Takeaway: Once the Board finds all claims unpatentable based on one instituted ground, the Board may choose not to decide unpatentability based on other instituted grounds.

In its Final Written Decision, the Board found that Petitioner had, by a preponderance of the evidence, proven that all of the challenged claims (1-7) of the ’935 patent are unpatentable.  The Board had instituted inter partes review of each of challenged claims 1-7 of the ’935 patent for three of the proposed five grounds of unpatentability.  The asserted grounds included anticipation by Kartman, anticipation by Bissett, and obviousness over Bissett and Kartman, with each grounds applying all of claims 1-7.  The ’935 patent relates to a brush holder assembly for use in electrical devices and slip ring assemblies.

The Board began its analysis with claim construction.  The Board had construed certain claim terms in its Decision on Institution.  For the terms not contested by the parties, the Board maintained its construction from its Decision on Institution.

Patent Owner urged an interpretation of the term “beam” consistent with its arguments regarding the same term in other pending inter partes review proceedings.  However, Patent Owner urged this interpretation by incorporating by reference its arguments made in the briefs of those other proceedings.  The Board reiterated its prohibition on incorporating by reference, and found no reason to construe the term “beam” based on the little argument made in this proceeding and its little relevance to the issues in this proceeding.

Patent Owner also argued for a different construction for “mounting block” than how the Board construed it in the Decision to Institute.  Specifically, Patent Owner urged that the term must reflect the specification’s requirement that the mounting block must be fixed to a location.  This construction is relevant to Patent Owner’s argument that Kartman discloses a clamp bar that is inherently moveable.  However, the Board found that there was no disclosure in the specification thatrequired the mounting block to be fixed to a location.  Instead, the Board found that the specification and drawings did not provide any particular disclosure on whether the mounting block could be moveable or not.  Therefore, the Board continued to give “mounting block” its ordinary meaning of “a base for affixing to another structure.”

Patent Owner also argued for a different construction for “selective coupling” than how the Board construed it in the Decision to Institute.  Specifically, Patent Owner urged, based on certain dictionary definitions and the context of the surrounding claim language, that “selectively coupling” requires a predetermined position of the brush holder where there is no need for adjustment or other manipulation.  The Board did not agree.  Specifically, the Board, guided by the specification, concluded that the word “selective” refers to the selection between engaged or disengaged coupling states.  Accordingly, the Board construed “selectively coupling” to mean “coupling by selecting a coupling state.”

The Board then turned to the first grounds of unpatentability (i.e. anticipation of claims 1-7 by Kartman).  The Board found that all of the elements of claims 1-7 were disclosed in Kartman.  Patent Owner argued that Kartman failed to disclose a “mounting block” or a “removable component for selective coupling,” when those terms were given the interpretation urged by Patent Owner, which the Board refused to give for the reasons discussed above.  Thus, Patent Owner’s arguments were not persuasive.

The Board then determined that because it has found that claims 1-7 were unpatentable as anticipated by Kartman, there was no need to determine whether the claims were unpatentable under the additional grounds that had been instituted.

MotivePower, Inc. v. Cutsforth, Inc., IPR2013-00267
Paper 34: Final Written Decision 
Dated: October 30, 2014 
Patent 7,122,935 B2 
Before: Trenton A. Ward, Miriam L. Quinn, and Carl M. DeFranco
Written By: Quinn