• Motivepower, Inc. v. Cutsforth, Inc.Some claims unpatentable
  PTAB · Sep 9, 2016 · IPR2013-00274 · APJ Trenton A Ward · IPR · Remand

  Claims 1–4, 6–7, and 9–24 are unpatentable as obvious over Bissett, Kartman, and Ohmstedt; claims 5 and 8 were not shown unpatentable.

  RulingsRemand decision

  • RemandFwd mixedOther

    “On January 22, 2016, the Federal Circuit issued a decision vacating and remanding the case to the Board. Cutsforth, Inc. v. MotivePower, Inc., 636 F. App’x 575, 578 (Fed. Cir. 2016) (unpublished) (nonprecedential) (entered herein as Paper 38). The Federal Circuit held “that the Board’s Final Written Decision does not provide enough explanation to support its finding of obviousness.” Id. “When the Board determines that modifications and combinations of the prior art render a claimed invention obvious, the Board must fully explain why a person of ordinary skill in the art would find such changes obvious.” Id. at 578–79. As a result, the Federal Circuit vacated the Board’s determinations that claims 1–24 of the ’018 patent were not patentable and remanded the case to the Board “for proceedings appropriate to the administrative process.” Id. at 579 (citing In re Sang-Su Lee, 277 F.3d 1338, 1346 (Fed. Cir. 2002)). On February 29, 2016, the Federal Circuit issued a formal mandate, returning the case to the Board. Paper 39.” slip op. at 3

  • Additional discoveryAdditional discovery, grantedGranted

    “Patent Owner’s request to submit additional briefing in light of the remand and to discuss the Petitioner’s opposition to such additional briefing. Paper 37, 2. During the conference, Patent Owner indicated that it was seeking additional briefing because the “record is without adequate briefing as to whether one of skill would have made the changes that are contemplated as they relate to a spring that was at issue and relating to claim 5.” Ex. 2064, Transcript of March 29, 2016 conference call, 6:15–18. Patent Owner stated that “a remand typically . . . deserves briefing on the point of the remand to make sure the record is full and there could be a fulsome review of the issues that are thought by the Appellate Court to . . . need[] further review.” Id. at 7:20–25. Patent Owner further argued that additional briefing was needed because the record was “devoid of arguments . . . from either side on this issue”; thus, Patent Owner requested “briefing without evidentiary submission by either party, a page limited briefing of simultaneous submission.” Id. at 8:9–11, 11:12–14.4 We granted Patent Owner’s request to file additional briefing. Paper 37, 3. More particularly, we authorized additional briefing limited to the issue raised by Patent Owner, namely, the design choice issue with respect to claim 5 of the ’018 patent. Id. In accordance with the Board’s Order, both Petitioner and Patent Owner filed their briefs on April 15, 2016. See Paper 40 (“Petitioner Remand Br.”) and Paper 41 (“PO Remand Br.”). Subsequently, Patent Owner requested authorization to file a Reply Brief to address arguments presented in Petitioner’s Remand Brief. The Board granted the request and authorized both parties to file a reply brief. Accordingly, the parties filed reply briefs on April 29, 2016. See Paper 42 (“PO Remand Reply”) and Paper 43 (“Pet. Remand Reply”).” slip op. at 3

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “the “specification’s requirement that the mounting block must be fixed to a location.” PO Resp. 8. In support of this argument, Patent Owner relies on Figure 15B of the ’018 patent as depicting that lower mounting block 16, i.e., the “mounting block,” is fixed in place to mount base 41 via bolts 43. Id. at 910. Patent Owner further points to descriptions of various embodiments of the attachment of the “mounting block” to a base or to a location. Id. We determine that neither Figure 15B nor the statements in the specification identified by Patent Owner require the non-moveable, or “fixed,” aspect. Figure 15B does not show that the attachment excludes any ability to adjust the block. Indeed, the bottom surface of the mount is not depicted, leaving us to speculate concerning the shape of mount holes 96, because a round hole would suggest there is no adjustability, while a slotted or elongated hole would suggest adjustability. But see Ex. 1001, Fig. 9 (not cited by Petitioner, but confirming that elongated holes 96 are contemplated). The lack of description and depiction of the shape of the holes compels us to reject Patent Owner’s characterization of Figure 15B as supporting a “fixed” or non-moveable attachment. Furthermore, as for the descriptions of how the mount is attached, the specification uses the word “secure” and describes various embodiments of the attachment, none of which requires non-movability of the mount after the brush holder component is installed. See Ex. 1001, 12:35–36 (bolts and washers “secure the lower mount block 16 to a mount base” (emphasis added)), 14:5658 (“mount holes 96 may include threading or other elements that allow for attachment to a mount base”), 16:2528 (“in other embodiments, a welded, keyed, pinned or other attachment scheme may be used to secure the lower mount block 16 to a mount base” (emphasis added)). In fact, the specification makes a point of not limiting the attachment of the mount to any particular method, fixed or not fixed. See id. at 12:37–41 (“or other attachment scheme may be used to secure the lower mount block 16 to a mount base near a moving conductive surface or in position to move relative to a conductive surface”). Nor does the language of the claim recite any method of attachment that limits the mounting block to something that cannot be adjusted, shifted, re-positioned, or otherwise moved, after attachment to the base.” slip op. at 9

  • Skill levelOther

    “The level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 16

  Patent outcomesUS 7,990,018 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,990,018

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.