NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

PROBATTER SPORTS, LLC,

Plaintiff-Appellee

v.

SPORTS TUTOR, INC,

Defendant-Appellant

______________________ 

2016-1800

______________________ 

Appeal from the United States District Court for the 

District of Connecticut in No. 3:05-cv-01975-VLB, Judge 

Vanessa Lynne Bryant.

______________________ 

Decided: March 1, 2017

______________________ 

JOHN RICHARD HORVACK, JR., Carmody Torrance Sandak & Hennessey LLP, New Haven, CT, argued for plaintiff-appellee. Also represented by FATIMA LAHNIN, JOHN 

LOUIS CORDANI. 

BLAKE ROBERT HARTZ, Woodard, Emhardt, Moriarty, 

McNett & Henry LLP, Indianapolis, IN, argued for defendant-appellant. Also represented by JOHN C. MCNETT, 

QUENTIN G. CANTRELL. 

______________________ 
2 PROBATTER SPORTS, LLC v. SPORTS TUTOR, INC

Before DYK, CLEVENGER, and STOLL, Circuit Judges.

STOLL, Circuit Judge. 

The district court in this case entered summary 

judgment that Sports Tutor, Inc., infringes two of ProBatter Sports, LLC’s, patents relating to pitching machines. 

Sports Tutor appeals the district court’s determination

that those patents were not invalid as obvious. Because 

Sports Tutor did not meet its burden of establishing 

obviousness before the district court, we affirm.

BACKGROUND

ProBatter and Sports Tutor both sell programmable 

pitching machines meant to simulate real-life pitching 

situations. ProBatter’s mechanical pitching machine

stands behind a video projection of an actual pitcher 

winding up and pitching. A ball thrust from the pitching 

machine emerges from a hole in the video screen towards 

a batter and/or catcher. Probatter’s product synchronizes 

the ball release with the video so that the batter and/or 

catcher experience something similar to a live pitcher’s 

pitch. The machine can throw a wide variety of pitch 

types at varying speeds and can alternate between righthanded and left-handed pitcher simulation. Major league 

and collegiate baseball programs have purchased ProBatter’s system. 

The ProBatter system practices ProBatter’s U.S. 

Patent No. 6,182,649 and its continuation patent, U.S. 

Patent No. 6,546,924. These patents describe a ballthrowing machine “able to interchangeably deliver pitches 

of different types to different locations at different speeds 

with less than ten-second intervals between pitches.” ’649 

patent abstract. The claimed machine is also capable of 

changing pitch type, speed, and delivery location “without 

the need to manually readjust the machine between 

pitches.” Id. at col. 3 ll. 43–46. The patents allege that 
PROBATTER SPORTS, LLC v. SPORTS TUTOR, INC 3

this was not possible in prior art machines because of the 

difficulty in quickly changing motor speed. The patents 

explain that the claimed machine is able to rapidly decelerate its motors by incorporating a dynamic braking 

mechanism. 

By way of example, independent claim 27 of the ’649 

patent recites:

27. A ball-throwing machine of the type having a power head including at least two coacting 

wheels for propelling a ball toward a batter to 

simulate a pitch, said power head being pivotably 

mounted on a base at a center pivot about which 

the power head may be pivoted in both a horizontal and a vertical direction, said machine including:

means for causing the power head to rotate 

about said center pivot to assume a predetermined horizontal position, said means for causing 

comprising at least one horizontal linear actuator; 

and

means for causing the power head to rotate 

about said center pivot to assume a predetermined vertical position, said means for causing 

comprising at least one vertical linear actuator; 

and

dynamic braking means for powering motors 

for the said coacting wheels, said means comprising a dynamic or regenerative braking circuit.

’649 patent reexamination certificate col. 3 ll. 12–28. 

Probatter sued Sports Tutor in the District of Connecticut, alleging that Sports Tutor’s HomePlate machine 

infringed ’649 patent claims 1–12, 25–27, and 31, as well 

as ’924 patent claim 1. Sports Tutor then challenged the 

patents in a series of ex parte reexaminations, two on 
4 PROBATTER SPORTS, LLC v. SPORTS TUTOR, INC

each patent, during which the district court stayed the 

litigation. In the first round of reexaminations, the 

examiner rejected many of the claims as obvious in view 

of the prior art, but the Board of Patent Appeals and 

Interferences reversed those rejections and allowed the 

claims. The Board reasoned that the dynamic braking 

limitation was not disclosed in any of the allegedly anticipatory references and that there was no motivation to 

combine the prior art ball-throwing machine references 

with the prior art dynamic braking reference, U.S. Patent 

No. 5,187,419 (“DeLange”), drawn generally to an electric 

motor. The examiner rejected Sports Tutor’s invalidity 

challenges in the second round of reexaminations and 

allowed the asserted claims. 

Following reexamination, the district court lifted the 

stay and entered summary judgment of infringement, 

which Sports Tutor does not appeal. The district court 

denied motions seeking to determine validity on summary 

judgment and held a bench trial on that issue, after which 

the parties filed post-trial briefs. The court ruled that 

Sports Tutor did not carry its clear and convincing burden 

at trial or in its post-trial briefing to prove invalidity of 

the asserted patent claims. The district court specifically 

found that Sports Tutor did not satisfy its burden because 

it never explicitly argued for a particular combination of 

references or proffered a motivation to combine references. The court emphasized that it could not make 

factual findings on the scope and content of the prior art 

or the differences between the claims and the prior art 

because Sports Tutor failed to identify any particular 

prior art combinations. 

Sports Tutor appeals the district court’s validity ruling, and we have jurisdiction under 28 U.S.C. 

§ 1295(a)(1).
PROBATTER SPORTS, LLC v. SPORTS TUTOR, INC 5

DISCUSSION

I.

A patent claim is unpatentable as obvious “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 person having ordinary skill in the art.” 

35 U.S.C. § 103.1 “[P]atents are presumed to be valid and 

overcoming this presumption requires clear and convincing evidence.” Alcon Research Ltd. v. Barr Labs., Inc., 

745 F.3d 1180, 1188 (Fed. Cir. 2014) (citing 35 U.S.C. 

§ 282; Microsoft Corp. v. i4i Ltd., 564 U.S. 91, 95 (2011);

Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1354 

(Fed. Cir. 2010) (en banc)). 

“Obviousness is a question of law, based on underlying factual determinations including: ‘the scope and 

content of the prior art’; ‘differences between the prior art 

and the claims at issue’; ‘the level of ordinary skill in the 

pertinent art’; and ‘[s]uch secondary considerations as 

commercial success, long felt but unsolved needs, failure 

of others, etc.’” Insite Vision Inc. v. Sandoz, Inc., 783 F.3d 

853, 858 (Fed. Cir. 2015) (quoting Graham v. John Deere 

Co., 383 U.S. 1, 17 (1966)). “Following a bench trial on 

the issue of obviousness, we review the court’s ultimate 

legal conclusions de novo and the underlying factual 

findings for clear error.” Id. (quoting Tyco Healthcare 

Grp. LP v. Ethicon Endo–Surgery, Inc., 774 F.3d 968, 974 

(Fed. Cir. 2014)).

1 Given the effective filing date of the ’649 and ’924

patents’ claims, the version of 35 U.S.C. § 103 that applies 

here is the one in force preceding the changes made by the 

America Invents Act. See Leahy–Smith America Invents 

Act, Pub. L. No. 112-29, § 3(n), 125 Stat. 284, 293 (2011).

 
6 PROBATTER SPORTS, LLC v. SPORTS TUTOR, INC

II.

Sports Tutor argues that the district court erred by 

holding that Sports Tutor failed to show that the claims 

were invalid as obvious. As support, Sports Tutor directs 

us to the examiner’s initial rejections of the claims during 

reexamination and to the Board’s later reversal of those 

rejections, both of which Sports Tutor placed into evidence 

along with the underlying prior art references. Sports 

Tutor reads the Board’s decision narrowly, interpreting 

the Board as disagreeing with the examiner only on 

whether a motivation to combine references existed. In 

other words, Sports Tutor speculates that the Board’s

silence as to the examiner’s findings on scope and content 

of the prior art and other Graham factors means that the 

Board acquiesced in those findings. Therefore, according 

to Sports Tutor, all it needed to do to prove obviousness

before the district court was to show dynamic braking in 

the context of a ball-throwing machine. Sports Tutor thus 

believes that, at the district court, it “cured the problem” 

with the reexamination by introducing new prior art 

references that teach dynamic braking in ball-throwing 

machines, even though Sports Tutor nowhere addressed 

any of the other claim limitations in its presentations to 

the district court. See J.A. 1117. Sports Tutor argues 

that by purportedly showing that the dynamic braking 

limitation was in the prior art, taken with the examiner’s 

rejection that the Board reversed, it met its burden of 

proving obviousness by clear and convincing evidence 

before the district court. 

We disagree. The district court did not err in concluding that Sports Tutor’s showing was insufficient to establish obviousness. We emphasize that a defendant seeking 

to overcome the statutory presumption of patent validity 

must persuade the factfinder by clear and convincing 

evidence. See i4i, 564 U.S. at 95. Sports Tutor did not 

satisfy that burden here because it failed to articulate a 

clear theory of obviousness. 
PROBATTER SPORTS, LLC v. SPORTS TUTOR, INC 7

We first note that Sports Tutor did not identify to the 

district court a prior art obviousness combination on 

which it relied. Indeed, neither its briefing nor its trial 

presentation informed the district court of the specific 

references that Sports Tutor proposed to combine with the 

dynamic braking references, explained the content of 

those references, or demonstrated how to combine them. 

See Oral Arg. at 33:05–35:03, http://oralarguments.cafc.

uscourts.gov/default.aspx?fl=2016-1800.mp3 (showing 

Sports Tutor unable to direct the court to any portion of 

its trial presentation where it identified the references to 

combine). Sports Tutor merely cited, without explanation, the examiner’s original—and ultimately reversed—

rejection, which spanned one-hundred pages and included 

a slew of references in ten separate obviousness combinations, some of which combined as many as five different 

references. 

Our precedent affirms the district court’s ability to 

demand greater specificity than Sports Tutor demonstrated here to meet its burden of proving invalidity by clear 

and convincing evidence. For example, in Motorola Mobility, LLC v. International Trade Commission, Motorola, a 

respondent to an International Trade Commission § 337 

investigation, made obviousness arguments that the 

administrative law judge rejected as “conclusory and 

generalized sentences” in which “Motorola did not clearly 

identify the scope and content of the prior art that it was 

asserting, or provide any argument that certain prior art 

references render a specific claim obvious.” 737 F.3d 

1345, 1350 (Fed. Cir. 2013) (internal citations omitted). 

In affirming, we explained:

The administrative law judge had no obligation to 

guess about which prior art combinations 

Motorola asserted, and how those references rendered the claims invalid. . . . 
8 PROBATTER SPORTS, LLC v. SPORTS TUTOR, INC

. . . Neither the administrative law judge, nor 

the Commission, nor this court has the task of divining an invalidity defense from the record.

Id. (citing Schumer v. Lab. Comput. Sys., 308 F.3d 1304, 

1316 (Fed. Cir. 2002)); see also In re Brimonidine Patent 

Litig., 643 F.3d 1366, 1376 (Fed. Cir. 2011) (holding 

district court did not abuse its discretion in refusing to 

consider prior art references admitted into evidence “in 

light of the absence of testimony explaining their relevance to the obviousness issue”); Koito Mfg. Co. v. TurnKey-Tech, LLC, 381 F.3d 1142, 1151–52 (Fed. Cir. 2004).2

Sports Tutor avers that ProBatter admitted that all 

non-braking claim limitations existed in the prior art 

when it stipulated that dynamic braking was “[t]he key 

distinguishing factor in the ProBatter Patents, and the 

primary issue at bar.” Appellant Br. 18–19 (quoting J.A. 

197, 213). Even if we were to agree with Sports Tutor 

that ProBatter’s recitation of the patents’ point of novelty 

is a concession that all other elements existed in the prior 

art, that would not be enough for Sports Tutor to prove its 

obviousness case. The law is clear that “a patent composed of several elements is not proved obvious merely by 

demonstrating that each of its elements was, independently, known in the prior art.” KSR Int’l Co. v. 

Teleflex Inc., 550 U.S. 398, 418 (2007). Indeed, “it can be 

2 Sports Tutor’s appeal briefing attempts to explain 

its proposed obviousness combinations, but we do not 

consider this new argument raised for the first time on 

appeal. See Sage Prods., Inc. v. Devon Indus., Inc., 126 

F.3d 1420, 1426 (Fed. Cir. 1997) (“With a few notable 

exceptions, such as some jurisdictional matters, appellate 

courts do not consider a party’s new theories, lodged first 

on appeal. If a litigant seeks to show error in a trial 

court’s overlooking an argument, it must first present 

that argument to the trial court.”).

 
PROBATTER SPORTS, LLC v. SPORTS TUTOR, INC 9

important to identify a reason that would have prompted 

a person of ordinary skill in the relevant field to combine 

the elements in the way the claimed new invention does.” 

Id. In the district court, Sports Tutor did not adduce 

expert testimony or even present attorney argument on 

why one of skill would have been motivated to combine 

dynamic braking with the other prior art references 

directed to pitching machines. Accepting Sports Tutor’s 

argument would essentially eliminate the motivation to 

combine requirement and essentially turn an obviousness 

analysis into an anticipation analysis. 

The same logic holds true with Sports Tutor’s argument that, in the reexaminations, the Board implicitly 

agreed with the examiner that the other non-braking 

elements existed in the prior art. Even if we accept this

factual predicate as true, Sports Tutor still presented no 

motivation to combine the dynamic braking references 

with the references the examiner relied on to teach the 

remaining limitations. Indeed, the Board’s reasoning in 

reversing the examiner was precisely that a motivation to 

combine dynamic braking with prior art pitching machines had not been demonstrated. Ex Parte Probatter 

Sports, LLC, Patent Owner & Appellant, 2011-008815, 

2011 WL 6739397, at *10 (B.P.A.I. Dec. 21, 2011); Ex 

Parte Probatter Sports, LLC, No. 2011-008816, 2011 WL 

6739343, at *9 (B.P.A.I. Dec. 21, 2011). Again, on the 

record before us, Sports Tutor’s showing that dynamic 

braking existed in isolation is not enough to show that 

one of ordinary skill would have combined that teaching 

with prior art pitching machines absent some motivation 

to combine supplied by Sports Tutor. 

Because we conclude that Sports Tutor failed to establish obviousness by clear and convincing evidence even 

without considering Probatter’s contrary evidence, we 

need not address ProBatter’s evidence of objective indicia 

of nonobviousness.
10 PROBATTER SPORTS, LLC v. SPORTS TUTOR, INC

CONCLUSION

We have considered Sports Tutor’s remaining arguments and find them unpersuasive. We affirm the judgment of the district court that Sports Tutor did not meet 

its burden to prove the asserted patents were invalid as 

obvious. 

AFFIRMED

COSTS

Costs to Appellee.