ZUP, LLC v. Nash Manufacturing, Inc., No. 2017-1601 (Fed. Cir. July 25, 2018)
The patentee sued for infringement of its patent covering water recreational devices towed behind motor boats. The district court granted summary judgment, finding the claims at issue invalid as obvious because the patent merely “identified known elements in the prior art that aided in rider stability while engaging a water recreational device and simply combined them in one apparatus and method.”
The two issues on appeal were whether there was a motivation to combine the elements in the prior art, and whether the patentee’s secondary-consideration evidence necessarily precluded summary judgment. The Federal Circuit agreed with the district court’s reasoning and affirmed. Specifically, the Federal Circuit rejected the patentee’s argument that the prior art taught only increasing rider stability on the recreational device in a predetermined position, pointing to the many references in the prior art to the contrary. On the secondary-considerations issue, the patentee argued that the district court had improperly shifted the burden of proof and could not have properly granted summary judgment given the conflicting evidence. The Federal Circuit disagreed, finding that the district court had referenced the patentee’s burden of production on secondary considerations, not the ultimate burden of persuasion, and cited to precedent holding that summary judgment could be proper “even in the face of considerable evidence of secondary considerations.” Given the minor differences between the claimed invention and the prior art, and the weakness of the patentee’s evidence, no error was found in the district court’s analysis.