Wbip, LLC v. Kohler Co. ( 2016 )

United States Court of Appeals
for the Federal Circuit
______________________
WBIP, LLC,
Plaintiff-Cross-Appellant
v.
KOHLER CO.,
Defendant-Appellant
______________________
2015-1038, 2015-1044
______________________
Appeals from the United States District Court for the
District of Massachusetts in No. 1:11-cv-10374-NMG,
Judge Nathaniel M. Gorton.
______________________
Decided: July 19, 2016
______________________
DAVID 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.
E. 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, Washing-
ton, DC; STEVEN M. BAUER, WILLIAM DAVID DALSEN,
SAFRAZ ISHMAEL, Proskauer Rose LLP, Boston, MA.
______________________
2 WBIP, LLC v. KOHLER CO.
Before MOORE, O’MALLEY, and CHEN, Circuit Judges.
MOORE, Circuit Judge.
Kohler Co. appeals from the United States District
Court for the District of Massachusetts’ denial of judg-
ment 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 further consideration.
BACKGROUND
Westerbeke Corporation 1 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
1 John Westerbeke, the sole inventor of the patents
in suit, majority-owns Westerbeke Corporation and whol-
ly owns the assignee of the patents in suit, WBIP, which
stands for “Westerbeke Intellectual Property.”
WBIP, LLC v. KOHLER CO. 3
vented out of the boat into a safe location to reduce poten-
tial 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.
The ’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 cata-
lysts 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 temper-
atures. Id. at 1:21–27. They note that most of the devel-
opment 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 emis-
sions 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 1:35–39.
Claim 1 of the ’044 patent is representative of the as-
serted claims, and recites:
1. A marine engine comprising:
[A] an exhaust system including
4 WBIP, LLC v. KOHLER CO.
[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 characteristic;
[G] wherein the engine controller is also config-
ured 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
added).
Westerbeke makes a low–carbon monoxide gen-set
(“Safe-CO”) that incorporates the technology of the pa-
tents 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.
The ’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
WBIP, LLC v. KOHLER CO. 5
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 judg-
ment 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 recon-
sider the denial of a permanent injunction. Kohler ap-
peals; WBIP cross-appeals. We have jurisdiction under 28
U.S.C. § 1295(a)(1).
DISCUSSION
We review a district court’s denial of judgment as a
matter of law under the law of the regional circuit. Ma-
rine 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 over-
whelmingly 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)).
6 WBIP, LLC v. KOHLER CO.
I. Obviousness
Obviousness 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.Kohler 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.2
2 At trial, Kohler argued specific combinations of
prior art would have rendered the claims obvious. See,
e.g., J.A. 15,873–74 (Kohler’s expert testifying that “it
would have been obvious to include” Phipps’ constant
speed engine in the control system described in another
reference (“Fujimoto”)). On appeal, Kohler argues that it
would have been obvious to a skilled artisan to adapt
Phipps with “standard coolant elements” that “also exist-
ed in the prior art,” identifying two references that pur-
portedly describe these “standard elements.” Appellant’s
Br. 27, 30–31. To facilitate appellate review, parties
should make explicit their analysis as to the combination
of references on which they rely, as well as the asserted
reason(s) to combine them. See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). This is especially true
here, where Kohler bears the burden on appeal to prove
the evidence points so strongly and overwhelmingly in its
WBIP, LLC v. KOHLER CO. 7
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 objec-
tive evidence and the merits of the claimed invention. We
disagree on both points.
A. Obviousness and Motivation to Modify
Kohler 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 inven-
tion. At trial, Kohler presented evidence that a skilled
artisan could do so if asked. See, e.g., J.A. 15,858 (“Basi-
cally, one of ordinary skill, if they had [Phipps’] system
and they were asked to apply that to -- in a marine envi-
ronment, 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 pre-
dictable results and that there were “design incentives
favor that a reasonable jury could not have found facts in
favor of WBIP.
8 WBIP, LLC v. KOHLER CO.
and other market forces” prompting one of skill in the art
to adapt Phipps to boats. Appellant’s Br. 33.
At 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 in-
clude 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.
Whether 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.
WBIP’s 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 testi-
mony 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
WBIP, LLC v. KOHLER CO. 9
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 anal-
ogy, 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 protec-
tion 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
10 WBIP, LLC v. KOHLER CO.
reasonable expectation the significant changes to Phipps
would be successful.
WBIP 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 indica-
tors of what would have been obvious.
B. Objective Considerations
The objective indicia of non-obviousness play an im-
portant 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)).
Kohler asserts on appeal that objective considerations
of non-obviousness can never overcome a strong prima
facie case of obviousness. Kohler misperceives the obvi-
ousness inquiry. A determination of whether a patent
WBIP, LLC v. KOHLER CO. 11
claim is invalid as obvious under § 103 requires consider-
ation of all four Graham factors, and it is error to reach a
conclusion of obviousness until all those factors are con-
sidered. 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 Gra-
ham factors must be weighed in every case and must be
weighted en route to the final determination of obvious-
ness or non-obviousness.
Kohler 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
12 WBIP, LLC v. KOHLER CO.
objective considerations of non-obviousness, which we
conclude collectively support the jury verdict.
1. Nexus
On 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] of the claimed invention that are not disclosed
by Phipps, is tied to the asserted objective evidence.
As WBIP correctly argues, there is a presumption of
nexus for objective considerations when the patentee
shows that the asserted objective evidence is tied to a
specific product and that product “is the invention dis-
closed and claimed in the patent.” 3 J.T. Eaton & Co. v.
Atl. Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir.
1997); Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294,
3 A limited exception to the presumption of nexus
exists where the patented invention is only a component
of the product to which the asserted objective considera-
tions are tied. Demaco Corp. v. F. Von Langsdorff Licens-
ing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). Kohler
does not argue that this exception applies in this case, nor
could it. The asserted claims are drawn to a “marine
engine” (’044 patent claims 1–6, 8, 10–11) or to a “method
of controlling emissions from an internal combustion
engine configured for marine application” (’044 patent
claim 12 and ’196 patent claims 26 and 28). The
Westerbeke and Kohler low–carbon monoxide gen-sets are
the identical type of device, marine engines, as that of the
asserted claims and practice the claimed methods in order
to control their emissions.
WBIP, LLC v. KOHLER CO. 13
1310–11 (Fed. Cir. 2010); Brown & Williamson Tobacco
Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1130 (Fed. Cir.
2000); Demaco, 851 F.2d at 1392–93.
The presumption of nexus is rebuttable: a patent chal-
lenger may respond by presenting evidence that shows
the proffered objective evidence was “due to extraneous
factors other than the patented invention.” Demaco, 851
F.2d at 1393. Such extraneous factors include additional
unclaimed features and external factors, such as im-
provements in marketing. See, e.g., Ecolochem, Inc. v. S.
Cal. Edison Co., 227 F.3d 1361, 1378 (Fed. Cir. 2000)
(applying presumption even though commercial embodi-
ment had unclaimed mobility feature); Ormco Corp. v.
Align Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006)
(holding that evidence that commercial success was due to
unclaimed or non-novel features of device “clearly rebuts
the presumption that [the commercial product’s] success
was due to the claimed and novel features”). However, a
patent challenger cannot successfully rebut the presump-
tion with argument alone—it must present evidence.
Brown & Williamson, 229 F.3d at 1130 (citing Demaco,
851 F.2d at 1393).
At trial, WBIP presented evidence that specific prod-
ucts (i.e., Westerbeke’s Safe-CO gen-sets and Kohler’s
accused products) are embodiments of the invention as
claimed in the asserted claims. See Cross-Appellant’s Br.
45–47 (citing J.A. 15,191–92, 15,195–200, 15,821–22,
17,279, 17,283, 17,287, 17,291, 17,295, 17,299, 17,303,
17,307, 17,253). And its proffered objective evidence
relates to these specific products. As Kohler agrees,
WBIP presented evidence on five types of objective evi-
dence of non-obviousness, all of which are tied to the
claimed gen-sets achieving safe carbon monoxide levels.
This evidence was: 1) the long-felt need for reducing
carbon monoxide poisonings from marine gen-sets, Cross-
Appellant’s Br. 34–35 (citing J.A. 17,915, 17,742, 17,204,
15,371–72, 15,478, 15,500–01, 15,448–52, 15,996–97);
14 WBIP, LLC v. KOHLER CO.
2) industry skepticism that gen-sets producing exhaust
substantially free of carbon monoxide could be produced,
id. at 39–40 (citing J.A. 17,213–15, 15,373–75, 15,489–
90); 3) industry praise of Westerbeke’s Safe-CO gen-sets,
including winning the National Marine Manufacturers
Association Innovation Award in 2004, id. at 40–41 (citing
J.A. 15,562–68, 17,915, 17,252, 17,254–55); 4) Kohler’s
copying of Westerbeke’s Safe-CO gen-sets following a
2004 boat show, id. at 41–43 (citing J.A. 15,375–77,
17,784–88, 17,813); and 5) the commercial success of low–
carbon monoxide gen-sets, including Kohler’s gen-sets,
that incorporate the patented technology, id. at 43–45
(citing J.A. 17,899, 16,003, 15,592–601, 17,785, 17,915,
17,780, 17,782, 15,493–94, 15,569–70, 17,892). This
showing—that the specific products are embodiments of
the claimed invention and that the proffered objective
evidence relates to these products—is sufficient to estab-
lish the presumption of nexus for the objective considera-
tions at issue in this case. 4
4 Kohler does not dispute the applicability of the
presumption of nexus to commercial success. Kohler
responds to WBIP’s argument that it is entitled to a
presumption of nexus only in a footnote in its Response
and Reply Brief, which asserts, without further explana-
tion or citation, that “Crocs’ prima facie case of nexus
applies only to evidence of commercial success, not to any
other secondary-considerations evidence.” Resp. & Reply
Br. 24–25 n.8. We do not read Crocs as so limited. Crocs
first discusses the presumption of nexus with respect to
commercial success, but continues on to discuss the
concept with respect to praise and copying. 598 F.3d at
1311. In so doing, it recognizes that the prima facie case
of nexus for any of the three objective considerations at
issue was not rebutted, stating “[i]n the absence of any
record evidence attributing these secondary considerations
WBIP, LLC v. KOHLER CO. 15
We review Kohler’s remaining arguments to ascertain
whether they rebut the presumption of nexus. Kohler
argues that all of WBIP’s proffered objective considera-
tions are irrelevant because they are tied to a reduction in
carbon monoxide emissions and Phipps discloses an
engine that controls emissions inherently, Appellant’s
Brief 46, or expressly, Response and Reply Brief 31–32.
Thus, according to Kohler, WBIP had to show that the
objective evidence was tied to the two coolant-related
features ([B] and [D] in claim 1 of the ’044 patent) that
Phipps does not disclose.
Kohler’s argument relies on an incorrect interpreta-
tion of our case law. We have held that “[w]hile objective
evidence of nonobviousness lacks a nexus if it exclusively
relates to a feature that was ‘known in the prior art,’ the
obviousness inquiry centers on whether ‘the claimed
invention as a whole’ would have been obvious.” Rambus
Inc. v. Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013) (citation
omitted). Where the allegedly obvious patent claim is a
combination of prior art elements, we have explained that
the patent owner can show that it is the claimed combina-
tion as a whole that serves as a nexus for the objective
evidence; proof of nexus is not limited to only when objec-
tive evidence is tied to the supposedly “new” feature(s).
Id. at 1258 (remanding to the Board to determine whether
objective evidence “relate[d] only to prior art functionali-
ty” or to “Rambus’s patented design as a whole”). In such
a case, the fact that an isolated feature may be present in
the prior art may not render irrelevant objective evidence
to causes other than the claimed invention, Crocs may
rely on this added support for non-obviousness.” Id.(emphasis added). Thus, WBIP was entitled to rely upon
the presumption of nexus for the objective considerations
at issue and the burden of production shifted to Kohler to
rebut that presumption if it sought to challenge nexus.
16 WBIP, LLC v. KOHLER CO.
of non-obviousness of that feature in the claimed combi-
nation.
WBIP was entitled to the presumption of nexus for its
objective evidence of non-obviousness because it estab-
lished that the specific products (Westerbeke’s Safe-CO
gen-sets and Kohler’s accused products) are embodiments
of the invention in the asserted claims. Attempting to
rebut the presumption, Kohler argues that “[n]one of it
bears any relationship to the asserted novelty of the
claims.” Appellant’s Br. 37. It is certainly true that there
must be “a nexus between the evidence and the merits of
the claimed invention.” In re GPAC Inc., 57 F.3d 1573,
1580 (Fed. Cir. 1995). Kohler argues that no such nexus
exists here because the objective indicia evidence is not
tied to the elements in the claims that were missing from
Phipps. Kohler starts with Phipps, which is the prior art
land-based design, and argues that since only elements
[B] and [D] of the claims are not present in Phipps, there
is no nexus unless the objective indicia is linked to these
elements. Kohler has failed to rebut the presumption of
nexus. WBIP argues that it is the claimed combination
which results in a low–carbon monoxide emission marine
gen-set which is the “merits of the claimed invention.”
According to WBIP, this combination overcame a specific
problem in the marine environment. We conclude that
this record contains substantial evidence upon which a
jury could conclude that nexus exists between the objec-
tive evidence of non-obviousness and the claimed combi-
nation.
For example, WBIP’s expert testified that each of the
claimed catalyst, controller, and oxygen sensor were
necessary to gain the requisite reduction in carbon mon-
oxide emissions. J.A. 15,199 (“So you need all three of
those components. You need the catalyst, a controller to
control the air-to-fuel ratio, and the oxygen sensor to let
the controller know how good of a job it’s been doing.”).
He confirmed that those features disclosed in Phipps—
WBIP, LLC v. KOHLER CO. 17
i.e., the controller and oxygen sensor—could not reduce
carbon monoxide emissions without the addition of a
catalyst:
Q. If you took away the cooled catalyst, would
there be low carbon monoxide output?
A. No, there wouldn’t.
Q. So you need all of this together in order to get
the result of the invention?
A. Yes, you do.
J.A. 15,198–99.
Questions of nexus are highly fact-dependent and, as
such are not resolvable by appellate-created categorical
rules and hierarchies as to the relative weight or signifi-
cance of proffered evidence. Rather, “[i]t is within the
province of the fact-finder to resolve these factual dis-
putes regarding whether a nexus exists between commer-
cial success of the product and its patented features, and
to determine the probative value of evidence of secondary
considerations.” Pro-Mold & Tool Co. v. Great Lakes
Plastics, Inc., 75 F.3d 1568, 1574 (Fed. Cir. 1996). The
jury reviewed Kohler’s and WBIP’s competing objective
evidence of non-obviousness, as well as evidence for the
driving forces that established that objective evidence. Its
resolution of the dispute in favor of WBIP is supported by
substantial evidence.
We further reject Kohler’s categorical claim that ob-
jective evidence must be tied exclusively to claim ele-
ments that are not disclosed in a particular prior art
reference in order for that evidence to carry substantial
weight. Requiring patentees to prove that objective
evidence is tied to a specific claim element—and only that
claim element—runs counter to the statutory instruction
that the obviousness analysis involves determining
whether “the claimed invention as a whole would have
18 WBIP, LLC v. KOHLER CO.
been obvious.” 35 U.S.C. § 103 (emphasis added); see
Rambus, 731 F.3d at 1257–58. This is especially true for
situations like those at issue here, where the claimed
invention is, admittedly, a combination of elements that
were known individually in the prior art. Commercial
success, for example, may be linked to an individual
element or, in other circumstances, it could be linked to
the inventive combination of known elements. And these
are fact questions to which we must give deference on
appeal. The jury’s presumed factual findings relating to
nexus are supported by substantial evidence.
2. Long-Felt Need
Evidence of a long felt but unresolved need tends to
show non-obviousness because it is reasonable to infer
that the need would have not persisted had the solution
been obvious. See, e.g., Iron Grip Barbell Co. v. USA
Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004) (“Absent
a showing of long-felt need or the failure of others, the
mere passage of time without the claimed invention is not
evidence of nonobviousness.”).
Kohler argues that substantial evidence does not sup-
port the jury’s presumed factual finding that the claimed
invention solved the problem of carbon monoxide poison-
ings from marine gen-sets, a problem that was long
known in the marine gen-set field. Specifically, Kohler
argues that the evidence that WBIP relied upon to show a
long-felt need in the industry—third-party product liabil-
ity suits against Kohler involving carbon monoxide poi-
sonings from older generation gen-sets—is not relevant to
a long-felt need for low–carbon monoxide emitting gen-
sets. Kohler argues that the evidence shows that it
resolved the carbon monoxide poisonings at issue in these
lawsuits by changing the material it used for the exhaust
pipes, from black iron (which corroded from the inside
out) to stainless steel. Thus, Kohler argues that there is
no nexus between the problems at issue in these product
WBIP, LLC v. KOHLER CO. 19
liability suits and the problem solved by the asserted
claims. Kohler argues that, when this irrelevant evidence
is not considered, the evidence of record shows that the
industry was not aware of the dimensions of the carbon
monoxide problem on boats until 2000. Because this date
is only a few years before the priority date of the patents
in suit, Kohler argues that substantial evidence does not
support a finding of long-felt need.
We have already rejected Kohler’s argument that the
objective considerations lack nexus because they are not
tied specifically to the coolant elements of the asserted
claims. We similarly reject Kohler’s argument that the
product liability suits are irrelevant to whether there was
a long-felt need for a solution to carbon monoxide poison-
ings on boats and whether this need was met by the
claimed invention. The evidence concerning the product
liability suits undoubtedly establishes that there was a
known problem in the industry regarding carbon monox-
ide poisonings. It also shows that Kohler was aware of
this problem prior to 2000, as many of the lawsuits Kohler
faced were the result of incidents that occurred in the
1990s. See J.A. 15,448–52, 15,996–97. And, although
Kohler argues that it solved the problem underlying the
product liability suits by switching the exhaust pipe
material that it used, other Kohler documents suggest
that Kohler itself thought the carbon monoxide poisoning
problem was solved by low–carbon monoxide emitting
gen-sets. For example, a 2005 Kohler slide presentation
that accompanied Kohler’s launch of its low–carbon
monoxide emitting gen-set, titled “Create the right at-
mosphere: Kohler Marine Generators helping make
boating safer,” J.A. 17,741, states that “The need is clear!”
above a bar chart of fatal and non-fatal boat-related
carbon monoxide poisonings for the years 1984–2004,
J.A. 17,742. The slides immediately following this bar
chart describe the carbon monoxide problem and how the
technology in Kohler’s low–carbon monoxide gen-sets
20 WBIP, LLC v. KOHLER CO.
solve this problem. J.A. 17,742–47. Kohler may be cor-
rect that switching from cast iron to stainless steel ex-
haust pipes helped to resolve the product liability suits,
but Kohler’s own documents show that even Kohler
recognized the carbon monoxide poisoning problem per-
sisted despite switching pipe materials. And Kohler’s
expert testified that low–carbon monoxide emitting gen-
sets are not nearly as susceptible to the exhaust system
integrity issues (i.e., corrosion and subsequent leak of
carbon monoxide) that were the basis of the product
liability suits. J.A. 16,012. He explained that, for the
low–carbon monoxide emitting gen-sets, “if you had a leak
right at the entrance to the catalyst, you know, it would
be possible to have a [carbon monoxide] problem there.
But that’s part of the engine, and it’s a very robust joint
there.” Id. Presented with this conflicting evidence, the
jury was entitled to find that the claimed invention, as
opposed to switching the exhaust pipe material, solved
the carbon monoxide poisoning problem. Given the ver-
dict, we presume it did so in WBIP’s favor. Substantial
evidence, in the form of the testimony and documents
WBIP presented, supports this finding.
Kohler also challenges the evidence of product liabil-
ity suits against it as “grossly prejudicial” and that the
inclusion of this evidence entitles it to a new trial. Appel-
lant’s Br. 39. Prior to trial, the district court granted-in-
part and denied-in-part Kohler’s motion in limine to
exclude this evidence, explaining that it “notes that such
evidence will be relevant to both non-obviousness and
damages but cautions plaintiff that references to specific
lawsuits will be limited so as to reduce any risk of undue
prejudice to the defendant.” J.A. 15,005 (emphasis add-
ed). The parties agreed on “a limiting instruction as to
the product liability suits in general,” J.A. 15,397–98, and
this instruction was read to the jurors prior to the testi-
mony that Kohler challenges on appeal, see, e.g.,
J.A. 15,447, 15,453. After the jury rendered its verdict,
WBIP, LLC v. KOHLER CO. 21
Kohler moved for a new trial based, in part, on its conten-
tion that introduction of this evidence was unfairly preju-
dicial, as evidenced by the jury’s damages verdict. The
district court denied Kohler’s motion for a new trial on
this ground, explaining that it rejected Kohler’s pre-trial
arguments for exclusion and that “Kohler has presented
no new arguments to dissuade it.” WBIP, LLC v. Kohler
Co., No. 11-10374-NMG, 2014 WL 585854, at *3 (D. Mass.
Feb. 12, 2014). But the district court determined that
part of the jury’s damages verdict was not supported by
substantial evidence and granted Kohler’s motion for
remittitur, reducing the awarded damages from
$9,641,206 to $3,775,418. 5 Id. at *1–3, 9.
We review a district court’s decision regarding wheth-
er to exclude evidence pursuant to Federal Rule of Evi-
dence 403 under the law of the regional circuit. SSL
Servs., LLC v. Citrix Sys., Inc., 769 F.3d 1073, 1092 (Fed.
Cir. 2014). The First Circuit reviews such decisions for
abuse of discretion, and cautions that “[o]nly rarely—and
in extraordinarily compelling circumstances—will [it],
from the vista of a cold appellate record, reverse a district
court’s on-the-spot judgment concerning the relative
weighing of probative value and unfair effect.” United
States v. Whitney, 524 F.3d 134, 143 (1st Cir. 2008) (quot-
ing United States v. Li, 206 F.3d 78, 84–85 (1st Cir.
2000)).
Kohler argues that the challenged evidence was gross-
ly prejudicial “as evidenced by the runaway damages
verdict.” Appellant’s Br. 43–44. But Kohler never ex-
plains how the mitigating and remedial steps taken by
5 The district court offered WBIP a choice: either
accept the remittitur or have a new trial on damages.
WBIP, 2014 WL 585854, at *9. WBIP chose remittitur
and neither party has appealed the amount of damages
awarded.
22 WBIP, LLC v. KOHLER CO.
the district court (i.e., its order that the parties’ agreed-
upon limiting instruction be read to jurors prior to any of
the challenged testimony and its grant of remittitur)
failed to redress any prejudice that may have affected
Kohler. The First Circuit has held that “within wide
margins, the potential for prejudice . . . can be satisfacto-
rily dispelled by appropriate curative instructions” and
that “[j]urors are presumed to follow such instructions,
except in extreme cases.” United States v. Richardson,
421 F.3d 17, 41 (1st Cir. 2005) (quoting United States v.
Freeman, 208 F.3d 332, 345–46 (1st Cir. 2000)). Kohler
does not address the limiting instructions, nor does it
mention the district court’s grant of remittitur. Consid-
ered in context, we cannot say that these are extraordi-
narily compelling circumstances that warrant reversing
the district court’s evidentiary decision and remanding for
a new trial.
We also reject Kohler’s argument that substantial ev-
idence does not support a finding of long-felt need because
the record evidence establishes that “the Coast Guard and
NIOSH first investigated [carbon-monoxide]-related
poisonings on houseboats in 2000” and “there was no
evidence of any efforts to limit [carbon monoxide] emis-
sions from marine generators before 2000.” Resp. &
Reply Br. 35. As Kohler correctly notes, whether there is
a “long-felt need is analyzed as of the date of an articulat-
ed identified problem and evidence of efforts to solve that
problem.” Texas Instruments, Inc. v. U.S. Int’l Trade
Comm’n, 988 F.2d 1165, 1178 (Fed. Cir. 1993). WBIP
presented evidence that the problem of carbon monoxide
poisoning from houseboat gen-sets was known prior to
2000 in the form of the product liability suits against
Kohler. WBIP also presented testimony from Mr.
Westerbeke that carbon monoxide had been a known
problem in the houseboat industry since his company first
started selling gasoline marine gen-sets in 1983.
J.A. 15,478, 15,500–01. And Kohler itself presented
WBIP, LLC v. KOHLER CO. 23
evidence that it was making efforts to solve the carbon
monoxide poisoning problem by replacing the exhaust
pipes in its older generation gen-sets with stainless steel
pipes. This constitutes substantial evidence to support
the jury’s presumed factual finding that the claimed
invention solved a long-felt need in the industry.
3. Praise
Evidence that the industry praised a claimed inven-
tion or a product which embodies the patent claims
weighs against an assertion that the same claim would
have been obvious. Industry participants, especially
competitors, are not likely to praise an obvious advance
over the known art. Thus, if there is evidence of industry
praise in the record, it weighs in favor of the non-
obviousness of the claimed invention. See, e.g., Institut
Pasteur & Universite Pierre Et Marie Curie v. Focarino,
738 F.3d 1337, 1347 (Fed. Cir. 2013) (“[I]ndustry praise
. . . provides probative and cogent evidence that one of
ordinary skill in the art would not have reasonably ex-
pected [the claimed invention].”).
Kohler argues that WBIP’s evidence of praise was on-
ly a “few snippets” that “fell far off target” because they
relate to WBIP’s Safe-CO, low–carbon monoxide gen-set
products, not solely to the coolant elements [B] and [D]
not disclosed in Phipps. Appellant’s Br. 45–46. This
argument is primarily one of nexus. As discussed above,
WBIP established its entitlement to a presumption of
nexus for each type of objective evidence that it presented.
Moreover, the jury’s presumed finding of industry praise
of the claimed invention is supported by substantial
evidence.
WBIP’s evidence of praise includes the fact that
Westerbeke received the National Marine Manufacturers
Association Innovation Award in 2004 for its Safe-CO
gen-sets. And the evidence includes an internal Kohler
document regarding “Carbon Monoxide and Low [carbon
24 WBIP, LLC v. KOHLER CO.
monoxide products]” which recognizes that Westerbeke
won the Innovation Award at a 2004 trade show.
J.A. 17,915. Other record evidence of praise includes an
award from Houseboating Adventures Magazine, an
article positively mentioning Westerbeke’s Safe-CO gen-
sets in Popular Mechanics magazine, and an email from
an Industrial Hygienist at the U.S. Department of the
Interior, thanking Westerbeke for developing its Safe-CO
gen-sets and stating that “[h]opefully this will set new
industry standards for generators and we will eventually
be rid of this life threatening hazard” and that the Safe-
CO “generators will save lives.” J.A. 17,255. Contrary to
Kohler’s argument, this constitutes substantial evidence
to support the jury’s presumed factual finding. This
strong evidence of industry recognition of the significance
and value of the claimed invention weighs in favor of non-
obviousness.
4. Skepticism
Evidence of industry skepticism weighs in favor of
non-obviousness. If industry participants or skilled
artisans are skeptical about whether or how a problem
could be solved or the workability of the claimed solution,
it favors non-obviousness. Doubt or disbelief by skilled
artisans regarding the likely success of a combination or
solution weighs against the notion that one would com-
bine elements in references to achieve the claimed inven-
tion. See, e.g., Gillette Co. v. S.C. Johnson & Son, Inc.,
919 F.2d 720, 726 (Fed. Cir. 1990) (“[The infringer’s]
skepticism is relevant and persuasive evidence of the
nonobviousness of [the] invention.”); Envtl. Designs, Inc.
v. Union Oil Co., 713 F.2d 693, 697–98 (Fed. Cir. 1983)
(“Before learning of the [claimed] process, and with
knowledge of earlier failed efforts, both [parties’ experts]
stated unequivocally that they believed the [claimed
process] would not adequately solve the problem. Expres-
sions of disbelief by experts constitute strong evidence of
WBIP, LLC v. KOHLER CO. 25
nonobviousness.” (citing United States v. Adams, 383 U.S.
39, 52 (1966))).
Kohler’s arguments regarding skepticism are similar
to its arguments regarding praise, and fail for similar
reasons. The jury’s presumed factual finding that there
was skepticism that low–carbon monoxide gen-sets could
be produced is supported by substantial evidence. WBIP
presented evidence that an audience of over 200 people at
an industry workshop on carbon monoxide poisonings,
sponsored by the U.S. Coast Guard Office of Boating
Safety and NIOSH and held at a 2003 boat show, ex-
pressed shock when Mr. Westerbeke announced that
Westerbeke “would have low [carbon monoxide] -- actually
zero percentage PPM [carbon monoxide] generators
within one to two years.” J.A. 15,374, 15,369–70, 17,202.
The same witness explained that, at the time, Westerbeke
had a prototype gen-set that produced between zero and
nine ppm of carbon monoxide and that, at the end of this
session of the workshop, two individuals from Kohler told
Mr. Westerbeke that “it was impossible to produce a
generator with zero PPM of [carbon monoxide].”
J.A. 15,374. Supporting this testimony, WBIP admitted
the minutes from this workshop into evidence, which
state that “[t]here was a prediction that generators with
substantially [carbon monoxide] free exhaust will become
available within a couple of years.” J.A. 17,213.
Kohler argues that this evidence shows that the only
thing “shocking” or “impossible” was manufacturing a
gen-set that produces zero ppm of carbon monoxide in the
exhaust, not exhaust substantially free of carbon monox-
ide, and that, even now, no gen-set exists that produces
zero ppm of carbon monoxide. WBIP produced more than
a mere scintilla of evidence here—it produced witness
testimony that was corroborated by the official minutes of
the workshop. And, drawing reasonable inferences in
favor of WBIP, the verdict winner, we cannot say that a
jury would be unreasonable if it found, based on this
26 WBIP, LLC v. KOHLER CO.
evidence, that the boating industry expressed skepticism
that low–carbon monoxide producing gen-sets could be
made.
5. Copying
“Copying may indeed be another form of flattering
praise for inventive features,” Crocs, 598 F.3d at 1311,
and thus evidence of copying tends to show non-
obviousness. See also Windsurfing Int’l, Inc. v. AMF, Inc.,
782 F.2d 995, 1000 (Fed. Cir. 1986) (“[C]opying the
claimed invention, rather than one within the public
domain, is indicative of non-obviousness.”). The fact that
a competitor copied technology suggests it would not have
been obvious.
The parties dispute whether substantial evidence
supports a finding that Kohler copied Westerbeke’s Safe-
CO gen-sets, which are an embodiment of the claimed
invention. WBIP argues it presented evidence that it
demonstrated its Safe-CO gen-sets in a trailer at a 2004
boat show and that, in response to a question from two
Kohler employees who visited this trailer, a Westerbeke
engineer explained that the low–carbon monoxide emis-
sions were achieved through use of a catalyst and elec-
tronic fuel injection. WBIP also presented evidence that,
shortly after this show, an internal Kohler document
requesting funding for development of Kohler’s own low–
carbon monoxide gen-sets explained that low–carbon
monoxide exhaust would be achieved through the same
two features that the Westerbeke engineer had described:
“a precise electronically-controlled engine management
system and exhaust after-treatment with a catalyst.”
J.A. 17,785. In fact, this document specifically mentions
Westerbeke’s “‘Safe-CO’ line” of gen-sets and the fact that
Westerbeke had “patented their concept” (albeit citing an
earlier-issued Westerbeke patent, not the patents in suit,
which had yet to issue). J.A. 17,785.
WBIP, LLC v. KOHLER CO. 27
Kohler counters that it produced testimony and doc-
umentary evidence contradicting WBIP’s evidence of
copying. Kohler argues that its engineer testified that he
had already decided to use an electronic control unit in its
low–carbon monoxide gen-sets a month prior to
Westerbeke’s demonstration at the 2004 boat show, and
that this testimony is supported by documentary evi-
dence.
Copying is a question of fact and, as with any question
of fact, the fact-finder (here, the jury) was entitled to
credit WBIP’s evidence over Kohler’s. See Kinetic Con-
cepts, 688 F.3d at 1362. And we will not substitute our
view of the conflicting evidence for that of the jury. SIBIA
Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349,
1355 (Fed. Cir. 2000). Based on the evidence presented,
i.e., that Kohler engineers were aware of and had access
to Westerbeke’s Safe-CO gen-set and shortly thereafter
with express reference to the Westerbeke Safe-CO gen-
sets adopted the same features in developing Kohler’s
own low–carbon monoxide gen-set, we cannot say that a
jury would be unreasonable in finding that Kohler copied
the claimed invention.
6. Commercial Success
When “a product attains a high degree of commercial
success, there is a basis for inferring that [attempts to a
solution] have been made and have failed.” Merck & Co.
v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1376 (Fed. Cir.
2005). See also Magowan v. N.Y. Belting & Packing Co.,
141 U.S. 332, 343, 12 S. Ct. 71, 76, 35 L. Ed. 781 (1891)
(“[S]uch an extensive public use [of the patented inven-
tion] as almost to supersede all packings made under
other methods . . . was pregnant evidence of its novelty,
value, and usefulness.”). Demonstrating that an inven-
tion has commercial value, that it is commercially suc-
cessful, weighs in favor of its non-obviousness.
28 WBIP, LLC v. KOHLER CO.
On appeal, Kohler’s primary argument regarding
commercial success of the claimed invention is that WBIP
failed to establish nexus. As discussed above, WBIP was
entitled to a presumption of nexus, which Kohler
acknowledged in its reply brief. Kohler did not rebut that
presumption. WBIP presented the jury with evidence of
the immediate and high level of success of the Kohler
Low–carbon monoxide generator which was found to
infringe. We see no basis to disturb the jury’s presumed
factual findings of commercial success underlying its
verdict on obviousness.
Finally, Kohler reiterates its view that, even if we as-
sume there was evidence of multiple objective considera-
tions of non-obviousness, that evidence is not strong
enough to overcome its own evidence of obviousness based
on Phipps. We do not agree. The objective considerations
in this case, commercial success, long-felt need, industry
praise, skepticism, and copying, each weigh in favor of a
conclusion that using conventional coolant components to
convert the land-based Phipps engine into a low–carbon
monoxide emission marine gen-set would not have been
obvious to one of skill in the art at the relevant time. Too
often the obviousness analysis is framed as an inquiry
into whether a person of skill, with two (and only two)
references sitting on the table in front of him, would have
been motivated to combine (or, in Kohler’s view, could
have combined) the references in a way that renders the
claimed invention obvious. The real question is whether
that skilled artisan would have plucked one reference out
of the sea of prior art (Phipps) and combined it with
conventional coolant elements to address some need
present in the field (the need for low–carbon monoxide
emission marine gen-sets). Whether a skilled artisan
would be motivated to make a combination includes
whether he would select particular references in order to
combine their elements. This is part of the fact question
and we must give deference to the jury’s findings on this
WBIP, LLC v. KOHLER CO. 29
point. Objective indicia minimize hindsight’s impact.
And in this case, the objective indicia point to the non-
obviousness of the claimed combination. They are sub-
stantial evidence that one of skill would not have found
the claimed combination obvious. We see no legal error in
the ultimate conclusion that Kohler failed to prove that
the asserted claims would have been obvious by clear and
convincing evidence.
II. Written Description
Written description is a question of fact, which we re-
view for substantial evidence. 6 Ariad Pharm., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1351, 1355 (Fed. Cir. 2010) (en
banc). On appeal, Kohler argues it should have prevailed
on written description as a matter of law and presents to
this court a detailed argument regarding a lack of written
description support for the claimed “compound control
scheme.” See Appellant’s Br. 51–64. In support of its
argument, it cites passages in both the ’044 and ’196
patents and the prosecution history. Id. This detailed
argument was not presented to the jury. Before the jury,
Kohler asked its expert three questions on written de-
scription:
Q. All right. Last couple questions. Within the
patent, the patent itself, does the patent describe
-- provide any description of how the engine con-
troller works?
A. It just described what I described on that first
slide. That was the extent of it, that there’s oxy-
6 Kohler recognizes that written description is a
question of fact, reviewed for substantial evidence. Appel-
lant’s Br. 52. It nonetheless argues written description
should be treated as a question of law. Id. (“Kohler re-
serves the right to seek further review on this issue if
necessary.”).
30 WBIP, LLC v. KOHLER CO.
gen sensor feedback. Air/fuel ratio is kept at a
target.
Q. Was there any other technical description sug-
gesting there was any technical innovation or im-
provement or anything not trivial in how the
Westerbeke people were doing that?
A. There was not.
[Two questions, to which the court sustained ob-
jections, omitted.]
Q. Was there any written description in the pa-
tent on how to do this?
A. There was not sufficient written description.
J.A. 15,890–91. Following this, Kohler admitted the
prosecution history of the ’044 patent into evidence. 7
J.A. 15,891–92. In its closing argument to the jury,
Kohler’s counsel stated:
Just a couple of other things that are going to pop
up on the verdict form. You’re going to see a ques-
tion about written description. What that issue is
-- because there hasn’t been argument about it.
7 Kohler disputes that this is the only evidence it
presented to support its written description argument,
arguing “Kohler elicited testimony from WBIP’s own
expert showing the lack of written description.” Resp. &
Reply Br. 52 (first emphasis added) (citing J.A. 15,196–97,
15,364–65). The cited appendix pages are from WBIP’s
direct (J.A. 15,196–97) and redirect (J.A. 15,364–65)
examination of its expert, not Kohler’s cross-examination.
While it does not matter which party elicited the relied-
upon testimony, it is not clear from the cited testimony
how it shows the lack of written description and Kohler
offers no such explanation in its briefs.
WBIP, LLC v. KOHLER CO. 31
The evidence is in. The question is does the pa-
tent adequately describe in the -- does it describe
what the invention was as it relates to the control,
because, since we’ve heard, this is where they say
the invention is now. This is where it’s all differ-
ent. And so there’s a question to you, do you be-
lieve this patent adequately describes the written
-- the inventor adequately describes the written
invention. You’ll hear the instruction from the
Judge. But you’ll see that in there.
J.A. 16,093. The jury found that Kohler failed to prove by
clear and convincing evidence that the asserted claims
were invalid for lack of written description. J.A. 8099.
Nowhere in these quoted passages did Kohler present
the jury with the detailed argument it provides to us in
this appeal, despite the fact that Kohler, as the party
challenging validity, had the burden to prove by clear and
convincing evidence that the written description require-
ment was not met. Abbott Labs. v. Syntron Bioresearch,
Inc., 334 F.3d 1343, 1356 (Fed. Cir. 2003). On appeal, we
limit ourselves to the arguments raised by the parties and
review jury findings on the record presented below.
Based on what was presented to the jury in this case, the
jury’s verdict is clearly supported by substantial evidence.
Under our precedent, “[g]eneral and conclusory testi-
mony . . . does not suffice as substantial evidence of
invalidity.” Koito Mfg. Co. v. Turn-Key-Tech, LLC, 381
F.3d 1142, 1152 (Fed. Cir. 2004). This is precisely the
type of evidence that Kohler submitted to the jury in this
case. If such evidence fails to meet even the substantial
evidence standard, it does not rise to the level of clear and
convincing evidence, nor does it “point so strongly and
overwhelmingly in favor of [Kohler] that a reasonable jury
could not have reached the verdict” in favor of WBIP,
which is what Kohler has to show to be entitled to judg-
ment as a matter of law. Marine Polymer Techs., 672
32 WBIP, LLC v. KOHLER CO.
F.3d at 1357–58. We see no error in the district court’s
denial of judgment as a matter of law that the asserted
claims lack written description. 8
III. Willful Infringement
This case was decided by the district court under the
then-applicable willful infringement standard. At the
time of this decision, proof of willful infringement re-
quired “clear and convincing evidence that the infringer
acted despite an objectively high likelihood that its ac-
tions constituted infringement of a valid patent” and that
“this objectively-defined risk . . . was either known or so
obvious that it should have been known.” In re Seagate
Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007). The
jury found that WBIP had proven by clear and convincing
evidence that Kohler’s infringement was willful.
J.A. 8100. And the district court concluded that Kohler’s
defenses at trial were objectively unreasonable. WBIP,
2014 WL 585854, at *5–6.
Kohler argues that the judgment of willful infringe-
ment must be reversed for two independent reasons.
First, it argues that, contrary to the district court’s de-
termination, its obviousness and written description
defenses are objectively reasonable under Halo Electron-
ics, Inc. v. Pulse Electronics, Inc., 769 F.3d 1371 (Fed. Cir.
2014), cert. granted, 136 S. Ct. 356 (Oct. 19, 2015) (No. 14-
1513), and Bard Peripheral Vascular, Inc. v. W.L. Gore &
Associates, Inc., 682 F.3d 1003 (Fed. Cir. 2012). Second, it
8 It would not matter if we reviewed written de-
scription as a question of law or a question of fact in this
case because Kohler introduced no detailed argument and
nothing but a conclusory statement about written descrip-
tion. As such, under either standard, the evidence Kohler
presented would be insufficient to establish a written
description violation by clear and convincing evidence.
WBIP, LLC v. KOHLER CO. 33
argues that WBIP did not present evidence to the jury
that Kohler was aware of the patents in suit, which is an
element of the subjective prong of the willfulness test,
such that the jury’s verdict that Kohler willfully infringed
cannot stand. After this case was argued on appeal, the
Supreme Court decided Halo Electronics, Inc. v. Pulse
Electronics, Inc., 136 S. Ct. 1923 (2016) (“Halo”).
Under Halo, we review the district court’s determina-
tion to award enhanced damages under 35 U.S.C. § 284for abuse of discretion. Halo, 136 S. Ct. at 1934. 9 As with
awards of attorney’s fees under 35 U.S.C. § 285, a party
seeking enhanced damages under § 284 bears the burden
of proof by a preponderance of the evidence. 10 Id. (citing
Octane Fitness, LLC v. ICON Health & Fitness Inc., 134
S. Ct. 1749, 1758 (2014)). Although “[t]he Seagate test
reflects, in many respects, a sound recognition that en-
hanced damages are generally appropriate under § 284
only in egregious cases,” the Supreme Court rejected that
test as “unduly rigid” and as “impermissibly encum-
ber[ing] the statutory grant of discretion to district
courts.” Id. at 1932.
9 Even Kohler admits WBIP “preserved a challenge
to the standard of review” by asserting that the district
“court’s willfulness determination should be reviewed only
for abuse of discretion following Highmark Inc. v. Allcare
Health Management System, Inc., 134 S. Ct. 1744 (2014).”
Resp. & Reply Br. 54 n.11 (citing Cross-Appellant’s Br.
19).
10 This is a lower burden of proof than clear and
convincing evidence, which the jury found that WBIP had
met. This change in the law provides no basis for re-
mand. If the jury found willfulness under the clear and
convincing standard, the lower standard could not have
helped Kohler.
34 WBIP, LLC v. KOHLER CO.
As to Kohler’s first argument—that its defenses were
objectively reasonable—the Supreme Court’s decision in
Halo expressly rejected the notion that objective reckless-
ness must be found in every case involving enhanced
damages for willful infringement. The Court cited the
objective recklessness requirement as the “principal
problem with Seagate’s two-part test,” explaining that
“[s]uch a threshold requirement excludes from discretion-
ary punishment many of the most culpable offenders,”
including those “who intentionally infringe[] another’s
patent.” Halo, 136 S. Ct. at 1932. Applying reasoning
similar to Octane Fitness, the Court explained that an
infringer’s subjective bad faith alone may support an
award of enhanced damages. Id. at 1933 (“The subjective
willfulness of a patent infringer, intentional or knowing,
may warrant enhanced damages, without regard to
whether his infringement was objectively reckless.”). And
it explained that the appropriate time frame for consider-
ing culpability is by assessing the infringer’s knowledge at
the time of the challenged conduct. Id. This is a depar-
ture from our Seagate line of cases, which permitted
infringers to escape liability for enhanced damages pro-
vided that they were able “to muster a reasonable (even
though unsuccessful) defense at the infringement trial.”
Id.
In this case, the district court determined that Kohler
was objectively reckless under Seagate, as its litigation-
developed obviousness and non-infringement defenses
were unreasonable. 11 WBIP, 2014 WL 585854, at *5. On
11It does not appear that Kohler argued that its
written description defense was reasonable to the district
court. On appeal, Kohler’s argument on this point is a
single paragraph, asserting its defense was reasonable
because there was countervailing evidence to support its
theory such that it could have realistically expected its
WBIP, LLC v. KOHLER CO. 35
appeal, WBIP argues that the district court correctly
determined that Kohler was objectively reckless, and that
“Kohler’s obviousness defense was a litigation-contrived,
hindsight reconstruction.” Cross-Appellant’s Br. 67.
Kohler does not dispute that its obviousness defense was
created during litigation, years after it began engaging in
culpable conduct. Instead, Kohler argues that it “is no
answer to characterize” its obviousness defense as litiga-
tion-contrived because Seagate’s objective recklessness
prong “‘requires analysis of all of the infringer’s non-
infringement and invalidity defenses, even if those defens-
es were developed for litigation.’” Resp. & Reply Br. 57
(quoting Global Traffic Techs. LLC v. Morgan, 620
F. App’x 895, 904 (Fed. Cir. 2015) (unpublished)) (empha-
sis added by Kohler). 12 But as the Supreme Court ex-
plained in Halo, timing does matter. Kohler cannot
insulate itself from liability for enhanced damages by
creating an (ultimately unsuccessful) invalidity defense
for trial after engaging in the culpable conduct of copying,
or “plundering,” WBIP’s patented technology prior to
litigation. See Halo, 136 S. Ct. at 1933. Proof of an
objectively reasonable litigation-inspired defense to
infringement is no longer a defense to willful infringe-
ment. Thus, Kohler’s arguments on appeal that the
district court erred in concluding that its obviousness
defense was objectively unreasonable is not a basis for
concluding that the district court abused its discretion in
enhancing damages.
argument to succeed. Kohler does not argue that its non-
infringement defense was reasonable on appeal.
12 Notably, Global Traffic Technologies cites the
Federal Circuit opinion in Halo, now vacated by the
Supreme Court, for the proposition quoted in Kohler’s
brief.
36 WBIP, LLC v. KOHLER CO.
Kohler also argues that the jury’s verdict that Kohler
willfully infringed should be overturned because the
record did not contain substantial evidence that Kohler
knew about the patents at the time it was infringing.
Knowledge of the patent alleged to be willfully infringed
continues to be a prerequisite to enhanced damages. See
Halo, 136 S. Ct. at 1932–33 (discussing knowledge re-
quirement for intent). We do not interpret Halo as chang-
ing the established law that the factual components of the
willfulness question should be resolved by the jury. 13 See
13 Judge O’Malley’s concurrence raised the Seventh
Amendment question and multiple briefs filed to the
Supreme Court in Halo invited the Court to determine
whether there was a Seventh Amendment right to a jury
trial of the willfulness issue in Halo. Halo Elecs., Inc. v.
Pulse Elecs., Inc., 769 F.3d 1371, 1386 (Fed. Cir. 2014)
(O’Malley, J., concurring); Brief of Mentor Graphics Corp.
et al. as Amici Curiae in Support of Neither Party at 20–
27, Halo, 136 S. Ct. 1923 (2016) (No. 14-1513), 2015 WL
9292300; Brief of EMC Corp. as Amicus Curiae in Support
of Respondents at 28–30, Halo, 136 S. Ct. 1923 (2016)
(No. 14-1513), 2016 WL 322586; Brief of Amicus Curiae
Askeladden LLC in Support of Neither Party at 31 n.8,
Halo, 136 S. Ct. 1923 (2016) (No. 14-1513), 2015 WL
9245656. The Court chose not to decide the Seventh
Amendment question. This leaves in place our prior
precedent that there is a right to a jury trial on the will-
fulness question. Our case law is clear that in the ab-
sence of the Court overturning our established precedent
that precedent remains in effect. See, e.g., Masias v. Sec’y
of Health & Human Servs., 634 F.3d 1283, 1288 (Fed. Cir.
2011) (citing Barclay v. United States, 443 F.3d 1368,
1373 (Fed. Cir. 2006)). Of course, this is not to say that a
jury verdict of willful infringement ought to result in
enhanced damages. Whether the conduct is sufficiently
egregious as to warrant enhancement and the amount of
WBIP, LLC v. KOHLER CO. 37
Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1250
(Fed. Cir. 1989) (“Absent sufficient basis for directing the
verdict, Richardson has the right of jury determination of
this factual question. Willfulness of behavior is a classical
jury question of intent. When trial is had to a jury, the
issue should be decided by the jury.” (citations omitted));
Halo Elecs., Inc. v. Pulse Elecs., Inc., 769 F.3d 1371, 1386
(Fed. Cir. 2014) (O’Malley, J., concurring) (“[W]e have
long held that a willfulness determination contains issues
of fact that should be submitted to a jury.”).
Kohler does not contest that it, in fact, had pre-suit
knowledge of the patents in suit. And in fact, Kohler
admitted in its Undisputed Statement of Facts in support
of its Motion for Summary Judgment of Non-Infringement
that it “first became aware of the ’044 Patent at the latest
by August 20, 2010” when it received an inquiry “regard-
ing its knowledge of any WBIP patents on low carbon
emission marine generator products.” J.A. 2880. Despite
this admission, Kohler argues that no evidence of its
knowledge was presented to the jury and thus the jury’s
finding of willfulness should be rejected because “there
was no basis to find—or even infer—that Kohler knew or
should have known of an objectively high risk of patent
infringement.” Appellant’s Br. 70–71.
We conclude that there was substantial evidence for
the jury’s finding that Kohler had knowledge of the pa-
tents in suit at the time of infringement. At trial, WBIP
presented testimony from John (“Jack”) Westerbeke, the
inventor and majority-owner of Westerbeke Corporation,
that Westerbeke’s low–carbon monoxide gen-sets have
been marked with the patents in suit since their issuance.
Supporting this testimony, WBIP submitted an email
Mr. Westerbeke sent the day after the ’044 patent issued
the enhancement that is appropriate are committed to the
sound discretion of the district court.
38 WBIP, LLC v. KOHLER CO.
in 2008, which states “I have to get a patent label on all
gas EFI products immediately” and that the label would
say “U.S. Pat. No. 7,314,044; Other patents pending.”
J.A. 17,192. WBIP submitted representative photographs
of Westerbeke’s low–carbon monoxide gen-sets that are
clearly marked with both patents in suit. J.A. 17,261. It
also presented testimony that Westerbeke and Kohler
were the only two companies in the market that provide
low–carbon monoxide gen-sets, and documentary evi-
dence, such as Kohler’s November 2004 internal request
for funding to develop low–carbon monoxide gen-sets,
demonstrating that Kohler was aware of Westerbeke
patents covering Westerbeke’s Safe-CO gen-sets. The
district court also had before it Kohler’s admission in its
Statement of Undisputed Facts in support of its Motion
for Summary Judgment of Non-Infringement that Kohler
“first became aware of the ’044 Patent at the latest by
August 20, 2010” when it received an inquiry “regarding
its knowledge of any WBIP patents on low carbon emis-
sion marine generator products.” J.A. 2880. The jury had
record evidence upon which it could have inferred that
Kohler had knowledge of the patents at issue, and thus its
finding is supported by substantial evidence.
Consistent with Halo, the district court, exercising its
discretion, decided not to treble damages, but rather to
enhance damages by 50%. The district court has the
discretion to decide whether the case is sufficiently egre-
gious to warrant enhancing damages and to decide the
amount of enhancement that is warranted (up to the
statutory limit of treble damages). And the Court ex-
plained, “none of this is to say that enhanced damages
must follow a finding of egregious misconduct.” Halo, 136
S. Ct. at 1933. We review the district court’s decision to
enhance damages under an abuse of discretion standard.
Id. at 1934.
WBIP, LLC v. KOHLER CO. 39
We cannot say that the district court abused its dis-
cretion in enhancing damages for Kohler’s willful in-
fringement.
IV. WBIP’s Cross-Appeal
WBIP cross-appeals the district court’s denial of a
permanent injunction. The district court originally de-
nied WBIP’s motion for a permanent injunction, reason-
ing the public interest factor weighed against an
injunction because, as WBIP was a much smaller produc-
er of low–carbon monoxide gen-sets than Kohler, it “would
deprive the consuming public of access to a potentially life
saving product.” J.A. 10,381–82. It determined that,
based on its public interest finding, it need not address
the remaining factors identified in eBay Inc.
v. MercExchange, LLC, 547 U.S. 388, 391 (2006). WBIP
moved for reconsideration, arguing that the district court
misunderstood WBIP’s manufacturing capacity, which
was sufficient to manufacture generators for Kohler’s
customers. The district court declined to reconsider its
denial of a permanent injunction, stating that “[e]ven if
[WBIP] has a larger manufacturing capability than
previously estimated, the Court is persuaded that it is in
the public interest to have more than one company manu-
facture low–carbon monoxide generators” such that an
ongoing royalty was a “more appropriate solution.”
J.A. 10,671.
On appeal, WBIP argues that the district court erred
in its consideration of the eBay factors. We agree that the
district court’s analysis is sufficiently flawed to constitute
an abuse of discretion warranting vacating the judgment.
Before the district court WBIP argued, inter alia, that
there is a “public interest to uphold patent rights.”
J.A. 8127. But the district court did not explain how this
public interest was outweighed by the public interest of
having more than one manufacturer of gen-sets that
produce low–carbon monoxide in their exhaust, especially
40 WBIP, LLC v. KOHLER CO.
if WBIP does have the manufacturing capacity to meet
the industry’s needs. The district court’s decision is based
on its reasoning that having more manufacturers of a life-
saving good in the market is better for the public interest.
But this reasoning is true in nearly every situation involv-
ing such goods, such that, if it alone is sufficient, it would
create a categorical rule denying permanent injunctions
for life-saving goods, such as many patented pharmaceu-
tical products. As the Supreme Court has warned, cate-
gorical rules regarding permanent injunctions are
disfavored. See eBay, 547 U.S. at 394 (“Just as the Dis-
trict Court erred in its categorical denial of injunctive
relief, the Court of Appeals erred in its categorical grant
of such relief.”). And Congress has expressly indicated
that injunctions may be granted in cases involving life-
saving goods, such as pharmaceutical drugs. See 35
U.S.C. § 271(e)(4)(B) (“[I]njunctive relief may be granted
against an infringer to prevent the commercial manufac-
ture, use, offer to sell, or sale within the United States or
importation into the United States of an approved drug,
veterinary biological product, or biological product.”). In
denying WBIP a permanent injunction on these grounds,
the district court abused its discretion. We note that the
district court limited its analysis to the public interest
factor alone and that its decision to deny an injunction
cannot be affirmed on this basis in light of this record.
We vacate its judgment and remand for the district court
to conduct a more thorough analysis of the eBay factors in
the first instance.
CONCLUSION
For the foregoing reasons, we affirm the district
court’s denial of judgment as a matter of law that the
asserted claims would have been obvious and lack suffi-
cient written description and the willful infringement
determination. We vacate the district court’s denial of
WBIP’s motion for a permanent injunction, and remand
for further consideration.
WBIP, LLC v. KOHLER CO. 41
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
Costs to WBIP.