Cablz loses at CAFC. Matters of waiver and motivation to combine.

Following institution of inter partes review, the United
States Patent Trial and Appeal Board found every
claim of U.S. Patent No. 8,366,268 (“’268 patent”) unpatentable
as obvious. Cablz, Inc., the owner of the ’268
patent, appeals from this decision, arguing that substantial
evidence fails to support the Board’s obviousness
determination and that the Board failed to adequately
explain a motivation to combine the prior art. Finding no
error in the Board’s decision, we affirm



The technology relates to holding eyeglasses on:


The ’268 patent is entitled “Eye Wear Retention Device.”
As the patent explains, people have long been using
devices like chains, strings, and ropes to retain their
glasses around their necks. A significant problem is that
such devices rest directly against the wearer’s back or
neck, which can cause the device to become entangled
with clothing or coated with sweat or suntan lotion. The
’268 patent purports to solve the problem and discloses an
eyewear retainer that “extends rearward from the head of
the wearer and is suspended off the neck of the wearer.”
J.A. 40 at Abstract.



The cited prior art in this case is of interest.

The topic of waiver arose:


As an initial matter, we conclude that Cablz waived
its argument that Monroe fails to disclose a “resilient”
cable or member because it failed to raise this argument
in its briefing before the IPR oral hearing. The court
retains case-by-case discretion over whether to apply
waiver. In re Nuvasive, Inc., 842 F.3d 1376, 1380 (Fed.
Cir. 2016)

(...)

As a result, we do not have the
benefit of the Board’s informed judgment on the specific
reading of Monroe that Cablz advances on appeal. The
argument is thus waived. See Watts, 354 F.3d at 1368.



Query: when the Board, or other trial court, ignores
an argument actually presented, the reviewing court is also deprived of
the benefit. Does the reviewing court then vacate?

Of motivation to combine:


We may affirm the Board’s ruling if we reasonably
discern that it followed a proper path, even if that path is
less than perfectly clear. Nuvasive, 842 F.3d at 1383
(citing Bowman Transp., Inc. v. Ark.-Best Freight Sys.,
Inc., 419 U.S. 281, 285–86 (1974)); Ariosa Diagnostics v.
Verinata Health, Inc., 805 F.3d 1359, 1365 (Fed. Cir.
2015).
The Board’s decision provides a reasonably discernable
path for articulating a motivation to combine the prior
“one of skilled in the art would have ‘immediately recognized
that a simple substitution of the eyewear retainers
of Mackay for the attachment method employed in Monroe
would have had various advantages.’” Chums, 2016
WL 763054 at *5. The Board similarly summarized
Appellee’s arguments regarding a motivation to combine
the other prior art references. Id. at *5–6. After analyzing
the arguments, the Board concluded that achieving
the ’268 patent’s configuration required only “simple
substitution.” Id. at *11.
The Board also addressed and rejected each of Cablz’s
arguments that there was no motivation to combine the
prior art. First, the Board found no persuasive reason
why the cited combinations “taught away” from the ’268
patent’s invention. Id. at *8. Second, the Board rejected
Cablz’s argument that Mr. Sosin failed to recognize and
solve the “being in the way problem.” Id. at *8–9. Third,
the Board found the age of the references and the fact
that Appellees did not combine the references to create
their own product did not preclude a motivation to combine
the prior art. Id. at *9–10. Ultimately, the Board
concluded that Appellees provided “strong evidence of
obviousness.” Id. at *15. Taken together, we may reasonably
discern that the Board found a motivation to
combine the references because doing so would have been
a matter of simple substitution that would result in an
eyeglass retainer with certain advantages.