# United States **Court of Appeals**  **for the Federal Circuit**

______________________ ABT SYSTEMS, LLC, Plaintiff

- Appellant

THE UNIVERSITY OF CENTRAL FLORIDA BOARD

OF TRUSTEES, on behalf of the University of Ce ntral Florida, Plaintiff

v.

EMERSON ELECTRIC CO. ,

Defendant

- Cross

- Appellant

______________________

2014

- 1618, 2014

- 1700

______________________ Appeals from the United States District Court for the Eastern District of Missouri in N o. 4:11

- cv

- 00374

- AGF, Judge Audrey G. Fleissig.

______________________

Decided: August 1 9 , 2015

______________________

M ICHAEL P. M AZZA , Michael P. Mazza, LLC, Glen Ellyn, IL, argued for plaintiff

- appellant. Also represented by D ANA D. A LVARADO

.

L INDA E.B. H ANSEN , Foley & Lardner LLP, Milwa ukee, WI, argued for defendant

- cross

- appellant. Also

repr e sen t ed by J EFFREY C OSTAKOS , K ADIE M. J ELENCHICK

.ABT SYSTEMS , LLC v. EMERSON ELECTRIC CO

. 2

______________________
Before P ROST , Chief Judge

, C LEVENGER , and S CHALL , Circuit Judges

. S CHALL , Circuit Judge

. This is a patent case. The University of Central Flo rida (“University”) is the assignee of U.S. Patent No. 5,547,017 (“the ’ 017 patent ” ), titled “ Air Distribution Fan Recycling Control. ” The patent is licensed to ABT Sy stems, LLC ( “ ABT ” ). ABT and the University sued Eme rson Electric Co. (“Emerson”) and three other defendants in the United States District Court for the Northern District of Illinois for infringement of claims 1

– 5 of the

’ 017 patent. Eventually , the case was transferred to the United States District Court for the Eastern District of Missouri and proceeded to trial before a jury against Emerson alone after its three co

- de fendants settled. Following trial, the jury found the asserted claims not invalid by r eason of obviousness and infringed by Eme rson’s “ Big Blue ” thermostats. Based on a royalty rate of $2.25 per unit, the jury awarded damages in the amo unt of $311,379 on sales of 138,891 thermostats

. ABT Sys., LLC v. Emerson Elec. Co.

, No. 4: 11

- cv

- 00374 -A GF, 2013 WL 5567713 , at *2 (E.D. Mo. Oct. 9, 2013).
ABT appeals th ree rulings of the district court rela ting to damages. It contends these rulings were erroneous and impact ed its damages award. For its part, Emerson

cross

- appeals the district court’s den ial of its motion for judgment as a matter of law ( “ JMOL ” ) that claims 1

– 5 of the ’ 01 7 patent are invalid by reason of obv iousness. See i d. at *3

. For the reasons set forth below, we hold that the di strict court erred in denying Emerson’s motion for JMOL of invalidity. We therefore reverse the judgment of non

invalidity, vacate the judgment of infringement, and remand the case to the district court for dismissal of theABT SYSTEMS , LLC v. EMERSON ELECTRIC CO

. 3

complaint. In view of this disposition, it is not necessary for us to address ABT’s ap peal , which is rendered moot

. B ACKGROUND

I.

Armin Rudd is the sole inventor named o n the ’017 patent. He assigned the patent to the University, his employer at the time of the invention. The University then licensed the patent to ABT. The technology involved in the ’017 patent relates to heat ing , ventilation, and air condition ing (“HVAC”) systems

. The ’017 patent explain s that p rior art thermostats for forced

- air HVAC systems typically have two modes of operat ion for the system fan . The first is for operating the fan only when there is a call for heating or cooling from the thermostat

. This is necessary in order to distrib ute air from the heating or cooling elements to the space to be conditioned . Often, t his is referred to as a thermostat’s “auto” mode. The patent also explains that some pr ior art thermostats includ e settings for continuous system fan operation (i.e., “constant fan mode” ), causing the fan to run irrespective of a call for heating or cooling.
The ’017 patent claims an apparatus for running a n HVAC system fan intermittently during periods whe n there is no call for heating or cooling. In particular, t he ’017 patent claims a forced central air system with a “recycle control ” for periodic fan operation when the system is not heating or cooling. The periodic fan oper ation begins “a preselected time period” after the fan stops at the end of a heating or cooling cycle

, or after the term ination of “constant fan mode” operation

. Claim 1 is the only independent claim at issue . It reads as follows:

1. A fan recycling control apparatus for a central air conditioning (CAC) system comprising:
a circulating fan;ABT SYSTEMS , LLC v. EMERSON ELECTRIC CO

. 4

a central air conditioning system with ducts to distribute cooled and heated conditioned air throughout a building;

a thermostat fo r activating and deactivating both the central air conditioning system and the circ ulating fan;
said activating causing a continuous fan oper ation, said deactivating causing no fan operation, said thermostat further having a selectable co nstant fan mode, a nd

a recycle control for periodically activating and deactivating only the circulating fan after a pres elected time period, since the central air conditio ning system has been deactivated, or the circulating fan has been deactivated from the selectable co nstant fan mode.

’017 p atent claim 1 (emphases added)

. Dependent c laims 2–5 set forth limitations directed to specific types of HVAC system heating and cooling modes . They also set forth limitations relating to various types of heat sources for the system.

The specification of the ’017 patent touts the benefits of running the fan periodically after a preselected time from heating or cooling deactivation based on fan “recycle control.” Those benefits include reduced air stagnation, dilution of point sources of indoor air pollution, and improved air cleanin g

. At the same time, periodic “recycle control” is said to reduce energy consumption in compar ison to the “ con st ant fan mode ” operation of prior art thermos tats

. II. Emerson manufactures various products, including thermostats for use in HVAC systems. One of Emerson’s products is the Big Blue thermosta t, so named because ofABT SYSTEMS , LLC v. EMERSON ELECTRIC CO

. 5

its blue user interface screen. In 2009, ABT and the University sued Emerson for patent infringement , alle ging that the so

- called Comfort Circulating Fan Feature (“CFF”) of the Big Blue thermostat infringed claims 1

– 5 of the ’ 017 patent. As noted, following trial , t he jury found the asserted claims not invalid as obvious and infringed and award ed ABT damages

. At trial, i n support of its invalidity defense , Emerson relied primarily on four prior art references in the field of HVAC systems and thermostats

. Specifically, i t a rgued that the asserted claims of the ’017 patent would have be en obvious in view of U.S. Patent No. 2,013,136, to Frank Cornelius (“Cornelius”) ; U.S. Patent No. 4,838,482

, to John Vogelzang (“Vogelzang”); U.S. Patent No. 2,953,908
, to Dan Petrone et al. (“Petrone”); and/or U.S. Patent No. 5,020,332, to Eiji Nakatsuno et al. (“Nakats uno”). A fter t he jury found the ’017 patent not invalid and infringed , Emerson file d a motion for JMOL to set aside the verdict

.
The district court denied Emerson’s motion

. A BT Sys. , 2013 WL 5567713, at *1, * 3. The court reasoned that “[t] he jury could have reasonably found, based upon the evidence, that the prior art relied upon by Defendant did not disclose ‘ periodic ’ fan operation that was depen dent upon the deactivation of the heating or cooling fun ction of the system , and further that was adaptable to modern air conditioning systems. ” Id. at *3. The court stated: “T he jury could have also found from the evidence that there was a long

- felt need for a periodic fan recycle control as disclosed in the Rudd Patent. ” Id. The court continued that it could not “ say as a matter of law tha t the claimed invention is not more than the predictable use of prior art elements according to their established functions

. ” Id. (internal quotation marks omitted)

. Emerson timely cross

- appealed the district court’s denialABT SYSTEMS , LLC v. EMERSON ELECTRIC CO

. 6

of its motion

. W e have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

D ISCUSSION

I.

T he standard for reviewing the grant or denial of JMOL is not unique to patent law ; t he law of the regional circuit therefore appl ies. Finisar Corp. v. DirecTV Gr p. , Inc. , 523 F.3d 1323, 1328 (Fed. Cir. 2008). T he Eighth Circuit has instructed that decisions on motion s for JMOL

are to be reviewed de novo

, using the same stand ard that the trial court applied

. Penford Corp. v. Nat’l Union Fire Ins. Co. , 662 F.3d 497, 503 (8th Cir. 2011). JMOL against a party on an issue is appropriate if “the court finds that a reasonable jury would not have a legally sufficient evide ntiary basis to f ind for the party on that issue. ” Fed. R. Civ. P . 50(a). In deciding a JMOL motion

, “all reasonable inferences [are to be drawn] in favor of the nonmoving party without making credibility assessments or weighing the evidence.” Penford , 662 F.3d at 503 (quoting Phillips v. Collings , 256 F.3d 843, 847 (8th Cir. 2001))

. The standard for determining the validity of patent claims is governed by our precedent. We have held that invalidity must be established by clear and convincing evidence. Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc. , 699 F.3d 1340, 1347 (Fed. Cir. 2012) ; see also Commil USA, LLC v. Cisco Sys., Inc. , 135 S. Ct. 1920, 192 9 (2015) (noting that Congress is pr esumed to have chosen a “clear and convincing standard” to overcome the presumption of validity of an iss ued patent)

. A patent claim is invalid for obviousness if the

“ differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a perso n having ordinary skill in the art to which said subject matter pertains .” 35 U.S.C. § 103(a) (2006). O bviousness under 35 U.S.C.ABT SYSTEMS , LLC v. EMERSON ELECTRIC CO

. 7

§ 103 is a mixed question of fact and law

. Transocean

, 699 F.3d at 1347. On appeal from a jury verdict on the issue of obv iousness

, “w e review all of the jury’s explicit and implicit factual findings for substantial evidence. We then examine the legal conclusion [on the issue] de novo to determine whether it is correct in light of the factual findings that we find adequately supported.” Kinetic Concepts, Inc. v. Smith & Nephew, Inc. , 688 F.3d 1342, 13 60 (Fed. Cir. 2012).

II.

A.

Emerson asks us to vacate the district court’s denial of JMOL and to hold claims 1

– 5 of the ’017 patent obvious in view of the Cornelius, Vogelzang, Petrone, and /or Nakatsuno prior art references.

Cornelius describes a furnace system with a circul ation fan that cycle s on and off when there is no call for heat from the thermostat . It teaches the ability “to i ntermittently start and stop” the fan when there i s no call for heat in order to “circulate air within the house.” Cornelius col. 9 ll. 23

– 42. Cornelius discloses a “timing device” for “operating the [circulation fan] motor at pred etermined intervals

, ” so as to keep the room condition maintained “from the standpoint of temperature, air motion and cleanli ness.” Id. Cornelius does not expressly teach the timer being tied to the deactivation of the heating elements, as required by claim 1 of the ’017 patent

. Vogelzang disclose s a n HVAC system that provides for movement of air and prevents stagnation through a “cycle position” option on a thermostat. Vogelza ng col. 2 ll. 36

– 46 (“ A conventional fan cycler 35 is connected to energize the fan relay 33 periodically such as several times an hour to maintain periodic air flow through the air cleaner 30 and to move the air about in the space 10. ”).ABT SYSTEMS , LLC v. EMERSON ELECTRIC CO

. 8

Vogelzang explains that the “invention is concerned with a means for cycling the operation of the fan during per iods when there is no operation of the heat ing apparatus or cooling apparatus.” Id. col. 1 ll. 3 1– 40. Like Cornelius, Vogelzang discloses periodic fan operation when there is no call for heating or cooling. Also like Cornelius, Voge lzang does not explicitly teach running the fan periodically

as a direct function of when the heating or cooling el ements are deactivated

. It instead relies on a timer that is energized when a user places the thermostat in the “cycle position.” Id. col. 2 ll. 46

– 48. The Petrone patent describe s a control for a fan in a forced

- air cooling system. The fan of Petrone stops when the call for cooling ends, at which point there is a delay before the fan begins to operate independent of a call for cooling. Petrone col. 6 ll. 64– 71, col. 7 ll. 7

– 15 (“fan motor will be stopped and at a predetermined time delay ther eafter . . . the time delay switch will cause reenergization of the fan motor”)

. The delay in Petrone is described as permitting sufficient time for water to drain from the cooling coils so as not to allow moi sture to be blown into the area to be cooled. Id. col. 4 ll. 18

– 22. Petrone does not disclose periodic circulation of air after deactivation of the cooling elements, but

, instead, just a “single

- shot” fan operation for purposes of coil drainage.

Similar to Petrone, Nakatsuno discloses a system wherein the system fan “ may be operated for a length of time Δ t2 a predetermined time Δ t1 after the stop of the compressor.” Nakatsuno col. 10 ll. 7– 15 (“the drive and stop of the indoor fan may be operatively ass ociated with the drive and stop of the compressor”); see also id. at Fig. 11 (a). Unlike Petrone, however, Nakatsuno suggests that the fan may also be “ intermittently driv en . . . to i mprove

. . . comfortableness and also to minimize

. . . energy consumption” during period s when there is no call for heating or cooling from the syst em

. Id. col. 9 l. 67 to col. 10 l. 6.ABT SYSTEMS , LLC v. EMERSON ELECTRIC CO

. 9

B. Citing KSR International Co. v. Teleflex Inc. , 550 U.S. 398, 4 16–1 7 (2007)

, Emerson argues that claims 1– 5 of the ’017 patent would have been obvious because they represent a “ combination of familiar elements accordi ng to known methods” that do es no more tha n “yield predic table results.” As it did in the district court, Emerson focuses on the “recycle control” limitation in the last paragraph of claim 1, since the parties agree that the other limitation s of claim 1, as well as the added limit ations of claim s 2– 5, were known in the prior art. In that regard

, Emerson contends that Mr. Rudd admitted at trial that the motivat ion for “recycle control,” as well as the means for implementing “recycle control

, ” were known in the art. Emer son states that Mr. Rudd admitted that a pause immediately following the end of a cooling cycle is necessary to prevent moisture from blowing ba ck into the system. Emerson also states that Mr. Rudd conceded that having a fan run periodically after the end of a cooling cycle would necessarily save energy when compared to running a fan continuously in a “constant fan mode .”

Emerson contends that Co rnelius, Vogelzang, and Nakatsuno all disclose a periodic fan used to circulate air to keep the air uniform in the air conditioned space, just as in claim 1 of the ’017 patent . Specifically, it states that Cornelius teaches a timer used to operate the sys tem fan at predetermined intervals to maintain a desirable te mperature ; that Vogelzang indicates that periodically cycling the fan when there is no call for heating or cooling

can move air throughout the space to prevent stagnation; and that Nakatsuno discloses a fan that can be run i ntermittently to improve comfort and con serve energy

. Emerson points out that its expert, Dr. Sherman, testified that those three references all address the same air stagnation problem set forth in the ’017 patent.ABT SYSTEMS , LLC v. EMERSON ELECTRIC CO

. 10

Emers on further urges that a person of ordinary skill would have be en motivated to combine the prior art periodic fan s of Cornelius, Nakatsuno, and Vogelzang with prior art timer s to begin air circulati on after an initial pause or delay. It reasons that if a p erson of ord inary skill had been assembling a thermostat in conjun ction with the prior art periodic fan of Cornelius or Vogelzang

, he o r she would naturally have cause d the fan to operate intermittently after the call for heating or cooling ended. Emerson contends that, since there would have be en no need for the fan to circulate air immediately after the call for he ating or cooling ended, as a matter of

common sense, one of skill in the art would have inserted

a pause before additional circulation was initiated

. Moreover, in Emerson’s view, Petrone and Nakatsuno both teach a delay or pause in fan operation following the end of a heating or cooling cycle as being dependent on the time at which the heating or cooling cycle ends

. Emerson therefor e argues that under a proper application of KSR no reasonable jury could have found the asserted claims of the ’017 patent not obvious , and the district court thus erred in denying its motion for JMOL

. In response, ABT first states that Emerson’s appeal is an attempt to retry credibility and factual determinations made by the jury. It argues that

, in view of its verdict, the jury necessarily found ABT’s witnesses, Mr. Rudd and Dr. Siegel, more credible than Emerson’s technical expe rt, Dr. Sherman, and its prior art expert

, Mr. Vogelzang. It contends also that the jury implicitly found that secon dary considerations of obviousness, such as long

- felt need, weighed in it s favor. ABT asserts that the jury ’s decision to credit its witnesses and to find secondary indicia of nonobviousness is support ed by substantial evidence.
Rather than mounting a strong challenge to the me rits of Emerson’s theory of obviousness based on the discl osures of the prior art references

, ABT takes the position that Emerson’s argument is flawed because the referencesABT SYSTEMS , LLC v. EMERSON ELECTRIC CO

. 11

upon which it relies are either non

- enabled or teach away

. ABT first con tends that Nakatsu no and Cornelius are

non

- enabling and, therefore, cannot be fully factored in to the obviousness ana lysis . Nakatsuno, it argues, only teaches “single

- shot” fan operation after a cooling system compressor deactivates. It states that Nakatsuno does not enable multiple, periodic fan cycles because only a single fa n cycle is disclosed in the specification

. Contin uing, ABT argues that , like Nakatsuno, Cornelius is non

enabling because it does not disclose any electrical co nnection between the thermostat that controls the call for fan activation and the timer used to create period ic cycles based on the end of heating

. It states that th e timer of Cornelius is not synced with the deactivation of the hea ting device , since the “timing device” operates “ind ependently of temperature conditions.” Cornelius col. 1 ll. 46

– 50. Relatedly

, ABT state s that Vogel zang fails to disclose the periodic fan cycle being dependent on the last heating or cooling cycle

. Finally , it urges that Nakatsuno and Petrone

— the so

- called “single

- shot” fan operation references— teach away because they are for a purpose (i. e., coil drainage) “unrelated” to the benefits described in the ’017 patent. Because ABT believes that Cornelius, Nakatsuno, Vogelzang, and Petrone are non

- enabled or teach away, it argues that a person of skill in the art would have had no reason to comb ine their teachings

. III. Having considered the parties’ arguments and the e vidence of record, w e hold, as a matter of law, that the district court erred in denying Emerson’s motion for JMOL that claims 1– 5 of the ’017 patent are invalid as obvi ous.
A.
Recognizing that nonobviousness was determined by a jury, we a ssign due deference to the jury’s verdict

. In analyzing the jury’s decision, “ [w] e first presume that theABT SYSTEMS , LLC v. EMERSON ELECTRIC CO

. 12

jury resolved the underlying factual disputes in favor of the verdict [] and leave those presumed findings undi sturbed if they are supported by substantial evidence. ” Kinetic Concepts , 688 F.3d at 1356

– 57 (quoting Jurgens v. McKasy , 927 F.2d 1552, 1557 (Fed. Cir. 1991))

. Next , we

“ examine the [ultimate] legal conclusion [of non obviou sness] de novo to see whether it is correct in light of the presumed jury fact findings.” Id. at 1357 (quoting Jurgens , 927 F.2d at 1557) (second alter ation added)

. In

re creating the facts as they may have been found by the jury, and in applying the Graham fac tors, “ we assess the record evidence in the light most favorable to the verdict win ner

. ” Richardson

- Vicks, Inc. v. Upjohn Co., 122 F.3d 1476 , 1479 (Fed. Cir. 1997). The Graham factors are : (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill in the art at the time of the invention; and (4) objective evidence of nonobviousness. Graham v. John Deere Co

. , 383 U.S. 1, 17

– 18 (1966). In this case, there are few, if any, relevant differences between the parties’ understanding of the scope and content of the prior art, the differences between the prior art and the claims, and the level o f ordinary skill in t he art.
As seen, the issue of nonobviousness revolves around the “ recycle control ” limitation of claim 1. That limitation reads as follows:
[A] recycle control for periodically activating and deactivating only the circulating fan after a pres elected time period

, since the central air conditio ning system has been deactivated, or the circulating fan has been deactivated from the selectable co nstant fan mode

. ’017 patent c laim 1 (emphases added)

. B oth ABT’s expert, Dr. Siegel, and Emerson’s expert, Dr. Sher man, agree d that Nakatsuno discusses intermi ttent or periodic cycling, but only directly teaches a “single

-ABT SYSTEMS , LLC v. EMERSON ELECTRIC CO

. 13

shot ” fan cycle after a predetermined delay following deactivation of the central air system . Dr. Siegel, e xplained that “ [s] o that is to say there is not a periodic recycling of the fan [disclosed in Nakatsuno]. There is a single time after the air conditioning has finished its job of cooling, satisfied the thermostat, where the fan shuts off one time to allow the coil to drai n.” Trial Tr. at 107:18

– 22, ABT Sys. , No. 4: 11

- cv

- 00374

- AGF (E.D. Mo. Feb. 20 , 2013), ECF No. 486. Nakatsuno , according to Dr. Siegel, address es the problem of draining the coils after a cooling cycle . Dr. Siegel acknowledge d , however, that Nakatsuno di scusses “intermittent fan operation .” Id. at 155:4

– 21

. Dr. Siegel testified similarly with respect to the Petrone reference

— and Dr. Sherman did not disagree : that it only discloses a “ single

- shot ” fan for purposes of coiling drainage. Dr. Siegel’s testi mony is supported by the record; we must therefore presume that the jury resolved any factual disputes about Nakatsuno’s and Petrone’s “single

- shot” fan operation in ABT’s favor. Thus, a reasonable juror c ould have f ound that , while technology for activating a fan after a predetermined time period following the end of a heating or cooling cycle existed in the prior art, it may have been implemented as a single event at the end of a cooling cycle for purposes of draining cooling coils.
The experts also were in general agreement with r egard to the prior art teaching periodic fan cycling during a period where there is no call for heating or cooling

. Dr. Siegel testified that the timer s of Cornelius and Voge lzang are not described as being directly associated with

, or linked to, the end of a heating or cooling cycle

. Fu rther, b oth Dr. Siegel and Dr. Sherman agreed that the timer of Cornelius i s not explicitly reset after the end of a heating or cooling cycle. In that regard, Dr. Siegel e xplained th at Cornelius’s timer “ could make the fan go on and off on a predetermined cycle but it couldn ’ t control that

-- couldn’ t link that to the operation of the therm o-ABT SYSTEMS , LLC v. EMERSON ELECTRIC CO

. 14

stat or the rest of the system.” Id. at 112:17

– 20. In other words, according to Dr. Siegel, Cornelius does not teach “activating and deactivating only the circulating fan after a preselected time period, since the central air conditio ning system has been deactivated

, ” as set forth in claim 1

. Vogelzang likewise does not teach a periodic fan that operates as a function of when a heating or cool ing cycle end s . Like Cornelius, Vogelzang discloses a timer that may be unassociated with the deactivation of t he heating and cooling cycles.

B. In view of the undisputed facts, as well as those that

are pr esumed to have be en resolved by the jury in ABT’s favor, the issue of obvious ness thus turns on whether , at the time of the Rudd invention, a person of ordinary skill would have combine d elements from the several prior art references . Specifically, the qu estion is whether a person of skill would have combin ed references that disclose “single

- shot” fan operation as a function of the time when heating or cooling cycles end with references that teach periodic fan cycles during period s of time whe n there is no call for heating or cool ing.

Dr. Siegel testified that there would have be en no m otivation to combine elements of Cornelius and/or Voge lzang with Petrone and/or Nakatsuno to create a periodic fan cycle that was dependent on the end of a coolin g or heating cycle. In his view, the references do not explain how a person of skill might “plug[] ” the “ single

- shot ” fan reference s into the periodic cycle references, and he stated that there would be logistical and enablement issues in making a “ single

- shot ” system work with “heating

, co nstant fan and cooling ” mode s

. Id. at 116:20

– 118:22. Dr. Siegel also testified that the prior art references do not show the control logic required by the claims of the ’017 patent. In response, Dr. Sherman took the p osition that it would have been a logical and ordinary step for a per sonABT SYSTEMS , LLC v. EMERSON ELECTRIC CO

. 15

of skill in the art to use the prior art to create a periodic fan that is dependent on the end of a heating or cooling cycle.

T he parties agree that Vogelzang set s forth every li mit ation of assert ed claim 1 except tying periodic fan cycles directly to the deactivation of the heating or cooling elements or to the end of “constant mode” operation

. I ndeed, Vogelzang address es the same problem identified by the ’017 patent (i.e., air stagnation during periods without heating or cooling) in a nearly identical manner. Vogelzang discloses a “cycle position” option for a therm ostat having a “conventional fan cycler

. . . connected to energize the fan relay” so that it can “main tain periodic air flow through the air cleaner 30 and

. . . move the air about in the space.” Vogelzang col. 2 ll. 36

– 42. Vogelzang also describes energizing the relay for a “predetermined number of times each hour to cycle fan relay 33 such as [] 6 short operations each hour.” Id. col. 2 ll. 43

– 46. The

reason for this, the patent explains, is to cycle the fan “during periods when there is no operation of the heating apparatus or cooling apparatus” in order to “provide for the treatment of the air throug h by [ sic] the air cleaner.” Id. col. 1 ll. 3 2– 38

. Vogelzang, though, does not necessar ily start the periodic cycle based on the deactivation of the heating and cooling elements.
For its part, Cornelius discloses elements similar to Vogelzang. It teaches a furnace that works in conjunction with a thermostat and a timing device “to intermittently start and stop the [ circulation fan] motor 1 4 for ventila ting a room or rooms when the room thermostat 110 does
not call for heat. ” Cornelius col. 9 ll. 23

– 26. As in Voge lzang and the ’017 patent, the stated purpose of the invention is to address stagnation, temperature, and cleanliness. Id. col. 9 ll. 40

– 42 ; see also i d. col. 9 ll. 26 –3 4 (“ In particular this scheme is adapted for the ventilation of sleeping rooms where the windows remain closed during the night and when the room thermostat is man u-ABT SYSTEMS , LLC v. EMERSON ELECTRIC CO

. 16

ally or automatically lowered to produce a temperature of, say, 55 ° F. There are many nights when the furnace would not operate as the ho use would not cool to this
tem perature. ”). Cornelius does not, however, disclose a “constant fan mode,” as required by claim 1. And, it does not teach necessarily setting the timing device as a fun ction of the end of a heating cycle

. Nakatsuno, however, does disclose operation of a sy stem fan at a predetermined time following the deactiv ation of an air conditioning compressor. Nakatsuno states, in relevant part:

As far as the intermittent operation of the indoor fan is concerned, the drive and stop of the indoor fan may be operatively associated with the drive and stop of the compressor as shown in FIG. 11(a) and, alternatively, the indoor fan may be operated for a length of time Δ t2 a predetermined time Δ t1 after the stop of the compressor as shown in FIG. 11(b).

Nakatsuno col. 10 ll. 7

– 15 (emphas e s added) ; see also id.
at Figs. 11(a), (b)

. Nakatsuno th us discloses using the end of a cooling cycle as part of the function for turning on the system fan during periods where there is no call for heating or cooling. Additionally, even presuming that Nakatsuno fails to disclos e periodic fan cycles by only specifically descri bing a “single

- shot ” fan

, it plainly su ggests such cycles : [An] indoor fan can b e intermittently driven at the predetermined number of revolution [sic] regardless of whether the compressor is being operated or held still, so that the difference between respe ctive temperatures in top and bottom regions in the space to be air

- conditioned can be minimized by the circulation effect thereby to improve the co mfortableness and also to minimize the energy co nsumption.ABT SYSTEMS , LLC v. EMERSON ELECTRIC CO

. 17

Id. col. 9 l. 67 to col. 10 l. 6 (emphasis added)

. 1

In KSR , the Supreme Court instructed that “w hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” 550 U.S. at 416. The Court stated that “ [i]f a person of ordinary skill can implement a predictable variation [of a prior art reference with other prior art components], § 103 likely bars its patentability.” Id. at 417. Here, the timer of Vogelzang or Cornelius, modified by the predetermined a nd co mpressor

- dependent interval of Nakatsuno or Petrone

, would have yield ed a predictable result : the system fan would activate periodically following the end of a heating or cooling cycle

— the invention claimed in the ’017 p atent. 2

1 Petrone teaches a fan that stops when the call for cooling ends and restarts after a predetermined interval

. However, it does not teach such operation for the purpos e of alleviating air stagnation. Rather, it teaches a delay for purposes of allowing the cooling coils to drain conde nsation. Petrone col. 4 ll. 18

– 22, col. 7 ll. 7

– 15.

2 The cited references do not “teach away,” as ABT
argues , b ecause it is clear that none come near to “ ‘ crit iciz [ing] , discredit [ing] , or otherwise discourag [ing] ’ inve stigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc. , 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton , 391 F.3d 1195, 1201 (Fed. Cir. 2004) ). Additionally, ABT’s suggestion that Cornelius and Nakatsuno are non

- enabled is misplaced, since even “[a] non

- enabling reference may qualify as prior art for the purpose of determining obviousness,” Symbol Te ch

., Inc. v. Opticon

, Inc. , 935 F.2d 1569, 1578 (Fed. Cir. 1991) , and even “an inoperative device

. . . is prior art for all that it teaches,” Beckman Instruments,ABT SYSTEMS , LLC v. EMERSON ELECTRIC CO

. 18

I t is well settled that

, even where references do not explicitly convey a motivation to combine, “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” Id. at 420. W e have made clear that “a
court

. . . may find a motivation to combine prior art references in the nature of the problem to be solved.” Ruiz v. A.B. Chance Co. , 357 F.3d 1270, 1276 (Fed. Cir. 2004). A s pertinent here, “this form of motivation t o combine evidence is particularly relevant with simpler mechanical technologies.” Id. ; see also Pro

- Mold & Tool Co., Inc. v. Great Lakes Plastics, Inc. , 75 F.3d 1568, 1573 (Fed. Cir. 1996).
In our view, if, at the time of the invention claimed in the ’01 7 patent, a person of ordinary skill had looked at Vogel zang, he or she would have found it nearly obvious from that disclosure itself to set the periodic fan to run as

a function of when the heating or cooling cycle end ed

. That is because the nature of t he problem to be solved in both the ’017 patent and Vogelzang (as well as Cornelius and Nakatsuno) is to alleviate air stagnation during period s of no heating or cooling. As Dr. Sherman test ified, “a person of ordinary skill would realize that the easiest and best thing to do would be to start with an off period, a delay before doing this cycling since the purpose is to mix the air and the air has just been mixed.” Trial Tr. at 69:20

– 25, ABT Sys. , No. 4:11

- cv

- 00374

- AGF (E.D. Mo. Feb. 19, 2013), ECF No. 48 5. Thus, setting a delay timer or control based on the end of the heating or cooling cycle, simil ar to the concept in Nakatsuno or Petr one , would have been naturally implemented by a person skilled in the art. In other words, it would have been

Inc. v. LKB Produkter AB , 892 F.2d 1547, 1551 (Fed. Cir. 1989).ABT SYSTEMS , LLC v. EMERSON ELECTRIC CO

. 19

obvious to set the timer of Vogelzang or Cornelius based on the end of a heating or cooling cycle, as disclosed in Nakatsuno (or Petrone), regardless of for how long the time interval was to be set

. C.

The fourth Graham factor, objective evidence of no nobviousness, includes factors such as “commercial success, long

- felt but unresolved need, failure of others, copying, and unexpected results.” Ruiz v. A.B. Chance Co. , 234 F.3d 654, 663 (Fed. Cir. 2000) ; see also id. at 667 (explai ning that “ secondary consideration s, when present, must be considered in determining obviousness ”). As noted, i n arguing in support of the district court’s denial of Eme rson’s JMOL motion, ABT relies on the consideration s of commercial success and long

- felt need, the latter of which

was c ited by the district court in its opinion. A BT Sys.

, 2013 WL 5567713, at *3. We are not persuaded by ABT’s argument.

ABT’s reliance on commercial success is undermined as a matter of law by ABT’s failure to introduce evidence related to the nexus between periodic fan operation and the commercial success of products embodying the inve ntion claimed in the ’017 patent

. See Demaco Corp. v. F. Von Langsdorff Licensing Ltd. , 851 F.2d 1387, 1391 (Fed. Cir. 1988) ( explaining that “nexus” is used to “ designate a legally and factually sufficient connection between the proven success and the patented invention ” ). T he items that ABT presented as evi dence in support of its comme rcial success argument were, in large part

, advertisements and press releases for Mr. Rudd’s products, not market share infor mation or industry praise or recognition for the novelty of the fan recycler feature claimed in the ’017 patent

. See In re Huang , 100 F.3d 135, 140 (Fed. Cir. 1996) (“This court has noted in the past that evidence related solely to the number of units sold provides a very weak showing of commercial success, if any.”) ; Demaco

,ABT SYSTEMS , LLC v. EMERSON ELECTRIC CO

. 20

851 F.2d at 1392 (“ When the thing that is commercially successful is not coextensive with the patent ed inve ntion . . . the patentee must show prima facie a legally sufficient relationship between that which is patented and that which is sold. ”)

. Also, t here is no evidence in the record that Emerson’s products were sold as a result of the Big Blue’s CFF recycler feature. The record is thus lacking evidence that the alleged success of Emerson’s product in the market was driven by any novel aspect of the claimed invention. J.T. Eaton & Co. v. Atl. Paste & Glue Co. , 106 F.3d 1563, 1571 (Fed. Cir. 1997) (“[ C]ommercial success of the product must be due to the merits of the claimed invention beyond what was readily available in the prior art .”)

. We are also not persuaded by ABT’s argument that commercial success is demonstrated by the number of license s taken under the ’017 patent

. While licenses can sometimes tilt in favor of validity in close cases, they
cannot by them sel ves overcome a convincing case of invalidity without showing a clear nexus to the claimed invention

. Iron Grip Barbell Co. v. USA Sports, Inc. , 392 F.3d 1317, 1324 (Fed. Cir. 2004) (“Our cases specifically require affirmative evidence of nexus where the evidence of commercial success presented is a license, because it is often ‘cheaper to take licenses than to defend infring ement suits.’” ); SIBIA Neurosciences, Inc. v. Cadus Pharm. Corp. , 225 F.3d 1349, 1358 (Fed. Cir. 2000) (“[T]he mere existence of these licenses is insufficient to overcome the conclusion of obviousness, as based on the express teac hings in the prior art that would have mo tivated one of ordinary skill to modify [other prior art].”)

. Here, ABT points to no evidence that the licenses it cites were taken based on the merits of the invention claimed in the ’017 patent

. See Iron Grip , 392 F.3d at 1324. ABT’s argument that ther e was a long

- felt need for the invention embodied in the claims of the ’017 patent likewise does not lead us to a different result . T he discl o-ABT SYSTEMS , LLC v. EMERSON ELECTRIC CO

. 21

sure s of the prior art references

— and especially Voge lzang ’s “cycle position” option for running a system fan

“ du ring periods when there is no operation of the heating apparatus or cooling apparatus ” to help mix air

— eliminate any serious contention that there was a long

felt need for the invention claimed in the ’017 patent

. See Ormco Corp. v. Align Tech

. , Inc. , 463 F.3d 1299, 131 1– 12 (Fed. Cir. 2006) (“[I]f the feature that creates the comme rcial success was known in the prior art, the success is not pertinent.”). ABT’s argument of a long

- felt need ignore s the scope of claim 1 , which does not set forth l imits on ho w long or how often periodic fan operation is to be performed

. In addition

, claim 1 does not limit in any way the control logic for implementing such periodic operation

. D.

In s um , even assuming that the jury correct ly resolv ed pertinent factual disputes in favor of ABT, the prior art still renders the claims of the ’017 patent obvious as a matter of law. See Boston Sci

. Scimed, Inc. v. Cordis Corp. , 554 F.3d 982, 990 (Fed. Cir. 2009) (“When we conside r that, even in light of a jury’ s findings of fact, the references demonstrate an invention to have been obv ious, we may reverse its obviousness determination.”); Richardson

- Vicks , 122 F.3d at 1479 (a jury verdict “does not mean that we are free to abdicate our role as the ultimate decision maker on the que stion of obviousness. That decision remains within our province”). Here, all of the claimed limitations are expressly found in the cited prior art references. At the same time, the motivation or

ra tionale for combining those references can be found in th e nature of the problem addressed , if not directly from the disclosures of the references themselves

. Finally, ABT’s argument based upon secondary considerations of nonobviousness is not supported by the record. Thus, we hold that claims 1– 5 of the ’017 patent are invalid as a matter of law by reason of obvious ness.ABT SYSTEMS , LLC v. EMERSON ELECTRIC CO

. 22

C ONCLUSION For the foregoing reasons, we vacate the district court’s denial of Emerson’s JMOL motion and reverse the judgment that claims 1

– 5 of the ’017 patent are not invalid as obvious. We also vacate the judgment of i nfringement. The case is remanded to the district court for entry of judgment in favor of Emerson and dismissal of ABT’s complaint

. REVERSED

- IN

- PART, VACATED

- IN

- PART, and REMANDED

C OSTS Each party shall bear its own costs.