Digest of CUTSFORTH, INC. V. MOTIVEPOWER, INC., No. 2015-1316 (Fed. Cir. Jan. 22, 2016). On appeal from PTAB in No. IPR2013-00274. Before Prost, Clevenger, and Moore.

Procedural Posture: Patentee appealed the PTAB’s final written decision that claims are unpatentable as obvious under 35 U.S.C. § 103. CAFC vacated and remanded.

  • Claim Construction: On petition for inter partes review of a patent directed to a removable brush holder, the PTAB construed the term “mounting block” to mean “a base for affixing to another structure.” The CAFC found no error in the Board’s interpretation and rejected Appellant’s argument that the mounting block must be fixed to another structure, following its earlier decision in Cutsforth, Inc. v. MotivePower, Inc., No. 2015-1315, 2015 WL 9207283 (Fed. Cir. Dec. 17, 2015).
  • Obviousness: The CAFC reviewed the Board’s findings as the initial step of its de novo review of whether the Board correctly determined that the challenged patent was obvious. Regarding independent claim 1, the Board’s decision summarized Petitioner’s arguments and concluded that claim 1 is obvious, without formally adopting such arguments as its own reasoning, or stating any independent reasons for its conclusion. The Board also found dependent claim 5 obvious in view of the prior art, after reciting Petitioner’s argument and holding the claimed mounting block to be merely a design choice. The Board further concluded that dependent claim 8 was obvious, again reciting Petitioner’s argument that one of ordinary skill in the art would have known to make the claimed modification without providing any additional reasoning for its conclusion. The CAFC ruled that the Board’s decision lacked reasoned explanation, leaving it unable to conduct a meaningful review. The CAFC emphasized that the Board must explain why a person of ordinary skill in the art would modify the prior art references to arrive at the claimed invention. If concluding that a claimed modification is an obvious design choice, the Board must offer a reason for why a person of ordinary skill would have made the specific design choice. The CAFC held that the Board’s final written decision did not provide enough explanation to support its finding of obviousness, and precluded the CAFC from properly reviewing whether substantial evidence exists to support the factual findings underlying the Board’s determination.