Law360 Interviews Soofian on Cutsforth
PTAB Decision Validity

January 25, 2016

In “Fed. Circ. Slams PTAB For Not Explaining Why It Axed Patent,” Law360 examined the Federal Circuit’s rationale for vacating a recent Patent Trial and Appeal Board (PTAB) America Invents Act (AIA) review decision finding a Cutsforth Inc. brush holder patent invalid. 

In a rare reversal of a PTAB inter partes review decision, the appeals court said the PTAB made “broad, conclusory statements” that determined Cutsforth’s patent was invalid because it was obvious. Among the reasons for the PTAB’s finding is that the board said it would have been obvious to someone in the field to modify elements of two previous US patents to create the mounting block that is claimed in the patent.

The Federal Circuit, however, said the board’s basis for finding two dependent claims obvious was lacking in its explanation.

Intellectual Property associate David Soofian explained that there are a number of PTAB final written decisions and particularity inter partes review decisions that are written using the same formula that the Federal Circuit criticized.

This decision could prompt future appeals cases arguing over whether there were deficiencies in the board’s ruling.

Soofian noted, “Even though [the opinion] is short and non-precedential, I think it will be a pretty interesting opinion in the way it is used going forward. I think you’ll see a lot of traction from this on the appellate level.”

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