Karen Kidd Feb. 16, 2016, 11:38am


WASHINGTON (Legal Newsline) – The Patent Trial and Appeal Board failed to explain why it ruled the way it did in a dispute, a federal judge has ruled.

The PTAB had not provided enough information in its inter partes review (IPR) of U.S. Patent No. 7,990,018, Matt Cutler - patent litigator and a principal at Harness, Dickey & Pierce in St. Louis - said. The patent concerns the devices and methods of use of an electrical brush holder assembly, owned by Cutsforth Products, Inc. in Cohasset, Minn.

The U.S. Court of Appeals for the Federal Circuit said the PTAB didn't explain its ruling well enough.

“This decision was really a rebuke of the PTAB for failing to issue a thorough, well-thought-out decision,” Cutler said.

“IPR counsel can try to help the Board by offering thorough and easy to understand arguments that the Board can adopt in whole or in part.”

The case stems from Cutsforth’s appeal of an inter partes review of its patent by the PTAB that claimed that portions of the patent were “unpatentable as obvious” under federal law. In a nonprecedential disposition handed down Jan. 22, Judge Raymond Clevenger vacated the decision because the PTAB did not adequately describe its reasoning for finding the claims obvious.

"(W)e hold that the Board’s Final Written Decision does not provide enough explanation to support its finding of obviousness," Clevenger wrote.

"Therefore, this Court cannot properly review whether there is substantial evidence to support the underlying factual findings of the Board’s determination. 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.”

PTAB simply had not provided enough information, Cutler said.

“The Board only made conclusory statements regarding the reasons why the claims were unpatentable, failing to adequately identify specific reasoning that would allow the Federal Circuit to meaningfully review that determination,” he said.

He added that the situation is not common.

“Many PTAB decisions are thorough and clearly identify the Board's reasons why claims are patentable or unpatentable," Cutler said.

The PTAB began issuing inter partes review in September 2012, Cutler said.

“Final Written Decisions, which come at the conclusion of these approximately 18-month-long proceedings, have been issued by the Board since early 2014,” he said.

The technology detailed in the Cutsforth patent involves brush holder assemblies that permit an electrical current to pass via the brush holder assemblies from a stationary device to a moving contact. That stationary device could be a brush constructed from a conductive material and the brush holder would facilitate continuous contact with the overall devices’ moving conductive surface. That would generate an electrical current. Set up this way, the brush could be easily removed while the overall device was operating.

The Federal Circuit's opinion seems to address only PTAB’s inter partes review of the patent.

The PTAB began the review of claims on the patent after MotivePower, Inc., petitioned for a inter partes review May 8, 2013. PTAB issued its Final Written Decision on Oct. 30, 2014, and Cutsforth then appealed to the Federal Circuit.

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