Digest of GATOR TAIL, LLC V. MUD BUDDY LLCNos. 2014-1747, 2014-1748 (Fed. Cir. June 22, 2015) (non-precedential). On appeal from M.D. La. Before Moore, Clevenger, and Wallach.

Procedural Posture: Plaintiff patentee appealed district court decision finding claims of the asserted patents invalid as obvious. CAFC affirmed.

  • Obviousness: Claims directed to a short-tail mud motor with a horizontally mounted engine deemed obvious where the prior art disclosed a short-tail motor with a vertically mounted engine. The district court concluded that there were only limited ways to improve upon the prior art, and that those improvements were merely predictable uses of prior art elements. Several experts testified regarding why one of ordinary skill in the art would be motivated to replace the prior art’s vertical motor with a horizontal one. The Federal Circuit agreed that the prior art’s suggestion that horizontal engines were inferior to vertical engines was not enough to teach away from the plaintiff’s invention.
  • Ex Parte Reexamination: The district court credited expert testimony that was contrary to statements in declarations that the PTO examiner had relied on when allowing the patents. Although district courts are directed to consider PTO reexamination decisions as evidence when determining invalidity, they are not bound by the PTO’s decisions. The Federal Circuit concluded that it was not clearly erroneous for the district court to give more weight to the trial testimony than to the PTO reexamination decision.
  • Commercial Success: The patentee argued that the district court failed to presume that the company’s commercial success was due to the patented invention. The Federal Circuit concluded that any error in the district court’s analysis was harmless because the plaintiff merely presented the number of units sold, and failed to establish the overall size of the markets necessary to show commercial success.