Case: 22-1373 Document: 43 Page: 1 Filed: 06/06/2023
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`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`YITA LLC,
`Appellant
`
`v.
`
`MACNEIL IP LLC,
`Appellee
`______________________
`
`2022-1373, 2022-1374
`______________________
`
`Appeals from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in Nos. IPR2020-
`01139, IPR2020-01142.
`______________________
`
`Decided: June 6, 2023
`______________________
`
`MARK P. WALTERS, Lowe Graham Jones PLLC, Seattle,
`WA, argued for appellant. Also represented by JASON A.
`FITZSIMMONS, RALPH WILSON POWERS, III, Sterne Kessler
`Goldstein & Fox, PLLC, Washington, DC.
`
` DAVID G. WILLE, Baker Botts LLP, Dallas, TX, argued
`for appellee. Also represented by CLARKE STAVINOHA,
`CHAD C. WALTERS; MICHAEL HAWES, Houston, TX.
` ______________________
`
`Before TARANTO, CHEN, and STOLL, Circuit Judges.
`
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`YITA LLC v. MACNEIL IP LLC
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`TARANTO, Circuit Judge.
`MacNeil IP LLC is the assignee of two U.S. patents,
`Nos. 8,382,186 and 8,833,834, that were the subject of de-
`cisions by the Patent Trial and Appeal Board in inter
`partes reviews (IPRs) of challenges to all claims of the pa-
`tents on obviousness grounds presented in petitions filed
`by Yita LLC. In IPR 2020-01139, the Board rejected Yita’s
`challenge to all claims (1–7) of the ’186 patent, concluding
`that—although a relevant artisan would have been moti-
`vated to combine, and had a reasonable expectation of suc-
`cess in combining, the teachings of the asserted prior-art
`references to arrive at each challenged claim—“[MacNeil’s]
`evidence of secondary considerations [was] compelling and
`indicative of non-obviousness.” J.A. 81. Yita appeals that
`ruling. In IPR 2020-01142, the Board, while agreeing with
`Yita’s challenge to claims 13–15 of the ’834 patent (a ruling
`that MacNeil does not appeal), rejected Yita’s challenge to
`claims 1–12. Yita appeals that ruling. For the reasons be-
`low, we reverse the Board’s judgment in the ’1139 IPR and
`affirm its judgment in the ’1142 IPR.
`I
`A
`The ’186 and ’834 patents share a specification, so for
`simplicity we cite only the specification of the ’186 patent.
`The subject addressed is a “vehicle floor tray . . . ther-
`moformed from a polymer sheet of substantially uniform
`thickness.” ’186 patent, Abstract. The specification ex-
`plains that traditional vehicle “floor mats end up not being
`centered on the area protected”; “pushed up so as to occlude
`the gas, brake, or clutch pedals”; or “bunched up or folded
`over” because “[h]uman beings have a tendency to move
`their feet around” and to “push around the floor mats.” Id.
`col. 1, lines 27, 30–33. “A need therefore persists,” the spec-
`ification adds, “for a floor tray that will have a more exact
`fit to the vehicle foot well” and “that stays in place once it
`is installed.” Id. col. 2, lines 4–7.
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`The specification describes a way to meet this need by
`creating a floor tray through a process that involves taking
`a digital scan of a vehicle’s foot well, id. col. 16, line 30,
`through col. 17, line 3, then using a thermoform process to
`give a sheet of polymer the shape of that scan, id. col. 17,
`line 20, through col. 18, line 58. The resulting vehicle tray
`“fits the surface” of the vehicle floor well “to an enhanced
`degree of precision.” Id. col. 17, lines 22–23. In claims 1–
`7 of the ’186 patent, the floor tray must “closely conform[]”
`to certain walls of the vehicle foot well, id. col. 19, line 45;
`id. col. 20, line 2, and in claims 1–12 of the ’834 patent,
`portions of the floor tray must be “within one-eighth of an
`inch” of certain walls of the vehicle foot well, ’834 patent,
`col. 20, line 39.1 Figure 1 illustrates the claimed floor tray.
`
`
`
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`
`
`
`
`
`
`The ’186 patent has seven claims, one of which (claim
`1) is independent. The ’834 patent has 15 claims, four of
`
`
`1 Claims 13–15 of the ’834 patent require neither
`close conformance nor a maximum separation of one-eighth
`of an inch. See ’834 patent, col. 22, line 56, through col. 24,
`line 19.
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`YITA LLC v. MACNEIL IP LLC
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`which (claims 1, 5, 9, and 13) are independent. Claim 1 of
`each patent is reproduced below.
`1. A vehicle floor tray thermoformed from a sheet
`of thermoplastic polymeric material of substan-
`tially uniform thickness, comprising:
`a central panel substantially conforming to
`a floor of a vehicle foot well, the central
`panel of the floor tray having at least one
`longitudinally disposed lateral side and at
`least one transversely disposed lateral
`side;
`a first panel integrally formed with the cen-
`tral panel of the floor tray, upwardly ex-
`tending from the transversely disposed
`lateral side of the central panel of the floor
`tray, and closely conforming to a first foot
`well wall, the first panel of the floor tray
`joined to the central panel of the floor tray
`by a curved transition;
`a second panel integrally formed with the
`central panel of the floor tray and the first
`panel, upwardly extending from the longi-
`tudinally disposed lateral side of the cen-
`tral panel of the floor tray, and closely
`conforming to a second foot well wall, the
`second panel of the floor tray joined to the
`central panel of the floor tray and to the
`first panel of the floor tray by curved tran-
`sitions;
`a reservoir disposed in the central panel of
`the floor tray;
`a plurality of upstanding, hollow, elongate
`baffles disposed in the reservoir, each of the
`baffles having at least two ends remote
`from each other, the central panel, the first
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`panel, the second panel, the reservoir and
`the baffles each having a thickness from a
`point on the upper surface to a closest point
`on the bottom surface thereof, said thick-
`nesses, as a result of the tray being ther-
`moformed from the sheet of thermoplastic
`polymeric material of substantially uni-
`form thickness, being substantially uni-
`form throughout the tray;
`the baffles each having a width, in any hor-
`izontal direction, of more than two times its
`thickness, the baffles adapted to elevate
`the shoe or foot of the occupant above fluid
`collected in the reservoir, and further
`adapted to impede lateral movement, in-
`duced by a change in vehicle speed or direc-
`tion, of fluid collected in the reservoir, any
`portion of the reservoir connected to a re-
`mote portion of the reservoir by a path
`formed around ends of the baffles.
`’186 patent, col. 19, line 35, through col. 20, line 24.
`1. A system including a vehicle and a floor tray for
`consumer installation into a predetermined foot
`well of the vehicle, the system comprising:
`a vehicle foot well having a floor, a substan-
`tially longitudinally disposed first foot well
`wall upstanding from the floor, a substan-
`tially transversely disposed second foot
`well wall upstanding from the floor and
`joined to the first foot well wall, a substan-
`tially longitudinally disposed third foot
`well wall upstanding from the floor and
`joined to the second foot well wall; and
`a vehicle floor tray molded from a sheet of
`polymeric material
`of
`substantially
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`YITA LLC v. MACNEIL IP LLC
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`uniform thickness, a central panel of the
`tray substantially conforming to the floor of
`the vehicle foot well, a substantially longi-
`tudinally disposed first tray wall joined to
`the central panel by a curved transition
`and standing up from the central panel to
`substantially conform to the first foot well
`wall, a substantially transversely disposed
`second tray wall joined to the central panel
`and to the first tray wall by respective
`curved transitions and standing up from
`the central panel, the second tray wall sub-
`stantially conforming to the second foot
`well wall, a substantially longitudinally
`disposed third tray wall joined to the cen-
`tral panel and to the second tray wall by
`respective curved transitions and standing
`up from the central panel, the central panel
`and first, second and third tray walls each
`having an outer surface facing the vehicle
`foot well and an inner surface opposed to
`the outer surface, a thickness of the central
`panel and of the, first, second and third
`tray walls measured between the outer sur-
`face and the inner surface thereof being
`substantially uniform throughout the tray;
`at least 90 percent of that one-third of the
`outer surfaces of the first, second and third
`tray walls which are closest to the respec-
`tive top margins of the first, second or third
`tray walls being within one-eighth of an
`inch of the respective foot well walls.
`’834 patent, col. 20, lines 4–40.
`B
`On June 30, 2020, Yita petitioned for IPRs of the ’186
`and ’834 patents, challenging all claims of each patent. The
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`Board, acting for the Director of the Patent and Trademark
`Office, instituted both IPRs on January 13, 2021—IPR
`2020-01139 for the ’186 patent and IPR 2020-01142 for the
`’834 patent. The Board issued its final written decisions in
`both IPRs on January 3, 2022.
`1
`In its final written decision in the ’1139 IPR, the Board
`held claims 1–7 of the ’186 patent not unpatentable for ob-
`viousness. The Board first determined that a relevant ar-
`tisan would have been motivated to combine, and had a
`reasonable expectation of success in combining, the teach-
`ings of three asserted prior-art references—Rabbe, Yung,
`and Gruenwald—to arrive at claims 1–7. J.A. 13–71.
`Rabbe, titled “[p]rotective tray for vehicle interiors,” is a
`French patent publication (No. 2,547,252), which (in the
`English translation used here) discloses “floor mats with
`raised edges, forming a tray and providing effective protec-
`tion of the floors and side walls of vehicle interiors.” J.A.
`1729. The sides of Rabbe’s floor mat “perfectly conform to
`the contour of the vehicle interior.” J.A. 1730. Critically,
`the Board found that “Rabbe discloses the close conform-
`ance limitation in claim 1” of the ’186 patent. J.A. 39–40.
`Yung, titled “mat used in cars,” is a U.S. patent application
`publication (Publication No. 2002/0045029 of Application
`No. 09/903,202), which describes a vehicle floor mat with a
`middle plastic layer that is “flexible, light weight, and wa-
`terproof Polyethylene . . . or Polyethylene–Vinyl Acetate
`. . . foam.” J.A. 1748, 1753 ¶ 11. Gruenwald is a book titled
`Thermoforming: A Plastics Processing Guide, which recites
`methods of thermoforming. J.A. 1755.
`Notwithstanding its determination about motivation to
`combine and expectation of success in combining the prior-
`art references to arrive at the inventions claimed in the
`’186 patent, the Board rejected Yita’s obviousness chal-
`lenge because, the Board concluded, MacNeil’s “evidence of
`secondary considerations [was] compelling and indicative
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`YITA LLC v. MACNEIL IP LLC
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`of non-obviousness.” J.A. 81. “In order . . . to accord sub-
`stantial weight to secondary considerations,” the Board
`recognized, “there must be a ‘legally and factually suffi-
`cient connection’”—i.e., a nexus—“between the evidence
`and the patented invention.” J.A. 72–73 (quoting Fox Fac-
`tory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir.
`2019)). And “if the marketed product embodies the claimed
`features, and is coextensive with them, then a nexus is pre-
`sumed.” Brown & Williamson Tobacco Corp. v. Philip Mor-
`ris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000). The Board
`found that MacNeil was entitled to a presumption of nexus,
`J.A. 75, because the Board found that MacNeil’s marketed
`“WeatherTech[] vehicle trays embody the claimed inven-
`tion and are coextensive with the claims,” J.A. 73–74. Mac-
`Neil’s successful coextensiveness contention necessarily
`treated as insignificant any difference between close con-
`formance of the tray with the foot well overall and close
`conformance of the tray with the walls of the foot well re-
`cited in claim 1.
`The Board recognized that, earlier in its opinion, it had
`already found that “Rabbe discloses the close conformance
`limitation,” J.A. 39–40, but it found a presumption of nexus
`nonetheless, J.A. 74–75. The Board stated that its earlier
`finding “does not establish that close conformance was
`well-known as [Yita] contends.” J.A. 75 (emphasis added).
`And the Board stated, relying on WBIP, LLC v. Kohler Co.,
`829 F.3d 1317 (Fed. Cir. 2016), that “[t]he Federal Circuit
`instructs that ‘it is the claimed combination as a whole that
`serves as a nexus for objective evidence; proof of nexus is
`not limited to only when objective evidence is tied to the
`supposedly “new” feature(s).’” J.A. 75 (quoting WBIP, 829
`F.3d at 1330).
`The Board then discussed three secondary considera-
`tions—commercial success, long-felt but unsolved need,
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`and industry praise.2 It found that “the evidence of [each
`consideration was] due to the close conforming vehicle floor
`tray,” and—presumably because it already dismissed that
`fact because close conformance was not “well-known”—it
`concluded that the evidence on those secondary considera-
`tions was “persuasive of non-obviousness.” J.A. 78 (long-
`felt need); J.A. 79 (industry praise); see J.A. 77 (commercial
`success) (same finding with the addition of one modifier:
`“strongly persuasive of non-obviousness”
`(emphasis
`added)). Giving “substantial weight” to the “evidence of
`secondary considerations,” the Board held claims 1–7 of the
`’186 patent not unpatentable. J.A. 81.
`2
`In its final written decision in the ’1142 IPR, the Board
`held claims 13–15 of the ’834 patent unpatentable for obvi-
`ousness. Although MacNeil has not appealed that ruling,
`it is worth noting that, in reaching that conclusion, the
`Board found unpersuasive MacNeil’s secondary-considera-
`tion evidence—which Yita asserted at oral argument in
`this court, without dispute from MacNeil, was identical to
`the secondary-consideration evidence in the ’1139 IPR. See
`Oral Arg. at 8:55–9:03 (counsel for Yita stating: “It is im-
`portant to note that the . . . evidence on secondary consid-
`erations was identical for . . . both IPRs.”). That evidence,
`the Board found, “focuse[d] on the close conformity of the
`tray to the vehicle foot well, features that are not recited in
`claims 13–15.” J.A. 136; see also J.A. 137 (“[T]he long-felt
`need demonstrated by [MacNeil’s] evidence relates entirely
`to the closely-conforming floor tray . . . .”); J.A. 138 (“[T]he
`
`2 The Board also discussed two other secondary con-
`siderations, competitor licenses and failure of others, but
`found that the competitor-licenses evidence did not weigh
`in favor of nonobviousness and that the failure-of-others
`argument was untimely raised. MacNeil appears not to
`challenge those two findings on appeal.
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`evidence of commercial success of the WeatherTech floor
`trays leads us to find that the commercial success is due to
`the close-conformity of the trays in the foot well . . . .”); J.A.
`139 (“[T]he industry praise of the WeatherTech floor trays
`is due to the close-conformity of the trays in the foot well
`. . . .”).
`With respect to claims 1–12, the Board rejected Yita’s
`challenge at the prima-facie stage of analysis. Specifically,
`it found that the one-eighth-inch limitation of claims 1–12
`was not disclosed by any of the asserted prior-art refer-
`ences. In relying on that finding to hold the prima-facie
`case unpersuasive (making secondary-consideration evi-
`dence immaterial for these claims), the Board declined to
`consider an argument that Yita raised in a footnote in its
`reply brief. J.A. 154–55, 157–58. That footnote, which ap-
`pears in a section addressing what “Rabbe . . . disclose[s],”
`J.A. 14784, reads: “MacNeil has not established any criti-
`cality to the 1/8 inch tolerance limitations in claims 1, 5,
`and 9, and it would have been obvious to optimize the tray
`to fit as closely as desired,” J.A. 14786 (citing J.A. 15517
`¶ 163; J.A. 3918 ¶ 24). Finding that Yita’s petition “does
`not reason that it would have been obvious to modify
`Rabbe’s floor tray to meet the conformance limitations,”
`J.A. 154, the Board declined to consider Yita’s reply–foot-
`note position because it was a “new position” and “outside
`the scope of a proper reply under [37 C.F.R. §] 42.23(b),”
`J.A. 155; see also J.A. 158.
`Yita timely appealed from both final written decisions
`on January 14, 2022, within the 63 days allowed by 37
`C.F.R. § 90.3(a)(1). We have jurisdiction under 28 U.S.C.
`§ 1295(a)(4)(A).
`
`II
`For a claimed invention to be patentable, the differ-
`ences between it and the prior art must be such that a rel-
`evant artisan at the priority date would not have found the
`claimed subject matter as a whole obvious. 35 U.S.C.
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`§ 103(a) (2011).3 “Obviousness is a question of law based
`on underlying facts, including the scope and content of the
`prior art, differences between the prior art and the claims
`at issue, the level of ordinary skill, and relevant evidence
`of secondary considerations.” Henny Penny Corp. v. Fry-
`master LLC, 938 F.3d 1324, 1331 (Fed. Cir. 2019) (citing
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)); see
`KSR International Co. v. Teleflex Inc., 550 U.S. 398, 406–
`07, 427 (2007); Intercontinental Great Brands LLC v. Kel-
`logg North America Co., 869 F.3d 1336, 1343–44, 1347
`(Fed. Cir. 2017).
` Secondary considerations include
`whether the claimed invention has been commercially suc-
`cessful, whether it solved a long-felt but unsolved need in
`the art, and whether the relevant industry praised it. See
`Graham, 383 U.S. at 17–18. To be relevant, such a second-
`ary consideration must have a “legally and factually suffi-
`cient connection” (nexus) to the claimed invention. Fox
`Factory, 944 F.3d at 1373. A nexus is presumed when a
`commercial product (if relevantly successful, for example)
`“is the invention disclosed and claimed in the patent.” Im-
`munex Corp. v. Sandoz Inc., 964 F.3d 1049, 1067 (Fed. Cir.
`2020) (quoting WBIP, 829 F.3d at 1329).
`We review the Board’s legal determinations de novo
`and the Board’s factual findings for substantial-evidence
`support. See Henny Penny, 938 F.3d at 1330. “A finding is
`supported by substantial evidence if a reasonable mind
`
`
`3 The parties do not dispute that, as the Board con-
`cluded, the version of § 103 that applies to the present IPRs
`is the version in force before the amendments made by the
`Leahy–Smith America Invents Act (AIA), Pub. L. No. 112-
`29, 125 Stat. 284 (2011). See J.A. 5 n.5; J.A. 94 n.1. The
`parties have not suggested that the AIA changes make a
`difference here, so § 103 precedents are pertinent whether
`they involved the pre-AIA or post-AIA version of the provi-
`sion.
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`might accept the evidence as adequate to support the find-
`ing.” Id. (citing Consolidated Edison Co. v. National Labor
`Relations Board, 305 U.S. 197, 229 (1938)).
`Yita presents two arguments to us. First, Yita argues
`that, in the ’1139 IPR, the Board made a result-determina-
`tive legal error regarding MacNeil’s secondary-considera-
`tion evidence in rejecting Yita’s challenge to claims 1–7 of
`the ’186 patent. Second, Yita argues that, in the ’1142 IPR,
`the Board abused its discretion by not considering Yita’s
`argument raised in a footnote of its reply brief. We agree
`with Yita’s first argument, but we reject its second.
`A
` In the ’1139 IPR, the Board rejected the obviousness
`challenge to claims 1–7 of the ’186 patent—despite deter-
`mining that a relevant artisan would have been motivated
`with a reasonable expectation of success to combine the
`teachings of Rabbe, Yung, and Gruenwald to arrive at the
`claimed inventions—solely because it found MacNeil’s sec-
`ondary-consideration evidence “compelling.” J.A. 81. The
`Board’s finding of nexus, however, rests on legal errors,
`and once those errors are corrected, the finding is not sup-
`ported by substantial evidence. The Board’s judgment that
`claims 1–7 of the ’186 patent are not unpatentable must
`therefore be reversed.
`After accepting the relevancy of MacNeil’s secondary-
`consideration evidence by finding a presumption of nexus,
`the Board reasoned that its finding that “Rabbe discloses
`the close conformance limitation in claim 1” of the ’186 pa-
`tent, J.A. 39–40, did not undermine any determination of
`nexus to the claimed invention. The Board offered what
`can be viewed as two reasons. But both are legally incor-
`rect.
` First, the Board stated that its finding regarding
`Rabbe’s disclosure “does not establish that close conform-
`ance was well-known as [Yita] contends.” J.A. 75
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`(emphasis added). But our case law makes clear that “ob-
`jective evidence of nonobviousness lacks a nexus if it exclu-
`sively relates to a feature that was ‘known in the prior
`art’”—not necessarily well-known. Rambus Inc. v. Rea, 731
`F.3d 1248, 1257 (Fed. Cir. 2013) (emphasis added) (quoting
`Ormco Corp. v. Align Technology, Inc., 463 F.3d 1299, 1312
`(Fed. Cir. 2006)); see also Ethicon Endo-Surgery, Inc. v.
`Covidien LP, 812 F.3d 1023, 1034 (Fed. Cir. 2016) (“[I]f the
`feature that creates the commercial success was known in
`the prior art, the success is not pertinent.” (quoting Ormco,
`463 F.3d at 1312)). Where prior art teaches a feature and
`a relevant artisan would have been motivated to use it in
`combination with other prior-art teachings with a reason-
`able expectation of success to arrive at the claimed inven-
`tion—as the Board here found—a secondary consideration
`related exclusively to that feature does not logically under-
`mine the inference from those premises that the claimed
`invention would have been obvious from the full body of
`prior art just because the feature was not well known.
`Second, the Board, citing WBIP, stated that “[t]he Fed-
`eral Circuit instructs that ‘it is the claimed combination as
`a whole that serves as a nexus for objective evidence; proof
`of nexus is not limited to only when objective evidence is
`tied to the supposedly “new” feature(s).’” J.A. 75 (quoting
`and citing WBIP, 829 F.3d at 1330). But in WBIP we rec-
`ognized that secondary-consideration evidence “may be
`linked to an individual element” of the claimed invention
`or “to the inventive combination of known elements” in the
`prior art. 829 F.3d at 1332. It was for the latter circum-
`stance, which was the circumstance present in WBIP, that
`this court in WBIP made the point relied on by the Board
`here. But that rationale, applicable when no single feature
`(but only the combination) is responsible for the secondary-
`consideration evidence, does not undermine our case law,
`just discussed, denying force to a secondary consideration
`that is exclusively related to a single feature that is in the
`prior art.
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`That is this case. The Board found that MacNeil’s sec-
`ondary-consideration evidence “relate[d] entirely” to the
`close-conformance limitation disclosed in the prior art. J.A.
`137; see also J.A. 137–39 (finding that the evidence of com-
`mercial success and industry praise “is due to the close-con-
`formity of the trays in the foot well”). And that finding is
`supported by substantial evidence. See, e.g., J.A. 1097
`(MacNeil arguing in sur-reply that its witness, Weather-
`Tech’s Vice President of Product Development, “testified
`that customers are willing to pay a premium for Weather-
`Tech’s trays primarily due to their fit in the vehicle, even
`as he acknowledged that marketing could also contribute”
`(citing J.A. 9051 ¶¶ 77–78; J.A. 4583, lines 11–16)); J.A.
`9056 ¶¶ 83–84 (WeatherTech’s Vice President of Product
`Development stating that “[c]onsumer reviews often point
`out the closeness of fit as the salient characteristic of the
`part, or as the reason for purchase” and that “[t]he biggest
`reason for the WeatherTech FloorLiner’s commercial suc-
`cess, based on the feedback received over the years, is that
`they ‘fit’ the foot wells for which they were custom-de-
`signed, to a degree not achieved by competitors”).4 Thus,
`
`4 We note in particular that the Board found Mac-
`Neil’s evidence of industry praise to be “relate[d] specifi-
`cally to the ‘close conformance’ [feature],” J.A. 139 (citing
`J.A. 9220 ¶ 171), and that in this court MacNeil does not
`challenge, but rather expressly defends, the Board’s find-
`ing regarding industry praise, MacNeil’s Response Br. at
`71–73. The absence of a challenge to that finding is hardly
`surprising, because, while MacNeil refers to one article in
`the record that mentions other features as well, id. at 72
`(citing J.A. 9892–93), the Board was not required to deem
`that article significant within the full record on industry
`praise. Nor, in any event, would this one article be entitled
`to significant weight in the overall legal weighing of the
`prior-art and secondary-consideration findings and evi-
`dence.
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`15
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`the Board’s own findings, in light of the proper application
`of our precedent, compel the conclusion that MacNeil’s sec-
`ondary-consideration evidence is of no relevance to the ob-
`viousness inquiry in this case.
`The Board’s finding that the WeatherTech floor tray is
`coextensive with the claimed invention does not alter the
`result. The coextensiveness inquiry bears only on the pre-
`sumption of nexus; it does not decide the overall nexus
`question. And the presumption inquiry compares only the
`claim with the commercial product. It does not involve the
`connection between the commercial product and prior art,
`which governs the final nexus question and here is the de-
`cisive problem for MacNeil.
`In sum, the secondary-consideration evidence was the
`only Graham factor that the Board deemed to weigh in fa-
`vor of nonobviousness. For the reasons that we have ex-
`plained, the finding of secondary considerations lacks
`substantial-evidence support under the proper legal stand-
`ard. Because the Board determined that a relevant artisan
`would have been motivated to combine the teachings of
`Rabbe, Yung, and Gruenwald to arrive at claims 1–7 of the
`’186 patent with a reasonable expectation of success, the
`Board’s judgment that those claims are not unpatentable
`for obviousness must be reversed.
`B
`Yita’s second argument on appeal concerns the Board’s
`rejection of its challenge to claims 1–12 of the ’834 patent
`in the ’1142 IPR. Yita contends that the Board abused its
`discretion by declining to consider Yita’s argument about
`modifying the teaching of Rabbe, an argument that the
`Board declined to consider because it was presented too
`late—in a footnote in Yita’s reply brief. We see no abuse of
`discretion by the Board.
`The Board’s rules of practice provide: “A reply may only
`respond to arguments raised
`in the corresponding
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`YITA LLC v. MACNEIL IP LLC
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`opposition, patent owner preliminary response, patent
`owner response, or decision on institution.” 37 C.F.R.
`§ 42.23(b). This regulation means that an “IPR petitioner
`may not raise in reply ‘an entirely new rationale,’” Henny
`Penny, 938 F.3d at 1330–31 (quoting Intelligent Bio-Sys-
`tems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1370
`(Fed. Cir. 2016)), not “raised in its petition” or “responsive
`to arguments raised in the patent owner’s response brief,”
`Apple Inc. v. Andrea Electronics Corp., 949 F.3d 697, 706
`(Fed. Cir. 2020). The regulation “reflects . . . efficiency and
`fairness interests,” Ariosa Diagnostics v. Verinata Health,
`Inc., 805 F.3d 1359, 1368 (Fed. Cir. 2015), and flows from
`the statutory “requirement that the initial petition identify
`‘with particularity’ . . . ‘the grounds for the challenge to
`each claim,’” Intelligent Bio-Systems, 821 F.3d at 1369
`(quoting 35 U.S.C. § 312(a)(3)).
`The Board “must make [the] judgment[] about . . .
`when a [r]eply contention crosses the line from the respon-
`sive to the new,” Ariosa Diagnostics, 805 F.3d at 1368—a
`judgment that we review for abuse of discretion, Henny
`Penny, 938 F.3d at 1330 (citing Intelligent Bio-Systems, 821
`F.3d at 1367). “The Board abuses its discretion if its deci-
`sion: ‘(1) is clearly unreasonable, arbitrary, or fanciful; (2)
`is based on an erroneous conclusion of law; (3) rests on
`clearly erroneous fact finding; or (4) involves a record that
`contains no evidence on which the Board could rationally
`base its decision.’” Henny Penny, 938 F.3d at 1330 (quoting
`Intelligent Bio-Systems, 821 F.3d at 1367).
`Yita contends that the argument raised in a footnote of
`its reply brief before the Board—that “it would have been
`obvious to optimize the tray to fit as closely as desired,” J.A.
`14786 n.4 (citing J.A. 15517 ¶ 163; J.A. 3918 ¶ 24)—was
`not a new, untimely argument because “Yita raised the ar-
`gument in its [p]etition,” Yita’s Opening Br. at 44. Yita di-
`rects us to passages of its petition that, Yita says, anchor
`its reply argument to those made in its petition. The first
`such passage, which appears in a section of Yita’s petition
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`that overarchingly argues that “Rabbe . . . discloses [limi-
`tation] 1[h],” J.A. 14229 (second bracketing in original),
`reads: “Rabbe discloses, or at least suggests, having at least
`90 percent of the one-third of the outer surfaces of the tray
`walls closest to the top margins being within one-eighth of
`an inch of the respective foot well walls,” J.A. 14230. An-
`other passage reads: “[A relevant artisan] would have been
`able to make molds for different vehicle interiors (or differ-
`ent areas of a vehicle’s interior) and adjust the mold-mak-
`ing process to achieve even greater conformity with the
`vehicle interior.” J.A. 14237.
`We have repeatedly held that the Board acts within its
`discretion when it declines under section 42.23(b) to con-
`sider a new theory of unpatentability raised for the first
`time in reply. See, e.g., Intelligent Bio-Systems, 821 F.3d
`at 1369–70; Ariosa Diagnostics, 805 F.3d at 1367–68. Most
`notably for the present case, in Intelligent Bio-Systems, we
`affirmed the Board’s decision not to consider an argument
`made on reply because in the original petition the chal-
`lenger argued only that a reference disclosed a limitation
`(“Zavgorodny teaches the desired property . . . that the az-
`idomethyl group ‘can be removed under very specific and
`mild conditions.’”), while in the reply the challenger argued
`that a relevant artisan would have considered it obvious to
`modify that reference to arrive at the limitation (“[A]n or-
`dinary artisan would have considered it obvious to use
`deprotecting conditions other than those described in
`Zavgorodny.”). 821 F.3d at 1369 (emphasis omitted). The
`present case is sufficiently similar to Intelligent Bio-Sys-
`tems that we cannot say that the Board abused its discre-
`tion in its ruling here.
`Like the petitioner in Intelligent Bio-Systems, Yita
`waited until its reply to present what in substance is an
`argument that it would have been obvious to a relevant ar-
`tisan to modify Rabbe to arrive at the one-eighth limita-
`tion.
` This argument was a “meaningfully distinct
`contention,” Ariosa Diagnostics, 805 F.3d at 1367, from
`
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`YITA LLC v. MACNEIL IP LLC
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`those made in Yita’s petition, which focused (fo