IP Law Daily Divided panel affirms invalidity for obviousness of wake board patent
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Wednesday, July 25, 2018

Divided panel affirms invalidity for obviousness of wake board patent

By Joseph Arshawsky, J.D.

A patent for a water recreational device—a floating board with handles intended to allow any kind of rider regardless of athleticism to achieve a full standing and riding position—asserted by ZUP, LLC ("ZUP") against its competitor Nash Manufacturing, Inc. ("Nash"), was invalid as obvious in light of the prior art, a divided panel of the U.S. Court of Appeals for the Federal Circuit ruled, affirming a district court’s ruling (ZUP, LLC v. Nash Manufacturing, Inc., July 25, 2018, Prost, S.).

ZUP and Nash are competitors in the water recreational device industry. Nash has been a part of the industry for over fifty years and has designed and manufactured water skis, knee boards, wake boards, and other similar recreational devices. Meanwhile, ZUP is a relative newcomer to the industry, having entered the market in 2012 with its "ZUP Board." The ZUP Board is designed to assist riders who have difficulty pulling themselves up out of the water into a standing position while being towed behind a motorboat. The district court invalidated claims 1 and 9 of U.S. Patent No. 8,292,681 ("the ‘681 patent") as obvious and, in the alternative, found that Nash does not infringe claim 9. The Federal Circuit affirmed the district court’s finding on obviousness and did not reach the infringement question.

The ‘681 patent. Claims 1 and 9 contain the following elements: (1) a riding board; (2) a tow hook on the front of the riding board; (3) a plurality of rails on the bottom surface of the riding board; (4) side-by-side handles on the front of the riding board; (5) side-by-side foot bindings on the middle of the riding board; and, at least as stated in claim 1, (6) the ability to simultaneously engage the handles and foot bindings to position the rider in a crouching stance.

Summary judgment on obviousness. Where "the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors, summary judgment is appropriate." Here, there was no dispute with respect to the content of the prior art, and the differences between that prior art and the ‘681 patent. The only issues on appeal were (1) whether a person of ordinary skill in the art would have been motivated to combine the prior art references in the way claimed by the ‘681 patent, and (2) whether the district court properly evaluated ZUP’s evidence of secondary considerations.

The district court first found that all the elements of the claimed invention existed in the prior art. The only evidence ZUP pointed out to the court is the testimony of its expert, noting the "general frustration to the industry that there was no product that would enable the weakest and most athletically challenged members of the boating community to ski or wakeboard." In the face of the significant evidence presented by Nash regarding the consistent desire for riders to change positions while riding water recreational boards (and the need to maintain stability while doing so) and given that the elements of the ’681 patent were used in the prior art for this very purpose, there was no genuine dispute as to the existence of a motivation to combine.

Turning to ZUP’s second argument on appeal, ZUP’s minimal evidence of secondary considerations did not create a genuine dispute of fact sufficient to withstand summary judgment on the question of obviousness. On appeal, ZUP focused only on long-felt but unresolved need and copying. "As we have said before, ‘[w]here the differences betweenthe prior art and the claimed invention are as minimal as they are here, however, it cannot be said that any long-felt need was unsolved.’" ZUP presented even less compelling evidence of copying. "In sum, we agree with the district court’s assessment of the summary judgment record. Even drawing all reasonable inferences in favor of ZUP, such evidence is insufficient to withstand summary judgment on the question of obviousness. The weak evidence of secondary considerations presented here simply cannot overcome the strong showing of obviousness." The court affirmed the district court’s holding that claims 1 and 9 of the ‘681 patent were invalid as obvious.

Judge Newman’s dissent. Circuit Judge Pauline Newman disagreed with the majority arguing that the judgment was rendered on incorrect application of the law of obviousness and without regard to the principles of summary judgment. "The parties, the district court, and my colleagues all agree that the structure and the placement of handles and foot bindings is novel. However, the district court and my colleagues hold that because some prior art wakeboards have handles and some have foot supports, nothing more is needed for summary judgment of obviousness." Judge Newman disagreed with the panel’s requirement that secondary considerations "overcome" the conclusion based on the first three factors Graham factors rather than reviewing all four factors together.

This case is No. 17-1601.

Attorneys: Matthew Michael Wawrzyn (Wawrzyn & Jarvis LLC) for ZUP, LLC. Joseph F. Cleveland, Jr. (Brackett & Ellis) for Nash Manufacturing, Inc.

Companies: ZUP, LLC; Nash Manufacturing, Inc.

MainStory: TopStory Patent FedCirNews

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