N OTE : This disposition is nonprecedential. 

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

______________________ PROBATTER SPORTS, LL C, 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

______________________

J OHN R ICHARD H ORVACK , J R

. , Carmody Torrance Sa ndak & Hennessey LLP, New Haven, CT, argued for plai ntiff-appellee. Also represented by F ATIMA L AHNIN , J OHN L OUIS C ORDANI

.

B LAKE R OBERT H ARTZ , Woodard, Emhardt, Moriarty, McNett & Henry LLP, Indianapolis, IN, argued for d efendant

- appellant. Also represented by J OHN C. M C N ETT , Q UENTIN G. C ANTRELL

.

______________________PROBATTER SPORTS , LLC v. SPORTS TUTOR , INC 2

Before D YK , C LEVENGER , and S TOLL , Circuit Judges

. S TOLL , Circuit Judge

. The district court in this case entered summary judgment that Sports Tutor, Inc.

, infringes two of ProBa tter 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.

B ACKGROUND ProBatter and Sports Tutor both sell programmable pitching machin es 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 alter nate between right

handed and left

- handed pitcher simulation

. Major le ague and collegiate baseball programs have purchased ProBa tter’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 ball

throwing machine “ able t o 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 lo cation “ without the need to manually readjust the machine between pitches .” Id. at col. 3 ll. 43

– 46. The patents allege thatPROBATTER SPORTS , LLC v. SPORTS TUTOR , I NC 3

this was not possible in prior art machines because of the difficulty in qui ckly changing motor speed. The patents explain that the claimed machine is able to rapidly dece lerate 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 ha ving a po wer 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 horizo ntal and a vertical dir ection, said machine inclu ding: means for causing the power head to rotate about said center pivot to assume a predete rmined horizontal position, said means for causing comprising at least one horizontal linear actuator; and means for causing the power hea d to rotate about said center pivot to assume a predete rmined 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 compri sing a dy namic or regenerative braking circuit.
’649 patent reexamination certificate col. 3 ll. 12 –28. Probatter sued Sports Tutor in the District of Co nnecticut , 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 onPROBATTER SPORTS , LLC v. SPORTS TUTOR , INC 4

each patent , during which the district court stayed the litigation . In the first round of reexaminations, the examiner rejected many of t he 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 antic ipatory references and that there was no motiva tion 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 S ports 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 di strict 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 brief s. The court ruled that Sports Tutor did not carry its clear and convincing burden at trial o r 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 refe rences . 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 partic ular prior art combinations

. Sports Tutor appeals the district court’s validity ru ling, and we have jurisdiction under 28 U.S.C. § 1295(a)(1).PROBATTER SPORTS , LLC v. SPORTS TUTOR , I NC 5

D ISCUSSION

I.

A patent claim is unpatentable as obvious “if the di fferences between the subject matter sought t o 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 thi s presumption requires clear and convin cing 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, 135 4 (Fed. Cir. 2010) (en banc) ).

“ Obviousness is a question of law, based on underl ying fac tual determinations including: ‘ the scope and content of the prior art’; ‘ differences between the pr ior art and the claims at issue’ ; ‘ the level of ordinary sk ill 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

pa tent s’ 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).PROBATTER SPORTS , LLC v. SPORTS TUTOR , INC 6

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 factor s 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 intro ducing new prior art references that teach dynamic braking in ball

- throwing machines

, even though Sports Tutor no where addressed any of the other claim limitations in its presentation s to the district court

. See J.A. 1117. Sports Tutor argues that by purported ly 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 . T he district court did not err in conclu ding that Sports Tutor’s showing was insufficient to esta blish obviousness. We emphasize that a de fen dant 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 , I NC 7

We first note that Sports Tutor did not identify to the district court a prior art obviousness combination on which it relied. Indeed, n either 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 the m

. See Oral Arg

. at 33:05

– 35:03
, http://oralarguments.cafc. uscourts.gov/default.aspx?fl=201 6- 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 m erely cited, without explan ation , the examiner’s original

— and ultimately reversed— rejection, which spanned one

- hundred pages and included

a slew of references in ten separate obviousness combin ations, 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 her e to meet its burden of proving invalidity by clear and convincing evidence

. For example, in Motorola Mobi lity, LLC v. International Trade Commissio n , Motorola, a respondent to an International Trade Commission § 337 inve stigation

, 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 Mot orola asserted, and how those references re ndered the claims invalid.

. . .PROBATTER SPORTS , LLC v. SPORTS TUTOR , INC 8

. . . Neither the administrative law judge, nor the Commission, nor this court has the task of d ivining 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 rel evance to the obviousness issue ”) ; Koito Mfg. Co. v. Turn

Key

- Tech, LLC , 381 F.3d 1142, 1151

– 52 (Fed. Cir. 2004)

. 2

S ports 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 rec it ation of the patents’ point of novelty is a concession that all other elements existed in the prior

ar t, that would not be enough for Sports Tutor to prove its obviousness case. The law is clear that “a patent co mposed of several elements is not proved obvious merely by demonstrating that each of its elements was, ind ependently, 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 Prod s ., Inc. v. Devon Indus., In c. , 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 overlookin g an argument, it must first present that ar gument to the trial court

. ”).PROBATTER SPORTS , LLC v. SPORTS TUTOR , I NC 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 re quirement 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 exis ted 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 m achines 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 esta blish obviousness by clear and convincing evidence even wit hout considering Probatter’s contrary evidence , we need not address Pro B atter’s evidence of objective indicia of nonobviousness.PROBATTER SPORTS , LLC v. SPORTS TUTOR , INC 10

C ONCLUSION We have considered Sports Tutor’s remaining arg uments and find them unpersuasive. W e affirm the jud gment of the district court that Sports Tutor did not meet its burden to prove the asserted patents were invalid as obvious.

AFFIRMED

C OSTS
Costs to Appellee.