from the United States District Court for the District of
Massachusetts in No. 1:11-cv-10374-NMG, Judge Nathaniel M.
Andrew Simons, K&L Gates LLP, Boston, MA, argued for
plaintiff-cross-appellant. Also represented by Andrea B.
Reed; Michael E. Zeliger, Palo Alto, CA.
Joshua Rosenkranz, Orrick, Herrington & Sut-cliffe LLP,
New York, NY, argued for defendant-appellant. Also
represented by Rachel Wainer Apter; Brian Philip Goldman, San
Francisco, CA; Katherine M. Kopp, T. Vann Pearce, Jr., Eric
Shumsky, Washington, DC; Steven M. Bauer, William David
Dalsen, Safraz Ishmael, Proskauer Rose LLP, Boston, MA.
Moore, O'Malley, and Chen, Circuit Judges.
Co. appeals from the United States District Court for the
District of Massachusetts' denial of judgment as a matter
of law that claims 1–6, 8, and 10–12 of U.S.
Patent No. 7, 314, 044 and claims 26 and 28 of U.S. Patent
No. 7, 832, 196 (collectively "asserted claims")
would have been obvious and lack sufficient written
description and the determination that Kohler willfully
infringed the asserted claims. WBIP, LLC cross-appeals the
court's denial of its post-trial motion for a permanent
injunction. We affirm the court's denial of judgment as a
matter of law on all issues raised by Kohler and its willful
infringement determination, vacate the court's denial of
WBIP's motion for a permanent injunction, and remand for
Corporation and Kohler are competitors who manufacture
and sell marine generators ("gen-sets") that are
used on houseboats to create electrical power for appliances
such as refrigerators and air conditioners. Gen-sets have two
main parts, an engine and a generator. The exhaust from a
typical engine in a gen-set, like any gasoline-powered
engine, contains carbon monoxide, which can cause
asphyxiation at certain concentrations. Carbon monoxide is
particularly dangerous on boats, where the living quarters
are confined in close proximity to the engine. Prior to the
invention of the patents in suit, the exhaust pipes of prior
art marine gen-sets were vented out of the boat into a safe
location to reduce potential exposure to carbon monoxide. In
the early 2000s, the National Institute for Occupational
Safety and Health ("NIOSH") investigated concerns
about carbon-monoxide-related poisonings and deaths on
houseboats. NIOSH found that, for houseboats with gen-sets
that discharged exhaust around the swim platform, carbon
monoxide levels in the swim area were at or above levels that
are immediately dangerous to life and health.
'044 and '196 patents, which claim priority to 2003
and have similar specifications, are directed to marine
engine exhaust systems that reduce the amount of carbon
monoxide released in the exhaust. See '044
patent at Abstract, 1:13–14, 1:47–58,
2:12–30. The Background sections of the patents discuss
the use of chemical catalysts as "[s]ome of the most
effective and cost-efficient emissions controls" and
discuss that it was generally known that these catalysts work
better at higher temperatures. Id. at 1:21–27.
They note that most of the development work for exhaust
catalysts focused on catalytic converters in automotive
applications. But they explain that marine gen-sets are
subject to different regulations than automotive engines,
including regulations for emissions and safety. Id.
at 1:27–32. One such regulation requires that exposed
engine and exhaust system surface temperatures be kept low to
reduce fire hazard potential. Id. at 1:32–35.
The specifications explain that typical marine engines inject
seawater into exhaust flows to cool exhaust gases and
frequently circulate seawater through exhaust system
components to keep surface temperatures low. Id. at
of the '044 patent is representative of the asserted
claims, and recites:
1. A marine engine comprising: [A] an exhaust system
[B] a catalyst cooled by a flow of coolant, [C] the
catalyst arranged to intercept a flow of exhaust;
[D] a coolant injector that injects coolant into the flow
of exhaust at a point downstream of the catalyst; and
[E] a sensor arranged to sense a characteristic of the flow
of exhaust; and
[F] an engine controller configured to control an air/fuel
ratio of the engine as a function of the sensed exhaust flow
[G] wherein the engine controller is also configured to
govern engine speed with respect to a constant speed while
maintaining the air/fuel ratio.
'044 patent, 7:4–17 (emphases and bracketed letters
makes a low–carbon monoxide gen-set
("Safe-CO") that incorporates the technology of the
patents in suit. It introduced the Safe-CO gen-sets at a boat
show in 2004. Two Kohler employees visited Westerbeke's
trailer at that show and asked how the low carbon monoxide
levels were achieved. Westerbeke explained the technology to
them and in particular how the Safe-CO gen-set used a
catalyst and electronic fuel injection. About one year later,
Kohler launched its own low–carbon monoxide gen-sets.
'044 and '196 patents issued in 2008 and 2010,
respectively. In 2011, WBIP, the assignee of the patents in
suit, sued Kohler for patent infringement, asserting that
Kohler's low–carbon monoxide gen-sets infringed the
asserted claims. Following a six-day trial in May 2013, a
jury ruled in favor of WBIP, finding that Kohler infringed
all the asserted claims and that Kohler had failed to prove
that any of the asserted claims were invalid either for
obviousness or for lack of written description. The jury also
set a reasonable royalty rate, calculated a damages award of
$9, 641, 206, and found that WBIP had proven by clear and
convincing evidence that Kohler's infringement was
willful. After the jury verdict, WBIP moved for a permanent
injunction. The district court denied the motion. It also
denied Kohler's renewed motion for judgment as a matter
of law that the asserted claims were invalid for obviousness
and for lack of written description. The district court
granted Kohler remittitur, reducing the damages from $9, 641,
206 to $3, 775, 418. It granted WBIP's motion for
enhanced damages under 35 U.S.C. § 284. It applied the
factors from Read Corp. v. Portec, Inc., 970 F.2d
816 (Fed. Cir. 1992), and concluded it was appropriate to
enhance the damages by 50%. It found the case exceptional
under 35 U.S.C. § 285 on account of Kohler's willful
infringement and awarded reasonable attorney fees to WBIP. It
denied WBIP's motion to reconsider the denial of a
permanent injunction. Kohler appeals; WBIP cross-appeals. We
have jurisdiction under 28 U.S.C. § 1295(a)(1).
review a district court's denial of judgment as a matter
of law under the law of the regional circuit. Marine
Polymer Techs., Inc. v. HemCon, Inc., 672 F.3d 1350,
1357 (Fed. Cir. 2012). The First Circuit reviews such denials
de novo, explaining "a jury's verdict must be upheld
unless the facts and inferences, viewed in the light most
favorable to the verdict, point so strongly and
overwhelmingly in favor of the movant that a reasonable jury
could not have reached the verdict." Id. at
1357–58 (quoting Astro-Med, Inc. v. Nihon Kohden
Am., Inc., 591 F.3d 1, 13 (1st Cir. 2009)).
is a question of law based on underlying facts. Kinetic
Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d
1342, 1360 (Fed. Cir. 2012). When reviewing a denial of
judgment as a matter of law of obviousness, where there is a
black box jury verdict, as is the case here, we presume the
jury resolved underlying factual disputes in favor of the
verdict winner and leave those presumed findings undisturbed
if supported by substantial evidence. Spectralytics, Inc.
v. Cordis Corp., 649 F.3d 1336, 1342 (Fed. Cir. 2011).
We then examine the legal conclusion de novo in light of
those facts. Id.
argues that the district court erred in refusing to grant it
judgment as a matter of law that the asserted claims would
have been obvious in light of U.S. Patent No. 5, 832, 896
("Phipps") and standard elements that would have
been known to an ordinarily skilled artisan. It also argues
that WBIP's objective evidence of non-obviousness cannot
overcome the prima facie case and that WBIP failed to
establish a nexus between the objective evidence and the
merits of the claimed invention. We disagree on both points.
Obviousness and Motivation to Modify
argues, and WBIP does not dispute, that Phipps teaches every
element of claim 1 of the '044 patent except elements [B]
and [D] (identified above). And it is not disputed that these
elements [B] and [D] existed in other prior art. Citing
KSR, Kohler argues that because each of the elements
was known in the prior art, the question is whether a skilled
artisan starting with Phipps would have found it obvious to
add the conventional coolant features to Phipps to produce
the claimed invention. At trial, Kohler presented evidence
that a skilled artisan could do so if asked. See,
e.g., J.A. 15, 858 ("Basically, one of ordinary
skill, if they had [Phipps'] system and they were asked
to apply that to -- in a marine environment, they would have
known that the Coast Guard requires the exhaust system
surface to be cooled."); J.A. 14, 873 ("[I]f
someone said, Well, now you need to put [Phipps' engine]
in a marine environment, they would expect that by -- you
know, No. 1, the Coast Guard tells them what they need to
do."). Kohler's expert testified that if an
ordinarily skilled artisan was told to put Phipps' system
in a marine engine, that artisan would have been "very
confident that [he] would get predictable results." J.A.
15, 873. Kohler argues that combining Phipps' land-based
engine with the known coolant related elements necessary for
marine engines would yield predictable results and that there
were "design incentives and other market forces"
prompting one of skill in the art to adapt Phipps to boats.
Appellant's Br. 33.
trial, Kohler offered evidence that the government was
encouraging marine gen-set manufacturers to look to
automotive engines that successfully controlled exhaust
emissions and adapt them into marine engines, J.A. 19, 445,
including by evaluating the efficacy of using catalytic
converters, J.A. 18, 897. And Kohler's expert testified
that "people would have been motivated to include
technology of reducing emissions even with a 'wet'
exhaust system" like that in marine engines. J.A. 15,
881. Kohler provided evidence that skilled artisans looking
to manufacture marine engines would look to land engines
generally. And Kohler argued that Phipps emphasizes that its
invention is "particularly useful" in "low
emission" engines. J.A. 19, 049 at 9:42–46.
an ordinarily skilled artisan would have been motivated to
modify the teachings of a reference is a question of fact.
Kinetic Concepts, 688 F.3d at 1366–67;
Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073
(Fed. Cir. 2015); see also Wyers v. Master Lock Co.,
616 F.3d 1231, 1238–39 (Fed. Cir. 2010) (noting that
KSR "did not change th[e] rule" that
"motivation to combine prior art references [i]s a
question of fact"). We presume that the jury found that
an ordinarily skilled artisan would not have been motivated
to modify the teachings of Phipps. If such a fact finding is
supported by substantial evidence, we may not reverse it.
primary argument is that one of skill in the art would not
have been motivated to convert Phipps into a marine engine.
WBIP criticizes Kohler's expert testimony on the ground
that it focuses on whether one of skill in the art could
convert Phipps to a marine engine, not whether one of skill
in the art would have been motivated to do so. WBIP's
main argument is that one of skill would not have started
with Phipps because of concerns over whether Phipps would
even work for its intended purpose. WBIP's expert
testified that Phipps discloses an "exhaust, gas,
recirculation" control system for land, not marine,
generators that is not only atypical, but "totally
reverse" from any control system he had ever seen or
read about. J.A. 16, 026–28. He explained how an
ordinarily skilled artisan would have viewed Phipps'
reverse control system at the time of WBIP's invention:
[I]f I can equate this one to kind of a simple analogy, if
you're trying to build a piece of furniture. What's a
typical thing? You put on a piece of wood. You take a nail,
and you hit the nail with a hammer. In control terms, what
Mr. Phipps is suggesting is that you put the hammer on the
workbench, pick up the piece of furniture and bash the piece
of furniture onto the hammer. It's totally backwards
from what I believe one of skill in the art would even
attempt to make an engine run, much less try to gain some
secondary control like carbon monoxide.
J.A. 16, 027 (emphasis added). He further explained that
modifying Phipps' land engine to make a marine engine
would require a number of conversions, including adding a
water jacket around the exhaust, adding ignition protection
for any electrical component that could accidentally cause a
spark, and scaling down the engine parts in order to fit
within the smaller-sized marine engine. And he explained
that, given that modifying Phipps to make it a marine engine
would be "a lot of work, " an ordinarily skilled
artisan would not have seen the point in making such a
modification because he would not have expected it to result
in a gen-set that produced low amounts of carbon monoxide.
J.A. 16, 030. The expert explained that there was a
"catch up" problem with Phipps which would prove
particularly problematic in marine conditions. J.A. 16, 027;
see J.A. 15, 197. WBIP argued that based on this
evidence, a skilled artisan would not have had a reasonable
expectation the significant changes to Phipps would be
argues that it presented evidence upon which a jury could
have found that Phipps is "somehow so flawed that there
was no reason to upgrade it, or [devices] like it, to be
compatible with modern [devices]" and that this evidence
may be sufficient to show that an ordinarily skilled artisan
would not have modified that reference or combined it with
others. Cf. KSR, 550 U.S. at 418. Thus, there is
evidence of record from both sides regarding the presence or
absence of a motivation to convert Phipps into a marine-based
environment. As the ultimate question of obviousness is one
of law which must consider all four Graham factors
including objective indicia, we turn next to those factors,
which can be powerful, real-world indicators of what would
have been obvious.
objective indicia of non-obviousness play an important role
as a guard against the statutorily proscribed hindsight
reasoning in the obviousness analysis. Indeed, we have held
that "evidence of secondary considerations may often be
the most probative and cogent evidence in the record."
Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530,
1538 (Fed. Cir. 1983); see also Truswal Sys. Corp. v.
Hydro-Air Eng'g, Inc., 813 F.2d 1207, 1212 (Fed.
Cir. 1987) ("That evidence is 'secondary' in
time does not mean that it is secondary in
importance."); Graham v. John Deere Co. of Kan.
City, 383 U.S. 1, 36 (1966) ("[Objective indicia]
may also serve to guard against slipping into use of
hindsight, and to resist the temptation to read into the
prior art the teachings of the invention in issue."
(internal quotation marks and citation omitted)).
asserts on appeal that objective considerations of
non-obviousness can never overcome a strong prima facie case
of obviousness. Kohler misperceives the obviousness inquiry.
A determination of whether a patent claim is invalid as
obvious under § 103 requires consideration of all four
Graham factors, and it is error to reach a
conclusion of obviousness until all those factors are
considered. In re Cyclobenzaprine Hydrochloride
Extended-Release Capsule Patent Litig., 676 F.3d 1063,
1075 (Fed. Cir. 2012) (citing Richardson-Vicks Inc. v.
Upjohn Co., 122 F.3d 1476, 1483 (Fed. Cir. 1997));
see also Asyst Techs., Inc. v. Emtak, Inc., 544 F.3d
1310, 1313–16 (Fed. Cir. 2008) (considering, e.g., both
the scope and content of the prior art and the objective
considerations of non-obviousness before affirming the
district court's judgment as a matter of law). Indeed, we
have repeatedly stressed that objective considerations of
non-obviousness must be considered in every case.
Transocean Offshore Deepwater Drilling Inc. v. Maersk
Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012)
("[E]vidence rising out of the so-called 'secondary
considerations' must always when present be considered en
route to a determination of obviousness." (quoting
Stratoflex, 713 F.2d at 1538)). This requirement is
in recognition of the fact that each of the Graham
factors helps to inform the ultimate obviousness
determination. Kinetic Concepts, 688 F.3d at 1360;
Nike, Inc. v. Adidas, 812 F.3d 1326, 1340 (Fed. Cir.
2016) (holding that evidence of secondary considerations must
be examined to determine its impact on the first three
Graham factors). Thus, the strength of each
of the Graham factors must be weighed in every case
and must be weighted en route to the final determination of
obviousness or non-obviousness.
also argues that the objective evidence of non-obviousness is
so weak in this particular case that it does not support a
finding of non-obviousness. As explained below, we disagree
with Kohler's argument that the objective evidence of
non-obviousness is entitled to little or no weight in this
case. In fact, we find substantial evidence for the
jury's fact findings as to each of the objective
considerations of non-obviousness, which we conclude
collectively support the jury verdict.
appeal, Kohler argues that the objective evidence of
non-obviousness WBIP presented to the jury should not be
considered because WBIP failed to prove there is a nexus
between the presented evidence and the merits of the claimed
invention. Kohler's argument is that, in order to prove a
nexus exists, WBIP must show that what is "novel in the
claim, " which Kohler asserts are elements [B] and [D]