The requirement that the secondary considerations "overcome" the conclusion based on the first three factors is incorrect, for the obviousness determination must be based on the invention as a whole including the evidence of all four Graham factors. It is incorrect to convert the fourth Graham factor into "rebuttal," requiring it to outweigh the other three factors. Consideration of the objective indicia "is not just a cumulative or confirmatory part of the obviousness calculus, but constitutes independent evidence of nonobviousness." Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1365 (Fed. Cir. 2008). This evidence must be considered together with the other evidence, and not separated out and required to outweigh or rebut the other factors. All of the factors must be considered in connection with proving invalidity by clear and convincing evidence. Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1048 (Fed. Cir. 2016) (en banc).
The fourth Graham factor is of particular analytic value in guarding against judicial hindsight. The majority's decision is a textbook example of hindsight, where the inventor's teaching is used as a template to render the invention obvious. Precedent warns against this fallacy, see, e.g., KSR, 550 U.S. at 421 ("A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning."); Polaris Industries, Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1068 (Fed. Cir. 2018) ("We have observed that the prejudice of hindsight bias often overlooks that the genius of invention is often a combination of known elements which in hindsight seems preordained.") (internal quotation marks omitted); In re Ethicon, 844 F.3d 1344, 1355-56 (Fed. Cir. 2017) (the "'insidious' exercise of decisional hindsight, whereby that which the inventor taught is used by the decision-maker to reconstruct the invention."); Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1320 (Fed. Cir. 2004) ("[W]e are mindful of the repeated warnings of the Supreme Court and this court as to the danger of hindsight bias."). The district court and the panel majority do not identify any suggestion in the prior art to make the specific wakeboard modifications made by Duff—the only source of these modifications is judicial hindsight.
My colleagues also err in their analysis of the objective indicia. For example, the panel majority concedes that Nash obtained the patented wakeboard and used it to develop a wakeboard that "resembled the claimed invention." Maj. Op. at 15. Yet the panel majority holds that because ZUP did not give Nash a "blueprint" of the ZUP Board, the evidence of copying is somehow diminished. Id. at 15. No precedent, no logic, requires a "blueprint" in order to copy a simple structure in plain view and possessed by the accused infringer.
The district court also misapplied the factor of long-felt need. The court reasoned that since improvement in wakeboards was known to be desirable, this sufficed to provide the motivation to make the improvement achieved by Duff. Dist. Ct. Op. at 447. Motivation to solve a known problem is not motivation to make a specific solution, as the district court erroneously equated:
Additionally, the Court finds that one of ordinary skill in the art would have been motivated in 2008 to combine these elements in order to aid in rider stability, to allow a wide variety of users to enjoy the device, and to aid users in maneuvering between positions on a water board. These motivations are a driving force throughout the prior art and have been shared by many inventors in the water recreational device industry. And the specific desire to aid users in maneuvering between positions on a water board has been a consistent motivation in the prior art for decades.
Dist. Ct. Op. at 447 (internal citations omitted). The panel majority adopts this reasoning, although neither my colleagues nor the district court find that Duff's novel combination was suggested in the prior art as the path to long-sought improvement. To the contrary, Duff's realignment of known elements in a crowded field, achieving benefits not previously achieved, weighs against obviousness. The sport of wakeboarding has long challenged inexperienced and weak riders. The prior art has long sought improvement, yet no one presented the specific structure created by Duff. And I repeat the words of Nash's CEO, himself an inventor of water sports products, that "you have a great product by the way!"
On the proper analysis, summary judgment of obviousness was improperly granted. See Surowitz v. Hilton Hotels Corp., 383 U.S. 363, 373 (1966) ("The basic purpose of the Federal Rules is to administer justice through fair trials, not through summary dismissals as necessary as they may be on occasion."). On consideration of all of the Graham factors, applied to the invention as a whole, clear and convincing evidence of obviousness was not present- ed. From my colleagues' contrary ruling, I respectfully dissent.
The concept of prima facie obviousness based solely on prior art is a procedural tool of ex parte examination. See In re Piasecki, 745 F.2d 1468, 1471-72 (Fed. Cir. 1984) ("The concept of prima facie obviousness in ex parte patent examination is but a procedural mechanism to allocate in an orderly way the burdens of going forward and of persuasion as between the examiner and the applicant.").
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