Summer is finally kicking into gear, but the Federal Circuit isn’t on vacation yet. Last week the Court issued several interesting decisions—including our case of the week, which analyzes the nexus requirement for objective evidence of nonobviousness.
Case of the week: Yita LLC v. MacNeil IP LLC, No. 22-1373
Panel: Judges Taranto, Chen, and Stoll, with Judge Taranto writing the opinion
You should read this case if: you have a matter involving objective evidence of nonobviousness
MacNeil owns patents claiming vehicle floor mats that “closely conform” to the walls of the footwell. The claimed inventions involve scanning the vehicle’s footwell, heating a material, and molding it into the shape of the scanned surface.
Yita petitioned for IPRs of MacNeil’s patents. As relevant here, the Board upheld one set of claims, rejecting Yita’s obviousness challenge. It found that the prior art disclosed all of the claim elements, including the close-conformance limitation. And it found that a skilled artisan would have been motivated to combine the asserted prior-art references with a reasonable expectation of success. But the Board ultimately held the claims nonobvious based on MacNeil’s secondary-considerations evidence, including commercial success and industry praise for its floor trays embodying the claimed invention.
The Federal Circuit reversed in relevant part. It emphasized that “objective evidence of nonobvious lacks a nexus if it exclusively relates to a feature that was ‘known in the prior art.’” The Court noted that all of MacNeil’s secondary-considerations evidence related only to the close-conformance limitation. For instance, MacNeil’s customer reviews often cited the tray’s close fit as the main reason for their purchase. Based on the Board’s finding that the close-conformance limitation was in the prior art, the Court concluded that none of MacNeil’s secondary-considerations evidence was relevant to the obviousness inquiry. And because secondary considerations were the only Graham factor favoring nonobviousness, the Court held that the record compelled a conclusion of obviousness.
The Court reiterated that secondary-considerations evidence need not be linked to a specific “new” feature not found in the prior art; it can instead be tied to the “inventive combination of known elements.” But when the asserted commercial success, industry praise, or other objective evidence is attributable to a single feature rather than the combination of elements, a nexus is lacking if that feature is in the prior art.
OTHER WEEKLY STATS
Precedential opinions: 6
Non-precedential opinions: 8
Rule 36: 7
Shortest (non-Rule 36) pending case from argument: Blackhawk Network, Inc. v. Interactive Communications International, Inc., No. 22-1650 (33 days)