{"id":2127,"date":"2018-07-25T20:22:55","date_gmt":"2018-07-26T00:22:55","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2127"},"modified":"2018-07-28T21:38:07","modified_gmt":"2018-07-29T01:38:07","slug":"whats-zup-water-board-patent-obvious-secondary-considerations-too-weak-to-show-otherwise","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2127","title":{"rendered":"What’s Zup? Water Board Patent Obvious; Secondary Considerations Too Weak to Show Otherwise"},"content":{"rendered":"

In Zup, LLC v. Nash Manufacturing, Inc.<\/a>, [2017-1601] (July 25, 2018), the Federal Circuit affirmed the district court’s judgment that claims 1 and 9 of U.S. Patent No. 8,292,681 on a water recreational board and a method of riding such a\u00a0board were invalid for obviousness.<\/p>\n

Zup and Nash had\u00a0discussions about a potential\u00a0joint manufacturing venture for the ZUP Board, and when they fell through, and Nash
\nbrought the accused product to market.\u00a0 Zup sued Nash, and the district court granted Nash’s motion for summary judgment of invalidity.\u00a0 The parties agreed on the content of the prior art, and level of skill, but disagreed on\u00a0whether a person of ordinary skill in\u00a0the art would have been motivated to combine the prior\u00a0art references in the way claimed in the patent, and\u00a0whether the district court properly evaluated Zup\u2019s
\nevidence of secondary considerations.<\/p>\n

The Federal Circuit said that a\u00a0\u201cmotivation to combine may be found explicitly or\u00a0implicitly in market forces; design incentives; the \u2018interrelated\u00a0teachings of multiple patents\u2019; \u2018any need or problem
\nknown in the field of endeavor at the time of invention\u00a0and addressed by the patent\u2019; and the background\u00a0knowledge, creativity, and common sense of the person of\u00a0ordinary skill.\u201d\u00a0 The district court explained that the \u2019681\u00a0patent identified known elements in the prior art that\u00a0aided in rider stability while engaging a water recreational\u00a0device and simply combined them in one apparatus and\u00a0method.\u00a0 The district court said that one of ordinary skill in the art would have been\u00a0motivated to combine the various elements from the prior\u00a0art references, noting that such motivation would have\u00a0stemmed from a desire to aid in rider stability, to allow a\u00a0wide variety of users to enjoy the device, and to aid users\u00a0in maneuvering between positions on a water board \u2014 all
\nmotivations that were \u201ca driving force throughout the\u00a0prior art and have been shared by many inventors in the\u00a0water recreational device industry.<\/p>\n

The Federal Circuit found that the record supported the district court’s analysis.\u00a0 The Federal Circuit observed that helping riders switch between riding\u00a0positions had long been a goal of the prior art, citing various portions of the references of record.\u00a0 The Federal Circuit pointed out that Zup admitted that achieving rider stability is\u00a0an \u201cage-old motivation in this field,\u201d and found that such stability was enhanced in the prior art through the\u00a0same components employed in the \u2019681 patent: tow hooks,\u00a0handles, foot bindings, and other similar features.<\/p>\n

In the face of significant evidence regarding the consistent desire for riders to change\u00a0positions while riding water recreational boards (and the\u00a0need to maintain stability while doing so), and given that\u00a0the elements of the \u2019681 patent were used in the prior art\u00a0for this very purpose, the Federal Circuit said there was no genuine dispute as to the\u00a0existence of a motivation to combine the references.<\/p>\n

The Federal Circuit further found that\u00a0Zup\u2019s minimal evidence of secondary\u00a0considerations does not create a genuine dispute of fact
\nsufficient to withstand summary judgment on the question\u00a0of obviousness.\u00a0 The Federal Circuit rejected ZUP’s contention that the district court improperly\u00a0shifted the burden to prove non-obviousness to Zup because Nash introduced no evidence as to secondary
\nconsiderations, yet Zup still lost, noting that “any concerns regarding improper burden allocation\u00a0can be quickly dismissed. The Federal Circuit said that the burden of persuasion remains with the challenger during\u00a0litigation because every issued patent is entitled to a\u00a0 presumption of validity. However, while the burden of persuasion remains with the challenger,\u00a0a patentee bears the burden of production with\u00a0respect to evidence of secondary considerations of nonobviousness.\u00a0 The Federal Circuit said that it is clear that the district
\ncourt kept the ultimate burden of persuasion on the\u00a0patent challenger throughout the obviousness analysis.\u00a0Any argument that the district court improperly shifted\u00a0the burden is therefore without merit.<\/p>\n

On the issue of secondary considerations the Federal Circuit said that where the differences between\u00a0the prior art and the claimed invention are\u00a0minimal, it cannot be said that\u00a0any long-felt need was unsolved.\u00a0 The Federal Circuit further found that the record evidence indicates that the\u00a0claimed invention was not the first to achieve the goal of\u00a0helping users maneuver between positions on a water\u00a0recreational board.<\/p>\n

The Federal Circuit rejected the arguments of copying, noting that Nash’s instructions suggest a configuration that is different from Zup’s product, dispelling any inference of copying.<\/p>\n

The Federal Circuit concluded that the\u00a0weak evidence of secondary
\nconsiderations presented here simply cannot overcome the\u00a0strong showing of obviousness, quoting “a claimed invention represents no more than\u00a0the predictable use of prior art elements according to
\nestablished functions, as here, evidence of secondary\u00a0indicia are frequently deemed inadequate to establish\u00a0non-obviousness.”<\/p>\n","protected":false},"excerpt":{"rendered":"

In Zup, LLC v. Nash Manufacturing, Inc., [2017-1601] (July 25, 2018), the Federal Circuit affirmed the district court’s judgment that claims 1 and 9 of U.S. Patent No. 8,292,681 on a water recreational board and a method of riding such … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[12,36],"tags":[],"class_list":["post-2127","post","type-post","status-publish","format-standard","hentry","category-obviousness","category-secondary-considerations"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2127","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2127"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2127\/revisions"}],"predecessor-version":[{"id":2128,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2127\/revisions\/2128"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2127"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2127"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2127"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}