Cutsforth, Inc. v. Motivepower, Inc.
636 F. App'x 575
Fed. Cir.2016Background
- Cutsforth owns U.S. Patent No. 7,990,018, which claims a removable brush holder assembly used to conduct current between stationary brushes and moving contacts in electrical machines.
- Independent claim 1 recites a mounting block and a removable brush holder component with a movable brush catch actuated by a stationary brush release on the mounting block; dependent claims include features like a spring in the mounting block (claim 5) and a movable portion of the mounting block (claim 8).
- MotivePower petitioned for inter partes review challenging claims 1–24 as obvious over Bissett, Kartman, and Ohmstedt; the PTAB instituted review and issued a Final Written Decision cancelling all claims as obvious.
- The PTAB construed “mounting block” as “a base for affixing to another structure” and “removably mounting” as nonpermanent mounting; Cutsforth challenged the obviousness findings and the claim construction on appeal.
- The Federal Circuit affirmed the claim-construction ruling but vacated and remanded the PTAB’s obviousness decision, holding the Board’s analysis was conclusory and failed to explain why a person of ordinary skill would have made the asserted combinations or design choices.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the PTAB correctly found claims 1–24 obvious over Bissett, Kartman, and Ohmstedt | Cutsforth argued the Board lacked adequate reasoning to show a POSITA would combine the references as the Board asserted | MotivePower argued the references disclose the claimed features and the Board correctly relied on its combinations and design-choice reasoning | Vacated and remanded: Board’s obviousness analysis was conclusory and insufficiently explained; inadequate for appellate review |
| Construction of “mounting block” | Cutsforth argued it must be fixed to another structure | MotivePower (and PTAB) read it as a base for affixing and not necessarily permanently fixed | Court found no error in PTAB’s construction and rejected Cutsforth’s challenge |
| Adequacy of PTAB’s explanation for dependent claims (e.g., claim 5 spring placement; claim 8 movable portion) | Cutsforth argued PTAB failed to explain why relocating elements or placing a spring on the mounting block would be obvious to a POSITA | MotivePower argued placement/movement were design choices a POSITA would make | Held: PTAB offered only conclusory statements; must explain why POSITA would make the specific design choices — remand required |
| Standard and sufficiency of PTAB reasoning on obviousness | Cutsforth argued the Board’s summary of parties’ arguments is insufficient; Board must articulate its own reasoning | MotivePower relied on its articulated arguments being adopted by the Board | Held: Board must provide reasoned explanation (not merely recite petitioner’s arguments) to permit meaningful judicial review; decision vacated and remanded |
Key Cases Cited
- In re Kotzab, 217 F.3d 1365 (Fed. Cir. 2000) (obviousness requires explanation why POSITA would modify prior art)
- In re Gartside, 203 F.3d 1305 (Fed. Cir. 2000) (substantial evidence standard described)
- In re Sang-Su Lee, 277 F.3d 1338 (Fed. Cir. 2002) (agency must provide reasoned explanation; conclusory statements insufficient)
- In re Rouffet, 149 F.3d 1350 (Fed. Cir. 1998) (requirement that Board explain why POSITA would combine references)