       NOTE: This disposition is nonprecedential.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. Motive-
Power, 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 hold-
er 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 ma-
         jor axis, an upper end and a lower end,
         and a first and second outer side sur-
         faces substantially parallel to said ma-
         jor axis, and including a stationary
         brush release proximate said lower end;
         and
       a brush holder component adapted for re-
         movably 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 com-
         prising a brush catch having a first po-
         sition 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 permit-
         ting 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 (“Bis-
sett”), 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. Motive-
Power, Inc., No. 2015-1315, 2015 WL 9207283 (Fed. Cir.
Dec. 17, 2015).




    1   MotivePower petitioned for IPR of five related pa-
tents, 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 argu-
ments 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 mount-
ing 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 ob-
vious 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 ob-
vious. 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 compo-
nent 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 state-
ments 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’ argu-
ments 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 Bis-
sett/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 rea-
soning. The decision must explain why a person of ordi-
nary 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 sta-
tionary brush frame, not the mounting block. Yet, the
Board determined that lead receptacle 32 could be posi-
tioned 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 ordi-
nary 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 mova-
ble 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 explana-
tion. 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 explana-
tion 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 administra-
tive process.” In re Sang-Su Lee, 277 F.3d at 1346.
             VACATED AND REMANDED
