from the United States District Court for the Southern
District of Florida in No. 0:14-cv-62369-BB, Judge Beth
A. Dragseth, Fish & Richardson P.C., Minneapolis, MN,
argued for plaintiff-appellee. Also represented by Nicholas
Stephan Boebel, Populus Law LLC, Minneapolis, MN; Niall
Andrew MacLeod, Aaron Myers, Diane Peterson, Kutak Rock LLP,
William F. Lee, Wilmer Cutler Pickering Hale and Dorr LLP,
Boston, MA, argued for defendants-appellants. Also
represented by Jennifer Jasmine John, Michelle Liszt Sandals,
Louis W. Tompros.
Moore, Plager, and Stoll, Circuit Judges.
Recreational Products Inc. and BRP U.S. Inc. (collectively,
"BRP") appeal from the United States District Court
for the Southern District of Florida's denial of judgment
as a matter of law that the asserted claims of U.S. Patent
Nos. 6, 568, 969 ("'969 patent") and 6, 793,
545 ("'545 patent") would have been obvious,
that Arctic Cat Inc. ("Arctic Cat") failed to mark
patented products, that the jury's royalty award was
based on improper expert testimony, and that BRP did not
willfully infringe the asserted claims. BRP also appeals the
district court's decision to treble damages and its award
of an ongoing royalty to Arctic Cat. We affirm the district
court's denial of judgment as a matter of law as to
obviousness, the jury's royalty rate, and willfulness. We
affirm the district court's decision to treble damages
and award an ongoing royalty to Arctic Cat. We vacate the
court's denial of judgment as a matter of law as to
marking and remand for further consideration limited to that
'969 and '545 patents disclose a thrust steering
system for personal watercraft ("PWC") propelled by
jet stream. This type of watercraft is propelled by
discharging water out of a discharge nozzle at the rear of
the watercraft. E.g., '545 patent at 1:22-24.
The rider controls the thrust of water out of the discharge
nozzle by pressing a lever mounted on the steering handle.
Id. at 1:38-40. A sufficient amount of thrust out of
the steering nozzle is required for these watercraft to steer
properly because decreasing the thrust of the water out of
the discharge nozzle decreases the steering capability of the
watercraft. Id. at 1:34-36, 1:51-55.
steering capabilities are affected by the amount of thrust
applied, the patents explain that, to avoid obstacles at high
speed, riders should apply constant pressure on the throttle
lever while simultaneously turning the steering handle away
from the obstacle. Id. at 1:59-61. This is
counter-intuitive to inexperienced riders who often slow down
to turn out of the way. Id. at 1:55-65. In these
situations a rider may not be able to avoid the obstacle
because steering capability has been decreased. Id.
at 1:65-67. The patents seek to overcome this issue by
automatically providing thrust when riders turn the steering
system. Id. at 2:11-27. Claim 15 of the '545
patent is representative:
a steering mechanism; a steering nozzle;
a thrust mechanism;
a lever adapted to allow an operator to manually control
thrust of said thrust mechanism, said lever mounted on said
steering mechanism and biased toward an idle position; and
a controlled thrust steering system for controlling
thrust of said thrust mechanism independently of the
wherein said controlled thrust steering system activates said
thrust mechanism to provide a steerable thrust after
said lever is positioned other than to provide a steerable
thrust and after the steering mechanism is positioned for
turning said watercraft.
Cat sued BRP for infringement of claims 13, 15, 17, 19, 25,
and 30 of the '545 patent and claims 15-17, and 19 of the
'969 patent, accusing the off-throttle thrust
reapplication system in several of BRP's Sea-Doo PWC. BRP
refers to its proprietary off-throttle thrust reapplication
system as Off-Throttle Assisted Steering ("OTAS").
Before trial, BRP unsuccessfully moved for summary judgment
on several issues, including that Arctic Cat's sole
licensee Honda failed to mark its products with the licensed
trial, the jury found both patents not invalid, awarded a
royalty consistent with Arctic Cat's model ($102.54 per
unit) to begin on October 16, 2008, and found by clear and
convincing evidence that BRP willfully infringed the asserted
claims. Based on the willfulness verdict, the district court
trebled damages, a decision it further explained in a
post-trial briefing, the district court denied BRP's
renewed motion for judgment as a matter of law on all issues.
It granted Arctic Cat's motion for an ongoing royalty,
awarding $205.08 per unit. BRP appeals the district
court's denial of judgment as a matter of law on
validity, marking, damages, and willfulness, as well as its
grant of an ongoing royalty and decision to treble damages.
We have jurisdiction under 28 U.S.C. § 1295(a)(1).
appeals of patent cases, we apply the law of the regional
circuit "to which district court appeals normally lie,
unless the issue pertains to or is unique to patent
law." AbbVie Deutschland GmbH & Co., KG v.
Janssen Biotech, Inc., 759 F.3d 1285, 1295 (Fed. Cir.
2014) (internal quotation marks omitted). We review rulings
on motions for judgment as a matter of law under the law of
the regional circuit. Id. The Eleventh Circuit
reviews the denial of judgment as a matter of law de novo,
viewing the evidence in the light most favorable to the
non-moving party. Howard v. Walgreen Co., 605 F.3d
1239, 1242 (11th Cir. 2010). "The motion should be
granted only when the plaintiff presents no legally
sufficient evidentiary basis for a reasonable jury to find
for him on a material element of his cause of action."
Id. (internal quotation marks omitted).
is a question of law based on underlying facts. WBIP, LLC
v. Kohler Co., 829 F.3d 1317, 1326 (Fed. Cir. 2016). In
KSR International Co. v. Teleflex Inc., 550 U.S.
398, 419 (2007), the Supreme Court cautioned that the
obviousness analysis should not be reduced to "rigid and
mandatory formulas." In Graham v. John Deere
Co., the Supreme Court set the framework for the
obviousness inquiry under 35 U.S.C. § 103:
Under § 103, the scope and content of the prior art are
to be determined; differences between the prior art and the
claims at issue are to be ascertained; and the level of
ordinary skill in the pertinent art resolved. Against this
background, the obviousness or nonobviousness of the subject
matter is determined. Such secondary considerations as
commercial success, long felt but unsolved needs, failure of
others, etc., might be utilized to give light to the
circumstances surrounding the origin of the subject matter
sought to be patented.
383 U.S. 1, 17-18 (1966). The Graham factors-(1) the
scope and content of the prior art; (2) the differences
between the claims and the prior art; (3) the level of
ordinary skill in the art; and (4) objective considerations
of nonobviousness-are questions of fact reviewed for
substantial evidence. See Apple Inc. v. Samsung Elecs.
Co., 839 F.3d 1034, 1047-48 (Fed. Cir. 2016) (en banc);
In re Cyclobenzaprine Hydrochloride Extended-Release
Capsule Patent Litig., 676 F.3d 1063, 1068 (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." WBIP, 829 F.3d at 1326.
We examine the legal conclusion de novo in light of those
determination of whether a patent claim is invalid as obvious
under § 103 requires consideration of all four
Graham factors, and it is error to reach a
conclusion of obviousness until all of those factors are
considered." Apple, 839 F.3d at 1048. This
includes objective indicia of nonobviousness, which must be
considered in every case where present. See, e.g.,
id. at 1048 & n.13; Millennium Pharm., Inc.
v. Sandoz Inc., 862 F.3d 1356, 1368-69 (Fed. Cir. 2017);
Merck & Cie v. Gnosis S.p.A., 808 F.3d 829, 837
(Fed. Cir. 2015); Bristol-Myers Squibb Co. v. Teva Pharm.
USA, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014);
Transocean Offshore Deepwater Drilling, Inc. v. Maersk
Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir.
2012). "This requirement is in recognition of the fact
that each of the Graham factors helps inform the
ultimate obviousness determination." Apple, 839
F.3d at 1048. Objective indicia of nonobviousness are
considered collectively with the other Graham
factors because they "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." Graham, 383 U.S. at 36
(citation omitted); see also KSR, 550 U.S. at 415
(inviting court "to look at any secondary considerations
that would prove instructive"); Stratoflex, Inc. v.
Aeroquip Corp., 713 F.2d 1530, 1538-39 (Fed. Cir. 1983)
(noting that evidence of these factors must be considered
with all the evidence and "not just when the
decisionmaker remains in doubt after reviewing the
fact question is whether one of ordinary skill in the art had
a motivation to combine the prior art to achieve the claimed
combination. Apple, 839 F.3d at 1047-48, 1051;
Wyers v. Master Lock Co., 616 F.3d 1231, 1237-39
(Fed. Cir. 2010). "In KSR, the Supreme Court
criticized a rigid approach to determining obviousness based
on the disclosures of individual prior-art references, with
little recourse to the knowledge, creativity, and common
sense that an ordinarily skilled artisan would have brought
to bear when considering combinations or modifications."
Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir.
2013). Therefore, a motivation to combine can be found
explicitly or implicitly in the prior art references
themselves, in market forces, in design incentives, or in
"any need or problem known in the field of endeavor at
the time of invention and addressed by the patent."
KSR, 550 U.S. at 420-21; accord Plantronics,
Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir.
2013) ("[M]otivation to combine may be found explicitly
or implicitly in market forces; design incentives; the
'interrelated teachings of multiple patents';
'any need or problem known in the field of endeavor at
the time of invention and addressed by the patent'; and
the background knowledge, creativity, and common sense of the
person of ordinary skill." (quoting Perfect Web
Techs., Inc. v. Info USA, Inc., 587 F.3d 1324, 1328-29
(Fed. Cir. 2009))). "The court should consider a range
of real-world facts to determine 'whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue.'"
Intercontinental Great Brands LLC v. Kellogg N. Am.
Co., 869 F.3d 1336, 1344 (Fed. Cir. 2017) (quoting
KSR, 550 U.S. at 418). Motivation to combine is a
factual determination as to whether there is a known reason a
skilled artisan would have been motivated to combine elements
to arrive at a claimed combination. This is not the ultimate
legal determination of whether the claimed combination would
have been obvious to the ordinary artisan-meaning that it is
possible that a reason or motivation may exist, but
nonetheless the ordinary artisan would not have found the
When a challenger shows that a "motivation" existed
for a relevant skilled artisan to combine prior art in the
way claimed in the patent at issue, such a showing commonly
supports and leads readily to the further, ultimate
determination that such an artisan, using ordinary
creativity, would actually have found the claimed invention
obvious. But the latter conclusion does not follow
automatically from the former finding, and additional
evidence may prevent drawing it. . . . Even with a motivation
proved, the record ...