Cutsforth, Inc. v. MotivePower, Inc.


Docket Nos. 2015-1316 (IPR2013-00274)

PROST, CLEVENGER, MOORE
January 22, 2016

Non-precedential

Brief Summary: FC panel held “that the Board’s Final Written Decision does not provide enough explanation to support its finding of obviousness.”

Summary: Cutsforth appealed PTAB IPR decision finding the claims of US 7,990,018 directed to removable brush holders for electrical devices obvious in view of three prior art patents (“Bissett”, “Kartman”, and “Ohmstedt”). Cutsforth challenged the Board’s interpretation of “mounting block” and its conclusion of obviousness. The “mounting block” argument was rejected “as [the court] also did in Appeal No. 2015-1315”. The FC panel opinion explained that in its decision regarding independent claim 1 that “[t]he Board briefly describes MotivePower’s belief[s]” regarding the prior art and the combination thereof but “stated no independent reasons for why claim 1 is obvious nor did it formally adopt MotivePower’s arguments as its own reasoning.” It also found that the Board “recites MotivePower’s argument” regarding claim 5 and, for claim 8, “recited MotivePower’s argument” but “gave no other reason for why this modification is obvious.” The FC panel explained that “the Board must articulate its reasoning for making its decision” and “develop and explain the basis for its findings” so that it can “conduct meaningful review of the proceedings” (In re Sang-Su Lee, FC 2002). “Broad, conclusory statements are not enough to satisfy” this obligation. “In the case of obviousness, the Board must explain why a person of ordinary skill in the art would modify the prior art references to create the claimed invention” (In re Kotzab, FC 1998; In re Rouffet, FC 1998). Here, the FC panel wrote, the “majority of the Board’s Final Written Decision is spent summarizing the parties’ arguments and offers only conclusory analysis of its own.” And “[m]erely stating that a particular placement of an element is a design choice does not make it obvious”, “[t]he Board must offer a reason why a person of ordinary skill in the art would have made the specific design choice to locate the spring on the mounting block” and did not. Thus, the FC panel held “that the Board’s Final Written Decision does not provide enough explanation to support its finding of obviousness.”

This entry was posted in Inter Parties Review (IPR), IPR, Obviousness. Bookmark the permalink.

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s