NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

CUTSFORTH, INC.,

Appellant

v.

MOTIVEPOWER, INC.,

Appellee

______________________ 

2015-1316

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2013-

00274.

______________________ 

Decided: January 22, 2016 

______________________ 

MATHIAS WETZSTEIN SAMUEL, Fish & Richardson P.C., 

Minneapolis, MN, argued for appellant. Also represented 

by ROBERT P. COURTNEY, CONRAD GOSEN. 

JASON ALEXANDER ENGEL, K&L Gates LLP, Chicago, 

IL, argued for appellee. Also represented by BENJAMIN 

EDWARD WEED, ALAN L. BARRY, ROBERT J. BARZ. 

______________________ 
2 CUTSFORTH, INC. v. MOTIVEPOWER, INC. 

Before PROST, Chief Judge, CLEVENGER, and MOORE,

Circuit Judges.

CLEVENGER, Circuit Judge. 

This appeal arises from the inter partes review (“IPR”) 

of U.S. Patent No. 7,990,018 (“the ’018 patent”) owned by 

Cutsforth, Inc. (“Cutsforth”). The United States Patent 

and Trademark Office, Patent Trial and Appeal Board

(“the Board”) held that claims 1–24 of the ’018 patent are 

unpatentable as obvious under 35 U.S.C. § 103. MotivePower, Inc. v. Cutsforth, Inc., IPR2013-00274, Paper No. 

31 (PTAB Oct. 30, 2014). Cutsforth appeals the Board’s 

decision. Because the Board did not adequately describe 

its reasoning for finding the claims obvious, we vacate 

and remand for further proceedings. 

I 

The ’018 patent is directed to a removable brush holder that can be used to pass electrical current in electrical 

devices or slip ring assemblies, such as electric generators 

and motors. The patent generally describes a brush holder 

assembly that allows a current to pass from a stationary 

device (such as a brush) to a moving contact, or vice versa. 

The brush is made of a conductive material and is held in 

place by a brush holder to remain in continuous contact 

with a moving conductive surface to generate an electrical 

current. The invention makes it easier to remove and 

replace brushes during operation as the brushes wear 

down, which allows for safer and more cost effective 

maintenance. 

Independent claim 1 is representative of the claimed 

invention and reads as follows: 

1. A brush holder assembly for holding a brush 

having a conductive element, the brush holder 

assembly comprising:
CUTSFORTH, INC. v. MOTIVEPOWER, INC. 3

an elongated mounting block having a major axis, an upper end and a lower end, 

and a first and second outer side surfaces substantially parallel to said major axis, and including a stationary 

brush release proximate said lower end; 

and 

a brush holder component adapted for removably mounting to the mounting 

block, the brush holder component 

comprising a brush box and a channel 

for receiving a portion of the mounting 

block therein, the channel including 

first and second inner side surfaces;

the brush holder component further comprising a brush catch having a first position and a second position, the brush 

catch preventing sliding movement of a 

brush within the brush box in the first 

position, and the brush catch permitting sliding movement of a brush within 

the brush box in the second position; 

wherein the stationary brush release is 

positioned on the mounting block so 

that when the brush holder component 

is mounted on the mounting block, the 

stationary brush release engages with 

the brush catch, moving the brush catch 

into the second position.

U.S. Patent No. 7,990,018 col. 17 l. 64–col. 18 l. 20 (filed 

Sept. 21, 2010). 

On May 8, 2013, MotivePower, Inc. (“MotivePower”) 

petitioned for IPR, challenging all claims of the ’018 
4 CUTSFORTH, INC. v. MOTIVEPOWER, INC. 

patent.1 The Board instituted review of all claims (1–24) 

based on the ground that all asserted claims would have 

been obvious in light of U.S. Patent No. 3,432,708 (“Bissett”), U.S. Patent No. 5,043,619 (“Kartman”), and U.S. 

Patent No. 3,864,803 (“Ohmstedt”). The Board issued its 

Final Written Decision on October 30, 2014. The Board 

first construed “mounting block” to mean “a base for 

affixing to another structure,” and “removably mounting” 

to mean “mounting in a manner that is not permanent.”

In light of these constructions, the Board determined that 

all claims were obvious over Bissett, Kartman, and 

Ohmstedt, which also disclose various brush holder 

assemblies. 

Cutsforth timely appealed the Board’s decision to this 

Court. We have jurisdiction pursuant to 28 U.S.C. 

§ 1295(a)(4)(A). In addition to its challenge to the Board’s 

obviousness conclusions, Cutsforth also challenges the 

Board’s interpretation of the “mounting block” limitation. 

As noted, the Board concluded that “mounting block” 

means “a base for affixing to another structure,” and need 

not be fixed to another structure, as Cutsforth argues. We 

see no error in the Board’s interpretation of “mounting 

block,” and thus reject Cutsforth’s argument, as we also 

did in Appeal No. 2015-1315, Cutsforth, Inc. v. MotivePower, Inc., No. 2015-1315, 2015 WL 9207283 (Fed. Cir. 

Dec. 17, 2015). 

1 MotivePower petitioned for IPR of five related patents, including the ’018 patent. The Board instituted all 

five IPRs and every challenged claim was either cancelled 

by Cutsforth or found to be unpatentable by the Board. 

Cutsforth appealed three of the five decisions, including 

this one and Appeal No. 2015-1314 and Appeal No. 2015-

1315, which were consolidated for oral argument before 

this Court.

 
CUTSFORTH, INC. v. MOTIVEPOWER, INC. 5

II

Under 35 U.S.C. § 103, an invention is unpatentable if 

the differences between the invention and the prior art 

are such that a person of ordinary skill in the art would 

have found the claimed invention obvious. The Board’s

ultimate determination of obviousness is a legal question, 

which we review de novo. In re Kotzab, 217 F.3d 1365, 

1369 (Fed. Cir. 2000). However, we review the underlying 

factual findings for substantial evidence. Id. Substantial 

evidence is “such relevant evidence as a reasonable mind 

might accept as adequate to support a conclusion.” In re 

Gartside, 203 F.3d 1305, 1312 (Fed. Cir. 2000) (citation 

omitted). 

The issue in this case is whether the Board correctly 

determined that the ’018 patent is obvious over Bissett, 

Ohmstedt, and Kartman. While we review this question 

de novo, we first consider the findings made by the Board

to reach its conclusion. 

First, regarding independent claim 1, the Board’s 

analysis begins by summarizing MotivePower’s arguments for why claim 1 is obvious over Bissett, Ohmstedt, 

and Kartman. The Board briefly describes MotivePower’s 

belief that Bissett discloses several limitations of claim 1 

and that it would have been obvious to adapt the brush 

holder of Bissett and combine it with key elements of 

Ohmstedt to produce the remaining limitations from 

claim 1. The Board also includes MotivePower’s argument 

that it would be obvious to adapt the mounting block of 

Bissett (i.e., dovetails 18) with the mounting block of 

Kartman (i.e., detachable connecting means 42). This 

adaptation is referred to as the Bissett/Kartman mounting block. However, the Board stated no independent

reasons for why claim 1 is obvious nor did it formally 

adopt MotivePower’s arguments as its own reasoning. 

Second, the Board found that dependent claim 5 is obvious in light of the prior art. Claim 5 reads “The brush 
6 CUTSFORTH, INC. v. MOTIVEPOWER, INC. 

holder assembly of claim 1, wherein the mounting block 

includes a spring that applies spring force against at least 

a portion of the brush holder component when the brush 

holder component is mounted to the mounting block.” The 

Board recites MotivePower’s argument that the adapted 

Bissett/Kartman mounting block does include a spring 

(i.e., spring lead receptacle 32 of Bissett). The Board then 

determined “that positioning spring lead receptacle 32 on 

the Bissett/Kartman mounting block is a matter of design 

choice because its placement there would not alter the 

operation of the modified mounting block.” 

Third, the Board found that dependent claim 8 is obvious. Claim 8 reads “The brush holder assembly of claim 

1, wherein the mounting block includes a portion that is 

moveable relative to the remainder of the mounting block 

and operable to engage with the removable brush holder 

component to secure the removable brush holder component to the mounting block.” The Board again recited 

MotivePower’s argument that one of ordinary skill in the 

art would know to move crosspiece 40 of Bissett to the 

mounting block, thereby incorporating a moveable portion 

on the mounting block. However, the Board gave no other 

reason for why this modification is obvious. 

As we held in In re Sang-Su Lee, 277 F.3d 1338 (Fed. 

Cir. 2002), the Board must articulate its reasoning for 

making its decision. The Board must develop and explain 

the basis for its findings. This enables the reviewing court 

to conduct meaningful review of the proceedings. Broad, 

conclusory statements are not enough to satisfy the 

Board’s obligation to provide reasoned explanation for its 

decision. In re Sang-Su Lee, 277 F.3d at 1343–45. In a 

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. See In re 

Kotzab, 217 F.3d at 1371; In re Rouffet, 149 F.3d 1350, 

1359 (Fed. Cir. 1998). 
CUTSFORTH, INC. v. MOTIVEPOWER, INC. 7

In this case, the Board made broad, conclusory statements in its analysis to determine that the claims of the

’018 patent are obvious. The majority of the Board’s Final 

Written Decision is spent summarizing the parties’ arguments and offers only conclusory analysis of its own. 

While the decision does specify when it is rejecting a 

party’s argument, the Board does not explain why it 

accepts the remaining arguments as its own analysis. 

This leaves little explanation for why the Board found the 

claimed invention obvious. 

The first basis for the Board’s obviousness conclusion

is that it would have been obvious to modify elements 

from the Bissett and Kartman references to get the Bissett/Kartman mounting block. The Board’s decision 

appears to assume this combination is obvious. It offers 

no explanation for why a person of ordinary skill in the 

art would adjust Bissett and Kartman to create the 

claimed mounting block of the ’018 patent. The Board 

only states that MotivePower argued it was obvious to do 

so. Merely reciting MotivePower’s argument does not 

satisfy the Board’s responsibility to explain its own reasoning. The decision must explain why a person of ordinary skill in the art would find it obvious. The Board 

gives no such explanation. 

For claim 5, which requires that the mounting block 

include a spring, the Board explains that the placement of 

the spring on the mounting block is simply a design 

choice. In Bissett, lead receptacle 32 is located on a stationary brush frame, not the mounting block. Yet, the 

Board determined that lead receptacle 32 could be positioned on the modified Bissett/Kartman mounting block 

and the elements would function as disclosed in the ’018 

patent. Thus, the Board found that the location of the 

spring is a design choice and is obvious. This statement 

alone is not enough to explain why the Board found claim 

5 obvious. Merely stating that a particular placement of 

an element is a design choice does not make it obvious. 
8 CUTSFORTH, INC. v. MOTIVEPOWER, INC. 

The Board must offer a reason for why a person of ordinary skill in the art would have made the specific design 

choice to locate the spring on the mounting block. Here, it 

does not. 

For claim 8, the Board’s explanation is nominal. 

Claim 8 requires that the mounting block include a movable portion. The Board recited MotivePower’s argument 

that a person of ordinary skill in the art could modify and 

relocate an element of Bissett to the mounting block and 

this claim would be satisfied. There is no further explanation. Again, conclusory statements do not give adequate 

justification for why a claim is obvious. The Board does

not give any reasons for how a person of ordinary skill 

would find this modification obvious. 

III

For the foregoing reasons, we hold that the Board’s 

Final Written Decision does not provide enough explanation to support its finding of obviousness. 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. We vacate the Board’s decision and 

remand “for proceedings appropriate to the administrative process.” In re Sang-Su Lee, 277 F.3d at 1346.

VACATED AND REMANDED