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.
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.
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.