       NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                ______________________

                 CUTSFORTH, INC.,
                     Appellant

                           v.

               MOTIVEPOWER, INC.,
                      Appellee
               ______________________

                      2015-1314
                ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board, in No. IPR2013-
00268.
                 ______________________

                Decided: April 6, 2016
                ______________________

   ROBERT P. COURTNEY, Fish & Richardson P.C., Min-
neapolis, MN, argued for appellant. Also represented by
MATHIAS WETZSTEIN SAMUEL, CONRAD GOSEN.

    JASON ALEXANDER ENGEL, K&L Gates LLP, Chicago,
IL, argued for appellee. Also represented by ALAN L.
BARRY, ROBERT J. BARZ, BENJAMIN EDWARD WEED.
                ______________________
2                      CUTSFORTH, INC.   v. MOTIVEPOWER, INC.



     Before PROST, Chief Judge, CLEVENGER, and MOORE,
                     Circuit Judges.
MOORE, Circuit Judge.
    Cutsforth, Inc. appeals from the final written decision
of the Patent Trial and Appeal Board (“Board”) in an inter
partes review (“IPR”) concluding that claims 14, 16–19,
and 21–22 of U.S. Patent No. 7,141,906 are anticipated.
Because the Board erred in construing the claim terms
“projection extending from” and “brush catch coupled to
the beam,” we reverse.
                       BACKGROUND
     The ’906 patent is directed to a removable brush hold-
er assembly used in electrical devices or slip ring assem-
blies, such as electric generators and motors. ’906 patent
col. 1 ll. 14–16. A “brush” is a component in an electrical
device that passes electrical current from a rotating
conductive surface to other structures, or vice versa. Id.
col. 1 ll. 20–26. A brush holder assembly holds a brush in
contact with a moving conductive contact surface so that
electrical current can pass into or out of the moving
conductive contact surface. Id. col. 1 ll. 33–35. 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. Id. col. 1 ll.
35–40, col. 2 ll. 14–16.
    Claim 14, the only independent claim on appeal, re-
cites (emphases added):
    14. A brush holder assembly for holding a brush
    having a conductive element, the brush holder as-
    sembly comprising:
        a mounting block including an engage-
        ment portion;
        a beam having an engagement portion
        complementary with the mounting block
CUTSFORTH, INC.   v. MOTIVEPOWER, INC.                       3



        engagement portion, wherein the mount-
        ing block engagement portion is slidably
        engaged with the beam engagement por-
        tion, and wherein the beam is slidable rel-
        ative to the mounting block between a
        first, disengaged position and a second,
        engaged position;
        a brush catch coupled to the beam for se-
        lectively engaging the brush; and
        a brush release extending from the mount-
        ing block and configured for sliding en-
        gagement with the brush catch said brush
        release is a projection extending from the
        mounting block.
    MotivePower, Inc. petitioned for IPR of claims 1, 2, 4,
5, 10–14, 16–19, 21, and 22 of the ’906 patent on nine
grounds of unpatentability. 1 On November 1, 2013, the
Board instituted IPR as to all asserted claims, but only on
the following three grounds: (i) claims 1, 2, 4, 5, 10–14,
16–19, 21, and 22 as anticipated by U.S. Patent
No. 3,864,803 (“Ohmstedt”), (ii) claims 1, 2, 4, 5, 10, 11, 14,
16–19, 21, and 22 as anticipated by U.S. Patent
No. 3,387,155 (“Krulls”), and (iii) claims 12 and 13 as



    1    MotivePower petitioned for IPR of five related pa-
tents, including the ’906 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 Nos. 2015-1315 and -1316, which
were consolidated for oral argument before this Court.
We have already resolved Appeal Nos. 2015-1315 and -
1316. Cutsforth, Inc. v. MotivePower, Inc., 626 F. App’x
1011 (Fed. Cir. 2015); Cutsforth, Inc. v. MotivePower, Inc.,
No. 2015-1316, 2016 WL 279984 (Fed. Cir. Jan. 22, 2016).
4                     CUTSFORTH, INC.   v. MOTIVEPOWER, INC.



obvious over Krulls and Ohmstedt. During the IPR
proceeding, Cutsforth canceled claims 1, 2, 4, 5, and 10-13,
rendering the third ground moot. The Board issued its
final written decision on October 30, 2014. The Board
construed the claim terms at issue, and based on those
constructions, found that Ohmstedt and Krulls each
anticipated independent claim 14 and its dependent
claims 16–19, 21–22 of the ’906 patent (“claims-at-issue”).
Cutsforth timely appealed the Board’s final written
decision to this Court. We have jurisdiction under 28
U.S.C. § 1295(a)(4).
                       DISCUSSION
    In IPRs, the Board gives claims their broadest rea-
sonable interpretation consistent with the specification.
In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1279 (Fed.
Cir. 2015), cert. granted, 84 U.S.L.W. 3218 (U.S. Jan. 15,
2016) (No. 15-446). We review claim construction de novo
except for subsidiary fact findings based on extrinsic
evidence, which we review for substantial evidence. Id. at
1280. Anticipation under 35 U.S.C. § 102 is a question of
fact, and we review the Board’s factual findings for sub-
stantial evidence. Kennametal, Inc. v. Ingersoll Cutting
Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015).
     I.   The “Projection Extending From” Limitation
    The claims-at-issue recite “a brush release extending
from the mounting block and . . . said brush release is a
projection extending from the mounting block.” The Board
construed the phrase “projection extending from the
mounting block” to have its plain meaning without
providing a specific construction. It rejected Cutsforth’s
proposed construction—“a structure that protrudes out-
wardly from the mounting block”—as not supported by
the specification, and concluded that the phrase is not
limited only to projections extending outwardly from the
mounting block.
CUTSFORTH, INC.   v. MOTIVEPOWER, INC.                    5



    Cutsforth argues that the Board failed to explicitly
address the parties’ key dispute for this term: whether a
projection must “jut out” from its surroundings. It argues
that the direction of a projection—whether it projects
outward or inward—is not the issue. It argues that the
Board’s interpretation cannot be reconciled with the plain
English meaning of “projection,” which requires a jutting
out. It argues that no reasonable interpretation of a
“projection extending from the mounting block” could
cover the ramp 59 in Ohmstedt that the Board found
disclosed this limitation, as that ramp 59 neither “extends”
out above the surface of the brush box 13 nor “projects”
from the brush box 13’s face. We agree with Cutsforth
that the Board’s claim construction was erroneous.
    While claims are given their broadest reasonable in-
terpretation in IPR proceedings, claim interpretation still
“must be reasonable in light of the claims and specifica-
tion.” PPC Broadband, Inc. v. Corning Optical Commc’ns
RF, LLC, --- F.3d ---, No. 2015-1364, 2016 WL 692369, at
*5 (Fed. Cir. Feb. 22, 2016). The Board’s interpretation of
“a projection extending from the mounting block” far
exceeds the scope of its plain meaning and is not justified
by the specification. We hold that the Board’s interpreta-
tion, which encompasses a structure that recedes into the
mounting block rather than jutting out from it, is unrea-
sonable.
    Cutsforth presented evidence that the plain meaning
of “projection” in the context of a mechanical device re-
quires a protrusion that juts out from its surroundings.
See, e.g., J.A. 471 (Webster’s 3rd New Int’l Dictionary
1813 (1993) (defining “projection” as “(1): a jutting out or
causing to jut out (2): a part that projects or juts out: an
extension beyond something else”)). This plain meaning
is consistent with the language of the claims. Claim 14
twice recites that the projection “extend[s] from the
mounting block,” consistent with the dictionary definition,
“an extension beyond something else.” The specification
6                      CUTSFORTH, INC.   v. MOTIVEPOWER, INC.



uses the term “projection” consistent with its plain mean-
ing. The claimed “projection extending from the mounting
block” corresponds to the brush release 110 shown in
figure 12 of the ’906 patent specification. While the brush
release 110 may not be jutting out from the beam 14 (i.e.,
the shaded element), it does jut out from the lower mount-
ing block 16 as required by the claim.




                FIGURE 12 (’906 PATENT)
     MotivePower does not dispute that the plain meaning
of “projection” requires a jutting out from its surroundings.
Rather, it argues that the Board was free to reject
Cutsforth’s dictionary definition and expert testimony.
We recognize that the Board has wide discretion in its
treatment of such extrinsic evidence. However, even
without the evidence put forth by Cutsforth, MotivePower
presented no evidence to justify the Board’s interpretation.
Unless the patentee acted as his own lexicographer, no
reasonable interpretation of a “projection extending from
the mounting block” can encompass something that
protrudes into the mounting block. But “[t]o act as its
own lexicographer, a patentee must clearly set forth a
definition of the disputed claim term other than its plain
and ordinary meaning.”         Thorner v. Sony Computer
CUTSFORTH, INC.   v. MOTIVEPOWER, INC.                  7



Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)
(citation and quotation marks omitted). There is no
evidence that the inventors intended to give a special
definition to the term “projection” that far exceeds the
scope of its plain meaning. Thus, we conclude that a
“projection extending from the mounting block” must jut
out from the mounting block.
    We next address the Board’s finding that Ohmstedt
discloses the “projection” limitation. MotivePower argues
that if we adopt the construction advanced by Cutsforth,
we should remand for the Board to determine whether
Ohmstedt discloses the claimed “projection.” We disagree.
As an initial matter, MotivePower has preserved no
argument that Ohmstedt discloses the “projection” limita-
tion under Cutsforth’s construction.      See Petitioner’s
Reply to Patent Owner’s Response at 12–13, MotivePower,
Inc. v. Cutsforth, Inc., No. IPR2013-00268, 2013 WL
8595963 (P.T.A.B. Nov. 1, 2013), Paper No. 21. Even if
MotivePower had preserved this argument, under the
construction we adopt today, no reasonable fact finder
could conclude that Ohmstedt’s ramps 59 are “projection[s]
extending from” its brush box 13. We thus reverse the
Board’s finding that Ohmstedt anticipated the claims-at-
issue.
8                     CUTSFORTH, INC.   v. MOTIVEPOWER, INC.




         EXCERPT FROM FIGURE 1 (OHMSTEDT)

 II.   The “Brush Catch Coupled to the Beam” Limitation
    The claims-at-issue recite “a brush catch coupled to
the beam.” Cutsforth argued before the Board that this
claim language prohibits the “brush catch” from being a
sub-component of the “beam.” The Board disagreed, and
held that a “brush catch” may be a sub-component of the
“beam” and still be considered to be “coupled to the beam.”
    Cutsforth argues that the Board’s interpretation ren-
ders the phrase “coupled to” meaningless. It argues that
the Board expanded the meaning of the term “coupled to”
beyond its plain meaning without any supporting evi-
dence. We agree with Cutsforth that the claims-at-issue
require a “brush catch” to be a physical structure that is
separate from, and not a sub-component of, the claimed
“beam.” It goes beyond the plain meaning of “coupled” to
say that a sub-component (e.g., an engine in a car) is
“coupled to” the component as a whole (e.g., the car). No
CUTSFORTH, INC.   v. MOTIVEPOWER, INC.                    9



evidence shows that the inventors intended to deviate
from the plain meaning of “coupled to.”
    Turning to the Board’s analysis of the Krulls refer-
ence, the Board found that Krulls discloses a “brush
magazine 12” that is coupled to a portion of the “resilient
member 56,” teaching the claimed “beam” and “brush
catch,” respectively.    Under the correct construction,
substantial evidence does not support the Board’s find-
ings. The “brush magazine 12” in Krulls comprises a
number of components, including the “resilient member
56.” Since the “resilient member 56” is a sub-component
of the “brush magazine 12” as a whole, it is not “coupled
to” the “brush magazine 12.” In other words, the “resili-
ent member 56” is a part of the “brush magazine 12”; it is
not “coupled to” the “brush magazine 12.”
    Even if the Board found Krulls disclosed the “beam”
through the remaining portion of the “brush magazine
12,” excluding the sub-component “resilient member 56,”
substantial evidence does not support the Board’s finding
of anticipation. While such a determination might sup-
port a finding that the “coupled to” limitation was met, no
reasonable fact finder could conclude that the “slidably
engage[]” limitation would be met under such an interpre-
tation. The claims-at-issue require the “beam” to include
an “engagement portion” that slidably engages with the
mounting block. There is no dispute that the only part of
the “brush magazine 12” that slidably engages with a
mounting block is the “resilient member 56.” Thus, while
viewing Krulls’ “brush magazine 12” less the “resilient
member 56” as the claimed “beam” may satisfy the “cou-
pled to the beam” limitation, it would frustrate the “slida-
bly engage[]” limitation.       No substantial evidence
supports the Board’s finding of anticipation by Krulls.
     MotivePower preserved no argument that Krulls an-
ticipates the claims-at-issue under Cutsforth’s construc-
tion. Moreover, MotivePower did not dispute before the
10                     CUTSFORTH, INC.   v. MOTIVEPOWER, INC.



Board that the “slidably engaged with the beam engage-
ment portion” limitation cannot be met under Cutsforth’s
construction. See Petitioner’s Reply to Patent Owner’s
Response at 14, MotivePower, Inc. v. Cutsforth, Inc.,
No. IPR2013-00268, 2013 WL 8595963 (P.T.A.B. Nov. 1,
2013), Paper No. 21. We reverse the Board’s finding that
Krulls anticipated the claims-at-issue.
                     III.   Conclusion
    For the foregoing reasons, we reverse the Board’s de-
termination that claims 14, 16-19, and 21-22 of the ’906
patent are anticipated by each of the Ohmstedt and
Krulls references. Because anticipation was the only
ground upon which the IPR was instituted as to these
claims, there are no remaining issues that warrant a
remand.
                       REVERSED
                            COSTS
     Costs to Cutsforth.
