Yita LLC v. MacNeil IP LLC
Docket Nos. 2022-1373, -1374 (IPR2020-01139, -00142) (https://cafc.uscourts.gov/opinions-orders/22-1373.OPINION.6-6-2023_2137962.pdf)
TARANTO, CHEN, STOLL
June 6, 2023
Brief Summary: FC panel reverses one IPR obviousness decision because secondary considerations had nexus to only “a single feature”; affirmed second obviousness decision as Yita raised new arguments in its answer.
Summary: Yita appealed Board IPR final written decisions (FWDs) finding MacNeil’s US 8,382,186 and 8,833,834 (which share a specification) related to vehicle floor trays/floor mats were not shown to be invalid for obviousness because “[MacNeil’s] evidence of secondary considerations [was] compelling and indicative of non-obviousness” (“commercial success, long-felt but unsolved need, and industry praise”) even though “a relevant artisan would have been motivated to combine, and had a reasonable expectation of success in combining, the teachings of three asserted prior-art references.” Regarding the ‘186 patent, the Board found a nexus between the secondary considerations and the claimed “close conforming vehicle floor tray” (Fox, FC 2019; Brown & Williamson, FC 2000 (“if the marketed product embodies the claimed features, and is coextensive with them, then a nexus is presumed”); WBIP, FC 2016 (“it is the claimed combination as a whole that serves as a nexus for objective evidence; proof of nexus is not limited to only when objective evidence is tied to the supposedly ‘new’ feature(s)”)). The FC panel explained that its “case law makes clear that ‘objective evidence of nonobviousness lacks a nexus if it exclusively relates to a feature that was ‘known in the prior art’—not necessarily well-known” (Rambus, FC 2013; Ormco, FC 2006; Ethicon, FC 2016)). The FC panel also explained that secondary considerations tied to a single feature and not the combination of elements “den[ies] force to” that evidence, found that to be the case here, and reversed the Board’s ‘186 patent nonobviousness decision. Regarding the ‘834 patent, the Board did find claims 13-15 unpatentable and MacNeil did not appeal it, but the FC panel noted that “in reaching that conclusion, the Board found unpersuasive MacNeil’s secondary-consideration evidence” (which was the same as that raised for the ‘186 patent). The Board also found ‘834 claims 1-12 not to be obvious because “it found that the one-eighth-inch limitation of claims 1–12 was not disclosed by any of the asserted prior-art references” and considered Yida’s argument that “MacNeil has not established any criticality to the 1/8 inch tolerance limitations” to be a “‘new position’ and ‘outside the scope of a proper reply under [37 C.F.R. §] 42.23(b)’”. The FC panel explained that “the Board acts within its discretion when it declines under section 42.23(b) to consider a new theory of unpatentability raised for the first time in reply” (Intelligent Bio-Systems, FC 2016; Ariosa, FC 2015 (“meaningfully distinct contention”); Apple, FC 2020; Acceleration Bay, FC 2020 (“could have “present[ed] [its reply] argument in its petition but chose not to”)) and did not abuse its discretion here.