By Peter Reap, J.D., LL.M.
During an inter partes review (“IPR”) requested by MotivePower of a brush-holder assembly patent owned by Cutsforth, the Patent Trial and Appeal Board erred in construing the claim terms “projection extending from” and “brush catch coupled to the beam,” the U.S. Court of Appeals for the Federal Circuit has decided (Cutsforth, Inc. v. MotivePower, Inc., April 6, 2016, Moore, K.). The court thus reversed the Board’s final written decision concluding that claims 14, 16–19, and 21–22 of Cutsforth’s U.S. Patent No. 7,141,906 were anticipated.
The ’906 patent is directed to a removable brush-holder assembly used in slip-ring assemblies or electrical devices such as generators and motors. A brush-holder assembly holds a brush in contact with a moving “conductive contact” surface so electrical current can pass into or out of the moving surface. The invention makes it easier to remove and replace brushes during operation, which allows for safer and more cost effective maintenance.
MotivePower Inc. petitioned for IPR of claims 1, 2, 4, 5, 10–14, 16–19, 21, and 22 of the ’906 patent on nine grounds of unpatentability. The Board construed the claim terms at issue, and based on those constructions, found that U.S. Patent No. 3,864,803 (“Ohmstedt”) and U.S. Patent No. 3,387,155 (“Krulls”) each anticipated independent claim 14 and its dependent claims, claims 16–19, 21–22 of the ’906 patent (the “claims-at-issue”). Cutsforth timely appealed.
In IPRs, the Board gives claims their broadest reasonable interpretation consistent with the specification, the court noted. Anticipation under 35 U.S.C. §102 is a question of fact, and the Board’s factual findings are reviewed for substantial evidence.
The “projection extending from” limitation. The claims at issue recite “a brush release extending from the mounting block and … said brush release is aprojection extending from the mounting block.” The Board construed the phrase “projection extending from the mounting block” to have its plain meaning; it did not provide a specific construction.
Cutsforth argued on appeal that the Board failed to explicitly address the parties’ key dispute over whether a projection must “jut out” from its surroundings. Cutsforth argued that the Board’s interpretation cannot be reconciled with the plain English meaning of “projection,” which requires a jutting out. It further argued that no reasonable interpretation of a “projection extending from the mounting block” could cover the “ramp 59” in Ohmstedt that the Board had found disclosed this limitation, as that ramp neither “extends” out above the surface of “brush box 13” nor “projects” from the face of that box.
The Board’s interpretation of “a projection extending from the mounting block” far exceeds the scope of its plain meaning and is not justified by the specification, the Federal Circuit determined. The Board’s interpretation, which encompasses a structure that recedes into the mounting block rather than jutting out from it, was unreasonable, the court held.
Cutsforth presented evidence that the plain meaning of “projection” in the context of a mechanical device requires a protrusion that juts out from its surroundings. This plain meaning is consistent with the language of the claims, the court concluded.
MotivePower argued that the Board was free to reject Cutsforth’s dictionary definition and expert testimony. However, even without the evidence put forth by Cutsforth, MotivePower presented no evidence to justify the Board’s interpretation. Unless the patentee acted as his own lexicographer, no reasonable interpretation of a “projection extending from the mounting block” could encompass something that protrudes into the mounting block. Under the construction adopted today, no reasonable fact finder could conclude that Ohmstedt’s ramps 59 are “projection[s] extending from” its brush box 13, the court said. The Board’s finding that Ohmstedt had anticipated the claims at issue was reversed.
The “brush catch coupled to the beam” limitation. The claims at issue recite “a brush catch coupled to the beam.” Cutsforth argued before the Board that this claim language prohibits the “brush catch” from being a sub-component of the “beam.” The Board disagreed, and held that a “brush catch” may be a sub-component of the “beam” and still be considered to be “coupled to the beam.”
Cutsforth argued that the Board’s interpretation renders the phrase “coupled to” meaningless. The appellate court agreed with Cutsforth that the claims at issue require a “brush catch” to be a physical structure that is separate from, and not a sub-component of, the claimed “beam.” It goes beyond the plain meaning of “coupled” to say that a sub-component (e.g., an engine in a car) is “coupled to” the component as a whole (e.g., the car).
Turning to the Board’s analysis of the Krulls reference, the Board found that Krulls discloses a “brush magazine 12” that is coupled to a portion of the “resilient member 56,” teaching the claimed “beam” and “brush catch,” respectively. Under the correct construction, substantial evidence did not support the Board’s findings, the court ruled. Since the “resilient member 56” is a sub-component of the “brush magazine 12” as a whole, it is not “coupled to” the “brush magazine 12.” In other words, the “resilient member 56” is a part of the “brush magazine 12”; it is not “coupled to” the “brush magazine 12.”
No substantial evidence supported the Board’s finding of anticipation by Krulls. Further, MotivePower preserved no argument that Krulls anticipates the claims-at-issue under Cutsforth’s construction. The court thus reversed the Board’s finding that Krulls anticipated the claims at issue.
The case is No. 2015-1314.
Attorneys: Robert P. Courtney (Fish & Richardson P.C.) for Cutsforth, Inc. Jason Alexander Engel (K&L Gates LLP) for MotivePower, Inc.
Companies: Cutsforth, Inc.; MotivePower, Inc.
MainStory: TopStory Patent FedCirNews
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