The US Court of Appeals for the Federal Circuit affirmed a district court’s obviousness determination, finding that if there is substantial evidence supporting a motivation to combine prior art references and the elements of a patent claim were used in the prior art for the same purpose, there is no genuine dispute as to the existence of a motivation to combine and weak evidence of secondary considerations cannot overcome a strong showing of obviousness. ZUP, LLC v. Nash Manufacturing, Inc., Case No. 17-1601 (Fed. Cir. Jul. 25, 2018) (Prost, CJ) (Newman, J, dissenting). 

ZUP and Nash are competitors in the water recreational industry. ZUP owns a patent directed to a water recreational board, such as a wakeboard, in which a rider simultaneously uses side-by-side handles and side-by-side foot bindings to help maneuver between various riding positions. After Nash began selling its Versa Board, ZUP filed a lawsuit alleging infringement, trade secret misappropriation and breach of contract. After Nash filed a motion for summary judgment of invalidity, which the district court granted, ZUP appealed.

The Federal Circuit affirmed the district court’s findings that all of the elements of the claimed invention existed in the prior art. The Court also agreed that there was substantial evidence of a motivation to combine the elements of the prior art, given that the same elements of ZUP’s patent were used in the prior art for the same purpose, and concluded that there was no genuine dispute about the existence of a motivation to combine. 

Turning to secondary considerations, the Federal Circuit found that ZUP’s minimal evidence of secondary considerations did not create a genuine dispute of fact sufficient to withstand summary judgement on the question of obviousness. The Federal Circuit held that weak evidence of secondary considerations cannot overcome a strong showing of obviousness. The Federal Circuit found that because the differences between ZUP’s claimed invention and the prior art were minimal, any long-felt need was also minimal. 

Judge Newman dissented, arguing that the majority opinion’s decision was based on an incorrect application of the law of obviousness and was without regard to the principles of summary judgment. In particular, Newman stated that objective considerations of obviousness are not merely a rebuttal to overcome the other three obviousness factors, but must be fully considered with the other factors of obviousness, and that secondary considerations guard against hindsight where the inventor’s teachings are used as a template to render the invention obvious.