The Role of Objective Indicia in Non-Obviousness Doctrine

The following is a guest post by Lauren Vincent who is currently a 3L at the University of Missouri School of Law.  Vincent is the Editor-in-Chief of the Missouri Law Review. – DC

ZUP, LLC v. Nash Mfg., Inc., 896 F.3d 1365 (Fed. Cir. 2018)

Facts and Holding

ZUP, LLC v. Nash Manufacturing, Inc. involves two competitor businesses in the water recreational device industry. ZUP, LLC (“ZUP”) brought its wakeboarding invention, the “ZUP Board,” to market in 2012. ZUP’s U.S. Patent No. 8,292,681 covers the board itself and a method of riding the board in which a rider simultaneously uses side-by-side handles and side-by-side foot bindings to help maneuver between various riding positions. This transition is shown in the figures below.

In 2014, Nash Manufacturing, Inc. (“Nash”) brought its wakeboarding invention, the “Versa Board,” to market. The Versa Board had several holes on the top surface of the board that allowed users to attach handles or foot bindings in various configurations, but Nash warned its users against having the handles attached to the board while standing. If a user theoretically ignored Nash’s warnings, the user could attach the handles and foot bindings in a configuration that paralleled the method of riding that ZUP described in the ZUP Board patent.

ZUP filed an infringement claim against Nash. Nash counterclaimed, seeking a declaration of non-infringement and invalidity on obviousness grounds. ZUP presented evidence of secondary considerations to the district court. However the district court found the claims obvious in light of a combination of six prior patents involving water recreational boards. Images of some of the prior art patents are shown below.

The Majority

In a split decision, the Federal Circuit affirmed the district court’s holding that the ZUP Board patent claims were invalid as obvious under § 103(a) because a person of ordinary skill in the art would have had a motivation to combine the prior art references in the method it claimed and further held that the district court properly evaluated ZUP’s evidence of secondary considerations. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) and Graham v. John Deere Co., 383 U.S. 1 (1966).

The Federal Circuit agreed with the district court’s conclusion that the ZUP Board patent merely identified known elements from prior patents (food bindings, handles etc.) and combined them. Further, the Federal Circuit agreed with the district court that ZUP’s purpose in so combining (helping riders maneuver between positions by focusing on rider stability) had been a longstanding goal of the prior patents – a goal predictably shared by many inventors in the industry. The Federal Circuit further concluded that because ZUP presented only minimal evidence of secondary considerations, ZUP did not “overcome” the strong showing of obviousness established by application of the other three Graham factors to the facts of the case. Chief Judge Prost authored the majority opinion that was joined by Judge Lourie.

The Dissent

Writing in dissent, Judge Newman argued that the obviousness determination was improper because the prior patents never suggested the specific wakeboard modifications claimed by ZUP. Judge Newman further maintained that the majority effectively treated the fourth Graham factor – secondary considerations — as one that should only be considered in rebuttal. By requiring that the fourth factor “overcome” the others, Judge Newman contended that the majority engaged in improper judicial hindsight.


24 thoughts on “The Role of Objective Indicia in Non-Obviousness Doctrine

  1. 8

    It’s too late to be making close calls on obviousness. Wakeboards or spreadsheets. This is the same subjective decision made when the patent was issued, reversed after it was relied on to collateralize investment and build a business.

    This is a big problem when patent professionals criticize these patents from the cheapseats years after they were granted – using the exact same analysis and rationale you would use in examination.

    Learn the difference between a patent application and a patent people.

    1. 8.1

      Most of us are aware that businesses can be built on junk and thrive afterwards (Facebook anybody) even when everybody understands the IP is pure sh – t.

      Also maybe it hasn’t occurred to you but someone else’s business might have been ruined by this junk patent.

      I know, really deep nuanced stuff for the maximalist crowd.

      1. 8.1.1

        stuff for the maximalist crowd

        You are doing that one-bucketing thing again….

        Maybe instead of the usual “feelings/rant” from you, you add something of a substantive legal nature?

    2. 8.2

      How do law firms compete in the marketplace without each one being protected by a patent on their tangible and abstract features?

      It must be magic.

  2. 7

    “obvious in light of a combination of six prior patents”

    This fact alone makes me pretty skeptical of the courts’ holdings. It sounds like a textbook example of the old “picking-and-choosing” concern.

    IMHO, it would be more logical (and fair) to copy Euro approach and limit obvious arguments to 2 references.

    1. 7.1

      “obvious in light of a combination of six prior patents”

      This fact alone makes me pretty skeptical of the courts’ holdings.

      By itself, the number of patents cited to tank a claim isn’t indicative of much, particularly in the “do it on a computer” arts.

      What makes me laugh is the idea that somehow complicated spreadsheets used to be really really really difficult to navigate through but these guys “solved the problem” using … tabs.

      News flash: complicated spreadsheets are still complicated and most of the time a user finds his/herself wondering “why in the eff would anyone do it this way” the answer is that some @ h0le is out there with a junk patent blocking the implementation of an obvious solution.

      Logic patents don’t promote progress in logic. They slow it down. It’s a grift designed to funnel money into the pockets of a tiny tiny group of patent players. Silicon Valley is 95% about the “con” and 4% about the “silly.” Most of the remaining 1% of creative people want nothing to do with logic patents because they’re junk and they waste everybody’s time.

    2. 7.3

      Meh, I have no problem with the number of references – as long as the references are actually intelligibly chosen (and not merely a “piece part puzzle approach” in which the references themselves — as a whole — do not conflict one with another).

      Mindless key-word driven combinations — of ANY number — is a different type of problem.



          I cannot count the number of times where the “piece part” key word search is improper because what is being taught in one reference conflicts with any one (and often more) than the other references so strung together.

          The chances actually increase (and increase greatly) that such a conflict occurs when the references are “piled on” merely for the individual “keywords.”

    1. 6.1

      Thanks. That case is … interesting. A zillion times more interesting than “send someone information over the Internet when they ask for it, wherein the information is product information”, anyway.

    2. 6.2

      This appears to be — on its face — the ultimate “merely arranging data” as something BEING patent eligible.

  3. 5

    Judge Newman, as usual, gets it right.

    But regardless; given in part its apparently crowded field of art; a perfect invention for one or more design patents.

  4. 3

    Judge Newman argued that … the prior patents never suggested the specific wakeboard modifications claimed by ZUP.

    Hmmm. Not sure what that means. Sounds more like an argument against anticipation. The prima facie case is made by showing that the prior art suggested making modifications to a board so that you could maneuver it better or have better or stability or both, and that case is bolstered by a showing the many examples in the prior art where people did just that.

    To overcome that case, one would need to show that the specific claimed modifications were responsible for the commercial success of the board or that the degree of stability was surprising.

    1. 3.1

      One additional note to folks who are “offended” by this sort of comment: nobody except for a tiny group of lawyers wants or needs a world where you can get a different patent every time you put a hole in a wakeboard where the wakeboard or the hole isn’t exactly identical to the wakeboards in the prior art (“b-b-but or wakeboard has oval holes less than 2 inches in circumference with a smooth edge!”). That doesn’t promote “progress in the wakeboard” arts. It just promotes litigation in the wakeboard arts and a PTO that is overwhelmed with indistinguishable pointless junk.

      In other words, lowering the bar so that 103 is toothless is probably a really terrible idea in 2018. I don’t think there’s anything radical or controversial about that.

      1. 3.1.1

        One additional note to folks who are “offended” by this sort of comment:

        You really have to try hard to be that clueless.

  5. 2

    Every difference can’t be patent-worthy. Sometimes its a close judgement call, as it is with Copyright, in the end.

    Skimming boards of all kinds have had handles and grips in every configuration for decades. This was one of those that could go either way. Too bad, some subjectivity is inescapable.

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