Decision is first-ever full reversal of an IPR decision of non-patentability; clears way for infringement lawsuit to proceed against MotivePower, Inc.

Boston, MA, April 8, 2016 – Fish & Richardson’s appellate and post-grant teams won a major victory for client Cutsforth, Inc. with an April 6, 2016 Federal Circuit judgment reversing an inter partes review (IPR) proceeding that had erroneously declared Cutsforth’s claims unpatentable.  The victory clears the path for Cutsforth to proceed with infringement proceedings against its key competitor, MotivePower, Inc.

The Federal Circuit’s opinion, Cutsforth, Inc. v. MotivePower, Inc., No. 2015-1314 (Fed. Cir. Apr. 6, 2016), was the first-ever full reversal of an IPR decision of non-patentability, and turned on claim construction errors by the Patent Trial & Appeal Board (PTAB).  Fish successfully demonstrated that the PTAB’s decision against Cutsforth was based on unreasonably broad claim constructions advocated by MotivePower and adopted by the PTAB.  Notably, the Federal Circuit found that Fish had proved two distinct interpretive errors by the PTAB.  Once the court resolved both in Cutsforth’s favor, there was no question that Cutsforth was entitled to a decision confirming its claims’ patentability.

The Fish team representing Cutsforth in both the IPR and at the Federal Circuit included principals Mathias SamuelRob CourtneyJohn Dragseth, and Karl Renner.

Cutsforth’s total victory comes on the heels of an earlier Federal Circuit decision, obtained by the same Fish team, vacating a separate IPR decision that had erroneously declared claims in a different Cutsforth patent invalid.  In that proceeding, Fish successfully challenged a determination of obviousness that lacked a sufficient basis.  The Federal Circuit agreed that the record was without adequate findings to support the analysis, and therefore remanded the case to the PTAB.  See Cutsforth, Inc. v. MotivePower, Inc., No. 2015-1316 (Fed. Cir. Jan. 22, 2016).  Those remand proceedings are currently ongoing.

The Cutsforth IPR proceedings were initiated by MotivePower after Fish filed suit in 2012 on Cutsforth’s behalf against MotivePower, based on the manufacture and sale of removable brush holders that infringed Cutsforth’s patents.  In May 2013, MotivePower sought an IPR for the Cutsforth patents, and the litigation was stayed.  With the patentability of one Cutsforth patent now confirmed, and with remand proceedings underway for a second, Fish and Cutsforth are preparing to return to district court for a demonstration of infringement and an assessment of damages.

“We are thrilled to have helped Cutsforth win this important reversal so that we can move forward with stopping infringers in the marketplace and making sure our client is compensated for their losses,” said Rob Courtney, the Fish & Richardson principal who led the Federal Circuit case.  “This is a great example of how Fish brings unmatched knowledge and experience in litigation, post-grant, and appeal to obtain the best outcomes for our clients.”

Fish & Richardson is a global patent, intellectual property (IP) litigation, and commercial litigation law firm with more than 400 attorneys and technology specialists across the U.S. and Europe.  Fish has been named the #1 patent litigation firm in the U.S. for 12 consecutive years and is one of the busiest post-grant firms, representing more petitioners at the PTAB than any other firm.  Fish has been winning cases worth billions in controversy – often by making new law – for the most innovative clients and influential industry leaders since 1878.  For more information, visit