be construed as "the line between the power supply and the actuator arm, the actuator arm, and the line between the substation and the first contactor of the first vacuum bottle."

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not issue a discretionary denial under §314(a) based on the Fintiv factors, as there is a co-pending district court case.
• Petitioner asserted that multiple factors weigh heavily in favor of institution. The co-pending litigation was in its very early stages, with minimal investment by the court or the parties, and no trial date had been set. Furthermore, Petitioner stipulated that if the IPR was instituted, it would not pursue the same invalidity grounds in the district court litigation, thereby promoting judicial efficiency and avoiding duplicative efforts. Finally, Petitioner argued the petition's merits were strong and relied on prior art that was never considered during the patent's original prosecution.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of the ’489 patent as unpatentable.