NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

HAYWARD INDUSTRIES, INC.,

Appellant

v.

PENTAIR WATER POOL AND SPA, INC.,

Appellee

______________________ 

2017-1124

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 95/002,008.

______________________ 

Decided: February 26, 2018

______________________ 

 MARK NIKOLSKY, McCarter & English, LLP, Newark, 

NJ, argued for appellant. Also represented by STEVEN 

HALPERN, SCOTT S. CHRISTIE, TIMOTHY PATRICK HOMLISH,

MATTHEW ADAM SKLAR; LEE CARL BROMBERG, KEITH E.

TOMS, Boston, MA.

 CHRISTOPHER JAMES FAHY, Quarles & Brady, LLP, 

Chicago, IL, argued for appellees. Also represented by 

JOEL AUSTIN, RAYE LYNN DAUGHERTY, MICHAEL PIERY, 

Milwaukee, WI.

______________________ 
2 HAYWARD INDUSTRIES, INC. v. PENTAIR WATER POOL AND SPA

Before DYK, LINN, and HUGHES, Circuit Judges.

LINN, Circuit Judge. 

Hayward Industries, Inc. (“Hayward”) raises several 

issues in this appeal from a decision of the Patent Trial 

and Appeal Board (“PTAB”) in an inter partes reexamination (“IPX”) of U.S. Patent No. 7,686,587 (“’587 patent”), 

owned by Pentair Water Pool & Spa (“Pentair”). Hayward 

Indus., Inc. v. Pentair Water Pool & Space, Inc., Appeal 

No. 2015-007909 (P.T.A.B. Apr. 1, 2016). The court 

addresses each of the issues raised, in turn. For the 

reasons stated, we affirm-in-part and reverse-in-part.

1. CONSTRUCTION OF “DRIVE” 

Both parties agree with the Examiner’s construction 

of “drive” as “a term of art for the electronics that produce 

[or provide] the proper electrical signal to power the 

electric motor.” The parties disagree, however, on whether the term “drive” is properly limited to a variable speed 

drive.

The term drive is not defined in the specification of 

the ‘587 patent. Moreover, there is nothing in the specification to suggest that the motor protection invention 

broadly recited in the claims should be limited to the 

variable speed motor and drive of the disclosed embodiment. The Board recognized that the claims do not specifically recite a variable speed motor or drive but found 

reason to limit the claims to variable speed drives based 

on its finding that the “‘587 patent, as a whole, contextually discloses a variable speed motor and associated 

drive.” Board op. at 6. But in doing so, the Board makes 

the classic mistake of reading limitations from the specification into the claims. See Phillips v. AWH Corp., 415 

F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (“[A]lthough 

the specification often describes very specific embodiments of the invention, we have repeatedly warned 

against confining the claims to those embodiments.”).
HAYWARD INDUSTRIES, INC. v. PENTAIR WATER POOL AND SPA 3

The ’587 patent specification only describes variable 

speed drives in two instances, both of which support a 

broader reading of drive. First, the ’587 patent notes that 

“[t]he controller can act as a . . . variable-speed drive.” 

4:61–63 (emphasis added). There is nothing in the specification to suggest that the controller must act as a variable speed drive. To the contrary, the specification teaches 

that controller 24 can act as a “power conditioner, a 

variable-speed drive, a pressure regulator, and/or a motor 

protector in the pump control system.” Id. 

Second, in the IPX proceeding, Pentair added claim 

13, dependent from claim 1, which adds the limitation 

“wherein the drive is a variable speed drive and the motor 

is an alternating current motor.” The first half of this 

limitation implies that “drive” is a genus and “variable 

speed drive” is a particular species, and that the terms 

are thus not intended to be coextensive. See LiebelFlarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. 

Cir. 2004) (“As this court has frequently stated, the presence of a dependent claim that adds a particular limitation raises a presumption that the limitation in question 

is not found in the independent claim.”). We endeavor to 

give meaning to every limitation when construing claims. 

If “drive” in claim 1 is read to mean “variable speed 

drive,” this first limitation in claim 13 would be rendered 

superfluous. Pentair is incorrect that the inclusion of a 

second limitation in claim 13 undermines the strength of 

claim differentiation in this case.

The Board also found persuasive the statement of 

Pentair’s expert, Dr. Collins, that “the term ‘motor drive’ 

applies to a variable speed motor drive.” Board op. at 7. 

But even accepting that statement as true does not mean 

that the term “drive” should take on that limited meaning 

in the context of the claims at issue, which are not limited 

to variable speed motors.
4 HAYWARD INDUSTRIES, INC. v. PENTAIR WATER POOL AND SPA

For the foregoing reasons, we agree with Hayward 

that the broadest reasonable construction of “drive” in the 

claims of the ’587 patent should not be limited to a variable speed drive. Such a narrow construction is inconsistent with the broadest reasonable interpretation 

standard. We thus reverse the Board’s contrary ruling.

II. THE ADOPTED GROUNDS OF REJECTION OF CLAIMS 1-7

AND 9-14 BASED ON GENHEIMER

Substantial evidence does not support the Board’s 

finding that starter 36 in the Genheimer reference, U.S. 

Patent No. 4,286,303, fails to meet the “drive” limitation 

of the ‘587 patent, as properly construed. The starter sits 

between the power source and the power lines leading to 

the electric motor, Genheimer at FIG. 1, and “operate[s] 

under the control of a coil” to function as a “drive,” as 

recited in the claims. Genheimer at 2:44-45. Under 

normal circumstances, current from the power source 

activates the coil, which in turn controls switches within 

the starter to produce a current in the power lines leading 

to the motor, thus activating the motor. Id. at 4:2-5. 

When a fault such as overheating occurs, the control unit 

and control, connected in series with the coil, id. at 2:42-

49, respond to the fault by deenergizing the coil and 

disconnecting the motor from the power supply at the 

starter, id. at 4:5-9.

The parties dispute whether the starter 36, coil 38

and associated circuitry in Genheimer “produce[s]” or 

“provide[s]” an electrical signal, and whether the signal is 

“proper.” Substantial evidence does not support Pentair’s 

argument that “produce[s] or “provide[s]” requires that 

the drive comprise a generator or battery or similar 

electrical production capacity, or that because the power 

originates from the three-phase power line, it is not being 

provided by the starter. The Examiner’s construction of 

“drive” as “a term of art for the electronics that produce 

[or provide] the proper electrical signal to power the 
HAYWARD INDUSTRIES, INC. v. PENTAIR WATER POOL AND SPA 5

electric motor” requires no more than the control of current to the motor. 

Nothing in the claims or specification requires that 

the drive must modify, condition, or alter the electrical 

power between the power source and the motor in order to 

provide the “proper electrical signal.” Indeed, Genheimer 

notes that “different motor types or ratings have different 

current operating levels,” and that a component of the 

control unit (which determines the energization of the coil 

and thus the starter) “makes it possible for the control 

unit to be used with a variety of motors having different 

ratings.” Id. at 4:19-22. All that the claims require is a 

signal that is proper for the selected motor type and 

rating. 

Finally, we agree with Hayward that the starter 36 in 

Genheimer is not merely a switch, even though it includes 

switches. As noted, supra, the starter selectively provides 

current to the motor depending on the operating or fault 

condition extant. Nothing more is required.

For the above reasons, the Board’s reversal of the Examiner’s rejections 1-3, 7 and 10 cannot be maintained, 

and the Examiner’s rejections of claims 1–7 and 9–14

based on Genheimer are sustained.

Because of our ruling on the rejections based on Genheimer, we need not and do not address the rejections of 

claims 1-7 and 9-14 based on Baldor and Carrow.

III. WRITTEN DESCRIPTION OF CLAIMS 8 AND 15

The Examiner rejected claims 8 and 15 under 35 

U.S.C. § 112 as lacking written description support for the 

claimed limitation, “wherein the direct current power 

supply is provided to the bus when the drive is shut down 

for the predetermined time.” The Board reversed that 

rejection based on the operation of LED A as described in 

the ‘587 patent at 12:10-15, inferring from that description that the patent “discloses that the drives 46, which 
6 HAYWARD INDUSTRIES, INC. v. PENTAIR WATER POOL AND SPA

are powered by the DC bus, can be powered while not 

driving the motor 16.” Board op. at 12.

Hayward argues that substantial evidence does not 

support the Board’s reversal of that rejection, emphasizing specifically that nothing in the specification indicates 

that the patentee was in possession of the concept of 

supplying direct current power to the bus when the drive 

is shut down for the claimed “predetermined time.” We 

disagree.

The reference in dependent claims 8 to “the predetermined time” (emphasis added) refers back to the predetermined time for the shut down recited in parent claim 1 

and is not a separate requirement for the power to be 

supplied for a different or limited period of time upon 

shutdown. Independent claim 15 similarly ties the recitation of “the predetermined time” to the predetermined 

time recited earlier in the claim. Because substantial 

evidence supports the Board’s conclusion that the ’587 

patent discloses that power is provided to the bus during 

the predetermined time when the drive is shut down, we 

are not persuaded that the Board’s determination should 

be overturned. We also decline to address Hayward’s 

arguments based on the disclosures of Baldor and Carrow 

that were first presented to the Board on rehearing and 

for that reason not considered by the Board.

IV. CROSS-APPEAL REJECTIONS

Hayward argues that the Board failed to consider its 

cross-appeal arguments challenging the validity of various groups of claims on different grounds. Our decision 

sustaining the Examiner’s rejection of claims 1-7 and 9-14 

based on Genheimer moots all of the issues raised in 

Hayward’s cross-appeal before the Board, except as they 

may relate to claim 8. Hayward argues that the Board 

failed to provide a thorough analysis of the various 

grounds it argued in challenging claim 8, inter alia. 

Hayward’s cross-appeal arguments, however, were con-
HAYWARD INDUSTRIES, INC. v. PENTAIR WATER POOL AND SPA 7

clusory at best. The Board was not required to more 

thoroughly address issues that Hayward itself deemed 

worthy of only cursory argument. See Conocophillips v. 

United States, 501 F.3d 1374, 1382 (Fed. Cir. 2007) (citing 

20A James W. Moore et al., Moore’s Federal Practice § 

328.20 [9] (3d ed. 2007)). Because substantial evidence 

supports the Board’s conclusion that the cross-appeal 

arguments relating to claim 8 had no merit, we see no 

reason to disturb the Board’s decision on that basis.

CONCLUSION

For the above reasons, we reverse the Board’s determination that “drive” is limited to a variable speed drive, 

sustain the Examiner’s rejection of claims 1-7 and 9-14

based on Genheimer, affirm the Board’s determination 

that claims 8 and 15 are supported by the written description, and affirm the Board’s treatment of Hayward’s crossappeal with respect to claim 8.

AFFIRMED-IN-PART AND REVERSED-IN-PART

COSTS

No costs.