MotivePower, Inc.v.Cutsforth, Inc.

Patent Trial and Appeal Board

Oct 30, 2014

11378155 (P.T.A.B. Oct. 30, 2014)

Trials@uspto.gov Paper 34
Tel: 571-272-7822 Entered: October 30, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
MOTIVEPOWER, INC.,
Petitioner,
v.
CUTSFORTH, INC.,
Patent Owner.
_______________

Case IPR2013-00267
Patent 7,122,935 B2
_______________

Before TRENTON A. WARD, MIRIAM L. QUINN, and CARL M. DeFRANCO,
Administrative Patent Judges.

QUINN, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. BACKGROUND
MotivePower, Inc., Petitioner, filed a Petition to institute an inter partes
review of all the claims (1–7) (the “challenged claims”) of U.S. Patent No.
7,122,935 B2 (Ex. 1001, “the ’935 patent”) pursuant to 35 U.S.C. §§ 311–19.
Paper 2 (“Pet.”). The Board granted the Petition and instituted trial for all asserted
claims. Paper 10 (“Dec. on Inst.”). Although Petitioner proposed five grounds of
unpatentability, the panel instituted trial on the three following grounds: 1
(1) Claims 17 anticipated by Kartman;
(2) Claims 17 anticipated by Bissett; and
(3) Claims 17 obvious over Bissett and Kartman.
During trial, Cutsforth, Inc., Patent Owner, filed a Patent Owner Response
(“PO Resp.”) addressing the grounds involved in trial and relying on the
Declarations of Thomas A. Keim (Ex. 2019) and Mr. Dustin Cutsforth (Ex. 2050).
Paper 15. Petitioner filed a Reply to Patent Owner’s Response. Paper 24 (“Pet.
Reply”). Additionally, an oral hearing was held on August 6, 2014, and a
transcript of the hearing is included in the record. Paper 33 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This final written decision is
issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine that Petitioner has met its burden
to prove by a preponderance of the evidence that claims 1–7 of the ’935 patent are
unpatentable.

1 U.S. Patent No. 5,043,619 (Ex. 1003) (“Kartman”) and U.S. Patent No. 3,432,708
(Ex. 1004) (“Bissett”).
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A. The ’935 Patent (Exhibit 1001)
The ’935 patent generally relates to a brush holder assembly for use in
electrical devices and slip ring assemblies. Ex. 1001, col. 1, ll. 1517. In
particular, the patent describes that a brush is used in an electrical device to pass
electrical current from a stationary contact to a moving contact surface, and vice
versa. Id. at col. 1, ll. 2123. Because the brush typically is in contact with a
moving surface, the surface of the brush wears down, thus reducing the quality of
the electrical contact. Id. at col. 1, ll. 3352. The ’935 patent describes that when
the brush is so worn that it requires replacement, the moving contact surface may
need to be halted, which may be difficult or expensive. Id. at col. 1, l. 64 – col. 2,
l. 1. Alternatively, the ’935 patent describes that maintaining the relative motion
during replacement of the brush may be unsafe because of the risk of arcing and an
accidental short circuit in the electrical components. Id. at col. 2, ll. 15. The
patent, thus, describes that it would be an advantage to remove or replace a worn
brush without stopping the moving parts involved. Id. at col. 2, ll. 59.
One embodiment of the ’935 patent describes a brush holder assembly with
a mounting bracket in an “engaged” configuration, relative to a lower mount block.
Id. at col. 2, ll. 5558. For example, Figure 1 of the ’935 patent, reproduced
below, illustrates an “engaged” configuration where brush 12, surrounded by brush
box 10, is put in contact with a conducting surface because brush spring 24 pushes
the brush toward the bottom edge of box 10. Id. at Fig.1; col. 4, ll. 1432; col.
6, ll. 627.
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According to Figure 1 above, brush box 10 is affixed to beam 14, which is
affixed, via a hinged attachment, to lower mount block 16. Id. at col. 4, ll. 2229.
In the “engaged” position, a conductive path is formed from brush 12 through
brush conductor 26, terminal 28, and conductor strap 34 (shown in Figure 2,
reproduced infra). Id. at col. 6, ll. 6367.
The ’935 patent further describes a “disengaged” configuration, shown in
particular with respect to Figure 2, reproduced below.

As illustrated in Figure 2 above, a hinging action takes place at certain pivot
lines, such as pivot line “X,” about which beam 14 moves with respect to lower
mounting block 16. Id. at col. 6, ll. 3343. In the disengaged position, conductor
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strap 34 breaks contact with terminal 28, thus interrupting the current flow before
the brush breaks contact with the conductive surface. Id. at col. 10, ll. 3759.
B. Illustrative Claim
Challenged claims 1 and 6 of the ’935 patent are the only independent
claims at issue. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A brush holder assembly for holding a brush in contact with a
moving conductive surface, the brush holder assembly comprising:
a mounting block configured to extend from a stationary base, the
mounting block having an overall width; and
a removable component for selective coupling to the mounting
block, the removable component including a brush holder for
holding the brush, and a beam for selectively coupling the
removable component to the mounting block, the beam
defining a channel, wherein the mounting block extends into
the channel of the beam when the removable component is
selectively coupled to the mounting block, wherein the
removable component has an overall width greater than the
width of the mounting block and wherein the brush holder has
a width that is greater than the width of the mounting block.

II. ANALYSIS
C. Claim Interpretation
In an inter partes review, claim terms in an unexpired patent are interpreted
according to their broadest reasonable construction in light of the specification of
the patent in which they appear. 37 C.F.R. § 42.100(b); Office Patent Trial
Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Claim terms also are
given their ordinary and customary meaning as would be understood by one of
ordinary skill in the art in the context of the entire disclosure. In re Translogic
Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Also, we must be careful not to
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read a particular embodiment appearing in the written description into the claim if
the claim language is broader than the embodiment. See In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993) (“limitations are not to be read into the claims
from the specification”).
In the Decision on Institution, we interpreted various claim terms of the
’935patent as follows:
Table 1
Term Interpretation
“mounting block” a base for affixing to another
structure
“selectively coupled”/
“selective[ly] coupling”

coupling in a selective manner
“comparative thicknesses” an assessment based on the
comparison of the thicknesses of
a structure, relative to the
thickness of another structure
“higher brush density” allowing for brushes to be closer
in proximity with each other

Dec. on Inst. 7–12. Neither party challenges the construction of the terms
“comparative thicknesses” and “higher brush density.” Pet. Reply 2 (omitting
these terms from discussion of claim construction); PO Resp. 817 (omitting these
terms from discussion of claim construction). Consequently, we adopt the
constructions for those terms as stated in Table 1 in accordance with the analysis
stated in our Decision on Institution. Dec. on Inst. 1112.
In the Decision on Institution, we did not construe the term “beam,” for
which Patent Owner argues that “its interpretation has little practical relevance to
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this proceeding.” PO Resp. 13. Nevertheless, Patent Owner, urging uniform
construction of terms across the pending inter partes review proceedings involving
related patents, incorporates by reference its arguments made in the briefs of those
other proceedings. Id. Based on the prohibition on incorporation by reference (47
C.F.R. § 42.6(a)(3)) and the admitted little relevance the construction of “beam”
has in the present inter partes review, we do not construe expressly that term here.
Regarding the terms “mounting block” and “selective coupling,” Patent
Owner argues that the constructions should be modified. Each of those terms is
analyzed in turn.
1. “mounting block”
Patent Owner argues that the construction for “mounting block” must reflect
the “specification’s requirement that the mounting block must be fixed to a
location.” PO Resp. 8. The sought-after construction is relevant to Patent Owner’s
arguments regarding how the prior art does not teach a “mounting block” that is
“fixed,” i.e. non-moveable. See id. at 19 (arguing that Kartman’s clamp bar 46 is
inherently moveable, and, therefore it is not a “fixed block”).
In support of this argument, Patent Owner relies on Figure 15B of the
’935 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. Patent Owner further
points to descriptions of various embodiments of the attachment of the “mounting
block” to a base or to a location. Id. at 1011. 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
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elongated hole would suggest adjustability. But see Ex. 1001, Fig. 9 (not cited by
Petitioner, and 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, col. 15, ll. 6467 (bolts and washers
“secure the lower mount block 16 to a mount base” (emphasis added)); col. 14, ll.
3435 (“mount holes 96 may include threading or other elements that allow for
attachment to a mount base”); col. 16, ll. 15 (“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 col. 12, ll. 1821 (“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.
Patent Owner further proposes that the written description teaches that all
embodiments include a “fixed” mounting block, and, therefore, the “mounting
block” should be so construed. PO Resp. 1011. The specification states: “with
the lower mount block 16 being the only portion that must be ‘fixed’ to a location,
attachment steps are simplified . . . .” Ex. 1001, col. 14, ll. 5661. We are not
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persuaded by Patent Owner’s argument. Although the specification uses the word
“fixed” with respect to lower mount block 16, that portion of the specification is
focused on describing “the present embodiment” of a lower mount block shown in
Figure 14, which illustrates a lower mount block “for use in several embodiments,”
not all embodiments, as Patent Owner argues. Ex. 1001, col. 14, ll. 1718, 5661
(emphasis added). Moreover, that portion of the specification does not describe
the invention as a fixed lower mount block. Indeed, Patent Owner’s
characterization of the “fixed” lower mount block may stretch the specification too
far, as it may be inferred by the use of the word “fixed,” shrouded in quotation
marks, that its use in that passage is not to be taken literally.2
In our Decision on Institution, we noted that the specification does not
define the term “mounting block,” and that nothing in the claim language indicates
that the term is used other than in accordance with its plain and ordinary meaning.
Dec. on Inst. 8. We further noted that claims 1 and 6 recite that the “mounting
block [is] configured to extend from a stationary base.” Id. Guided by evidence of
the plain and ordinary meaning consistent with the specification, we determined
that the word “block” means “a base, platform or supporting frame.”3 Id. at 89.
Patent Owner, however, objects to the word “base” as defining the “mounting
block” because the claims recite another base, the “stationary base.” PO Resp.
1213. Accordingly, to avoid confusion, Patent Owner proffers that the
construction of “mounting block” should refer to a block, not a base. Id.

2 See e.g., Chicago Manual of Style, 15th edition, Section 7.58 (“When a word or
term is not used functionally but is referred to as the word or term itself, it is either
italicized or enclosed in quotation marks.”).
3 Block Definition (4), WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY,
UNABRIDGED (1993) (Ex. 3001).
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Petitioner argues that the proposal to define “block” to mean a block does
not clarify any issues and that Patent Owner has not argued that the prior art does
not disclose a “block.” Pet. Reply 4. Consequently, the clarification is
unnecessary. We agree with Petitioner. Although the claims recite a “base” and a
“block” distinctly, the claims, however, may recite these two terms in a
synonymous ordinary meaning, to indicate that the two distinct structures have
similar functions, as bases.
Therefore, we construe the term “mounting block” according to the ordinary
meaning of the term to mean “a base for affixing to another structure.”
2. “selective coupling”
The claims require “a removable component for selective coupling to the
mounting block.” Ex. 1001, col. 17, ll. 4142; col. 18, ll. 3435. Patent Owner
seeks to construe the word “selective.” PO Resp. 1314. In support for its
position, Patent Owner provides two dictionary definitions of the word “selective”
to argue that there is a “specific, predetermined way in which the brush holder
component is coupled to the mounting block.” Id. at 14 (citing the New Oxford
American Dictionary and American Heritage Dictionary, Exs. 201718). The
selective manner of the recited “selectively coupling,” Patent Owner emphasizes,
is dictated by the precision of the brush holder’s position when it is engaged, “with
no need for adjustment or other manipulation by the installer.” Id. at 16.
Petitioner characterizes Patent Owner’s claim construction position as an attempt
to include, as a claim limitation, the unrecited over-center locking embodiment.
Pet. Reply 56.
The claims recite that when the removable component is selectively coupled
to the mounting block, the mounting block extends into the channel of the beam.
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We note that the claims do not state that the selective coupling results in a full
extension of the mounting block into the channel. That is, the claims, broadly, but
reasonably, encompass coupling stages other than the fully engaged position of the
removable component. Therefore, we do not agree with Patent Owner’s assertion
that the meaning of the word “selective,” when viewed in context of the
surrounding claim language and the specification, requires a predetermined
position of the brush holder where there is no need for adjustment or other
manipulation.
Guided by the specification, we conclude that the word “selective” refers to
the selection between coupling states, e.g., a selection between engaged or
disengaged configurations. Several embodiments describe coupling stages
between the beam and the mounting block. The engaged configuration is
described in one embodiment in which beam 14 is fully extended onto lower
mount block 16 (an embodiment of the “mounting block”). Ex. 1001, col. 4, ll.
1527. An intermediate coupling stage, where at least a portion of beam 14 is
coupled to lower mount block 16, between an “engaged” position and a
“disengaged” position is also described. See id. at col. 13, ll. 3660 (describing
disengaged configuration and the intermediate stage from the disengaged
configuration); Figs. 13A13C (illustrating disengaged, intermediate, and engaged
stages and the relative interactions between beam 132 and lower mount 130);
Fig. 2 (depicting a disengaged position where lower mount 16 is coupled to the
beam 14); col. 6, ll. 2840 (describing hinging action in the transition from
engaged to disengaged configurations). All of these descriptions convey that the
beam of the removable component interacts with the mounting block in a range of
positions, between engaged and disengaged, and that, at a minimum, the selection
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of the coupling extends between the two states of engaged and disengaged.
Based on the foregoing, we construe the “selectively coupling” terms
according to the ordinary meaning to mean “coupling by selecting a coupling
state.”
D. Patentability of Claims
To prevail in its challenges to the patentability of claims, the Petitioner must
establish facts supporting its challenges by a preponderance of the evidence. 35
U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is anticipated, and, thus,
unpatentable, if a single prior art reference discloses each and every element of the
claimed invention. See Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377
(Fed. Cir. 2003).
We analyze the instituted grounds of unpatentability in accordance with the
above-stated principles.
E. Anticipation by Kartman
With respect to the alleged ground of unpatentability based on anticipation
by Kartman, we have reviewed the Petition, the Patent Owner Response, and
Petitioner’s Reply, as well as the relevant evidence discussed in each of those
papers. We are persuaded, by a preponderance of the evidence, that claims 17 are
anticipated by Kartman under 35 U.S.C. § 102(b).
1. Overview of Kartman (Ex. 1003)
Kartman discloses a brush holder assembly for use in a dynamoelectric
machine, such as a motor or generator. Ex. 1003, Abstract, col. 3, ll. 3334. The
assembly is mounted on a frame of the machine such that the brushes engage with
the machine’s rotatable commutator. Id. at col. 3, ll. 3536. The components of
the brush holder assembly are concentrated in a central location and in closely
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spaced relation to each other to allow for fast and safe service, such as adjustment
or removal of the brush or brush holder. Id. at col. 3, ll. 3741; col. 4, ll. 2531;
col. 5, ll. 4651. Furthermore, the brush holders are attached, side-by-side, to the
assembly, each by a detachable connection that permits their individual
replacement. Id. at Abstract.
One embodiment of the Kartman brush holder assembly 1 mounted on
frame 2 of a machine is depicted in Figure 1, reproduced below.

As shown in Figure 1, brush holder assembly 1 comprises casting 8 with
mounting surface 14, “to which a plurality of individual brush holders are
detachably connected.” Id. at col. 3, ll. 4252. Each individual brush holder 31 is
connected—detachably, mechanically, and electrically—to mounting surface 14.
Id. at col. 3, ll. 6264. Brush holder 31 slideably receives brush 3, which is held in
the operative position against the curved surface of commutator 4 by constant
brush force applying means 54 that includes force spring 64. Id. at col. 4, ll.
3236, 4548.
An exploded view of brush holder assembly 1, illustrating details of brush
IPR201
Patent 7

holder 3
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3-00267
,122,935 B
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ush
IPR201
Patent 7

C
disclose
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3-00267
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15
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1 and 6, P
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IPR201
Patent 7

and (3)
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thicknes
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arguing
3-00267
,122,935 B
the green l
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16
th of brush
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actuality,
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,
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component for selective coupling.” PO Resp. 1823. Both of these arguments,
however, rely on Patent Owner’s proffered construction of these terms, which we
did not adopt. Id.
Particularly, with regard to the “mounting block,” Patent Owner argues that
because Kartman employs a clamping mechanism, clamp bar 46 is inherently
moveable. PO Resp. 1819. But we have determined that “mounting block,”
based on the plain and the ordinary meaning of the term, does not mean that the
block must be fixed or non-moveable. See Section II.C.1, supra. Accordingly, this
argument is not persuasive.
Instead, we find that Kartman discloses a “mounting block” because clamp
bar 46 is a base for affixing brush holder 31 to mounting surface 14. See Ex. 1003,
col. 3, l. 62–col. 4, l. 2; Fig. 3. We find that clamp bar 46 is designed to fit in a
certain position along mounting surface 14, thereby disclosing that the “mounting
block [is] configured to extend from a stationary base.” See Ex. 1003, Fig. 3
(illustrating Kartman’s clamp bar 42 disposed with cap screws 47 that match the
orifices 44 on the mounting surface).
With regard to the “removable component for selective coupling,” Patent
Owner argues that because Kartman utilizes a clamp there is no coupling at “only a
single predetermined position.” PO Resp. 22. Patent Owner admits that the
coupling position in Kartman “is selected by the user, and can vary over the course
of repeated removal and re-installation operations.” Id. That coupling, however,
Patent Owner proffers, requires a worker to use two hands. Id. We are not
persuaded by these arguments for they rely on an interpretation of “selective
coupling” that does not comport with the plain and ordinary meaning as we have
determined above. See Section II.C.2, supra. As discussed above, the claim term
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requires that there be a selection of a coupling state. We determined above that the
claim term does not require that there be a predetermined position for a selected
coupling state to be covered by the plain and ordinary meaning of the claim
language, “selective coupling.”
We find that Kartman discloses that clamp bar 46 allows the brush holder to
be secure in place when the clamped position is selected by acting on cap screws
47. Ex. 1003, col. 4, ll. 1926. And we further find that Kartman discloses
selecting the unclamped position by unscrewing slightly cap screws 47, which
releases clamp bar 46 from the compressive force, thus permitting the adjustment
or removal of the brush box. Id. at col. 4, ll. 2631. Therefore, Kartman discloses
two coupling states, clamped and unclamped, both of which are selectable by the
mere turn of a cap screw. Accordingly, we find that Kartman discloses “a
removable component for selective coupling to the mounting block,” as recited in
independent claims 1 and 6.
As for the remaining elements recited in claims 1 and 6, which were not
disputed by Patent Owner, we also find that Kartman discloses those elements as
shown by the comparisons between the Kartman disclosures presented in the
Petition and the claim limitations. Pet. 1014, 1721.
3. Comparison of Kartman and Dependent claims 25 and 7
We are persuaded by a preponderance of the evidence that Kartman
discloses the limitations recited in dependent claims 2–5 and 7. Pet. 1417, 21-22.
In particular, as to the limitations in claims 2 and 3 regarding relative thicknesses
between claim elements, Petitioner shows that Kartman discloses the recited
thicknesses as depicted in annotated Figure 2 above. Id. at 1415. According to
Petitioner, Kartman further shows that the outer side surfaces of detachable means
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42 (actually pointing to quick-release clamp bar 46) and the interior surfaces (and
inner side surfaces) of channel 48 are arranged as recited in claims 4 and 5. Id. at
1615. Finally, Petitioner argues, as to claim 7, that the “comparative thicknesses .
. . allow[ing] for higher brush density” limitation reads on the arrangement of
brush holder 38, i.e., the side-by-side placement of the brushes. Id. at 21.
According to Petitioner, such side-by-side placement allows for extremely close
brush placement. Id. This evidence is consistent with our construction of the
terms “comparative thicknesses” and “higher brush density.” Based on the
foregoing, we are persuaded that Petitioner has established, by a preponderance of
the evidence, that claims 2–5 and 7 are anticipated by Kartman.
III. CONCLUSION
Petitioner has demonstrated, by a preponderance of the evidence, that claims
17 of the ’935 patent are anticipated by Kartman. Because claims 17 are
unpatentable as anticipated by Kartman, we need not decide whether the claims are
unpatentable also under the additional grounds for which we had instituted the
inter partes review.
This is a final written decision of the Board under 35 U.S.C. § 318(a).
Parties to the proceeding seeking judicial review of this decision must comply with
the notice and service requirements of 37 C.F.R. § 90.2.

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IV. ORDER
Accordingly, it is hereby:
ORDERED that, as set forth in Section III above, claims 17 of the
’935 patent have been shown to be unpatentable.
FURTHER ORDERED that the parties to the proceeding seeking
judicial review of this Final Written Decision must comply with the notice and
service requirements of 37 C.F.R. § 90.2.

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21

PETITIONER:
Jason A. Engel (Lead Counsel)
Alan L. Barry (Backup Counsel)
Benjamin Weed (Backup Counsel)
K&L GATES LLP
Jason.engel@klgates.com
alan.barry@klgates.com
benjamin.weed.PTAB@klgates.com
PATENT OWNER:
W. Karl Renner (Lead Counsel)
Dorothy P. Whelan (Backup Counsel)
Mathias Samuel (Backup Counsel)
FISH & RICHARDSON P.C.
axf@fr.com
Whelan@fr.com
PTABInbound@fr.com
samuel@fr.com