United States Court of Appeals 

for the Federal Circuit ______________________ 

YITA LLC,

Appellant

v.

MACNEIL IP LLC,

Appellee

______________________ 

2022-1373, 2022-1374

______________________ 

Appeals from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in Nos. IPR2020-

01139, IPR2020-01142.

______________________ 

Decided: June 6, 2023

______________________ 

MARK P. WALTERS, Lowe Graham Jones PLLC, Seattle, 

WA, argued for appellant. Also represented by JASON A.

FITZSIMMONS, RALPH WILSON POWERS, III, Sterne Kessler 

Goldstein & Fox, PLLC, Washington, DC. 

 DAVID G. WILLE, Baker Botts LLP, Dallas, TX, argued 

for appellee. Also represented by CLARKE STAVINOHA,

CHAD C. WALTERS; MICHAEL HAWES, Houston, TX. 

 ______________________ 

Before TARANTO, CHEN, and STOLL, Circuit Judges.

Case: 22-1373 Document: 43 Page: 1 Filed: 06/06/2023
2 YITA LLC v. MACNEIL IP LLC

TARANTO, Circuit Judge. 

MacNeil IP LLC is the assignee of two U.S. patents, 

Nos. 8,382,186 and 8,833,834, that were the subject of decisions by the Patent Trial and Appeal Board in inter 

partes reviews (IPRs) of challenges to all claims of the patents on obviousness grounds presented in petitions filed 

by Yita LLC. In IPR 2020-01139, the Board rejected Yita’s 

challenge to all claims (1–7) of the ’186 patent, concluding 

that—although a relevant artisan would have been motivated to combine, and had a reasonable expectation of success in combining, the teachings of the asserted prior-art 

references to arrive at each challenged claim—“[MacNeil’s] 

evidence of secondary considerations [was] compelling and 

indicative of non-obviousness.” J.A. 81. Yita appeals that 

ruling. In IPR 2020-01142, the Board, while agreeing with 

Yita’s challenge to claims 13–15 of the ’834 patent (a ruling 

that MacNeil does not appeal), rejected Yita’s challenge to 

claims 1–12. Yita appeals that ruling. For the reasons below, we reverse the Board’s judgment in the ’1139 IPR and 

affirm its judgment in the ’1142 IPR.

I 

A 

The ’186 and ’834 patents share a specification, so for 

simplicity we cite only the specification of the ’186 patent. 

The subject addressed is a “vehicle floor tray . . . thermoformed from a polymer sheet of substantially uniform 

thickness.” ’186 patent, Abstract. The specification explains that traditional vehicle “floor mats end up not being 

centered on the area protected”; “pushed up so as to occlude 

the gas, brake, or clutch pedals”; or “bunched up or folded 

over” because “[h]uman beings have a tendency to move 

their feet around” and to “push around the floor mats.” Id.

col. 1, lines 27, 30–33. “A need therefore persists,” the specification adds, “for a floor tray that will have a more exact 

fit to the vehicle foot well” and “that stays in place once it 

is installed.” Id. col. 2, lines 4–7.

Case: 22-1373 Document: 43 Page: 2 Filed: 06/06/2023
YITA LLC v. MACNEIL IP LLC 3

The specification describes a way to meet this need by 

creating a floor tray through a process that involves taking 

a digital scan of a vehicle’s foot well, id. col. 16, line 30, 

through col. 17, line 3, then using a thermoform process to 

give a sheet of polymer the shape of that scan, id. col. 17, 

line 20, through col. 18, line 58. The resulting vehicle tray 

“fits the surface” of the vehicle floor well “to an enhanced 

degree of precision.” Id. col. 17, lines 22–23. In claims 1–

7 of the ’186 patent, the floor tray must “closely conform[]” 

to certain walls of the vehicle foot well, id. col. 19, line 45; 

id. col. 20, line 2, and in claims 1–12 of the ’834 patent, 

portions of the floor tray must be “within one-eighth of an 

inch” of certain walls of the vehicle foot well, ’834 patent,

col. 20, line 39.1 Figure 1 illustrates the claimed floor tray.

The ’186 patent has seven claims, one of which (claim 

1) is independent. The ’834 patent has 15 claims, four of 

1 Claims 13–15 of the ’834 patent require neither 

close conformance nor a maximum separation of one-eighth 

of an inch. See ’834 patent, col. 22, line 56, through col. 24, 

line 19. 

Case: 22-1373 Document: 43 Page: 3 Filed: 06/06/2023
4 YITA LLC v. MACNEIL IP LLC

which (claims 1, 5, 9, and 13) are independent. Claim 1 of 

each patent is reproduced below.

1. A vehicle floor tray thermoformed from a sheet 

of thermoplastic polymeric material of substantially uniform thickness, comprising:

a central panel substantially conforming to 

a floor of a vehicle foot well, the central 

panel of the floor tray having at least one 

longitudinally disposed lateral side and at 

least one transversely disposed lateral 

side;

a first panel integrally formed with the central panel of the floor tray, upwardly extending from the transversely disposed 

lateral side of the central panel of the floor 

tray, and closely conforming to a first foot 

well wall, the first panel of the floor tray 

joined to the central panel of the floor tray 

by a curved transition;

a second panel integrally formed with the 

central panel of the floor tray and the first 

panel, upwardly extending from the longitudinally disposed lateral side of the central panel of the floor tray, and closely 

conforming to a second foot well wall, the 

second panel of the floor tray joined to the 

central panel of the floor tray and to the 

first panel of the floor tray by curved transitions;

a reservoir disposed in the central panel of 

the floor tray;

a plurality of upstanding, hollow, elongate 

baffles disposed in the reservoir, each of the 

baffles having at least two ends remote 

from each other, the central panel, the first 

Case: 22-1373 Document: 43 Page: 4 Filed: 06/06/2023
YITA LLC v. MACNEIL IP LLC 5

panel, the second panel, the reservoir and 

the baffles each having a thickness from a 

point on the upper surface to a closest point 

on the bottom surface thereof, said thicknesses, as a result of the tray being thermoformed from the sheet of thermoplastic 

polymeric material of substantially uniform thickness, being substantially uniform throughout the tray;

the baffles each having a width, in any horizontal direction, of more than two times its 

thickness, the baffles adapted to elevate 

the shoe or foot of the occupant above fluid 

collected in the reservoir, and further 

adapted to impede lateral movement, induced by a change in vehicle speed or direction, of fluid collected in the reservoir, any 

portion of the reservoir connected to a remote portion of the reservoir by a path 

formed around ends of the baffles.

’186 patent, col. 19, line 35, through col. 20, line 24. 

1. A system including a vehicle and a floor tray for 

consumer installation into a predetermined foot 

well of the vehicle, the system comprising:

a vehicle foot well having a floor, a substantially longitudinally disposed first foot well 

wall upstanding from the floor, a substantially transversely disposed second foot 

well wall upstanding from the floor and 

joined to the first foot well wall, a substantially longitudinally disposed third foot 

well wall upstanding from the floor and 

joined to the second foot well wall; and

a vehicle floor tray molded from a sheet of 

polymeric material of substantially 

Case: 22-1373 Document: 43 Page: 5 Filed: 06/06/2023
6 YITA LLC v. MACNEIL IP LLC

uniform thickness, a central panel of the 

tray substantially conforming to the floor of 

the vehicle foot well, a substantially longitudinally disposed first tray wall joined to 

the central panel by a curved transition 

and standing up from the central panel to 

substantially conform to the first foot well 

wall, a substantially transversely disposed 

second tray wall joined to the central panel 

and to the first tray wall by respective 

curved transitions and standing up from 

the central panel, the second tray wall substantially conforming to the second foot 

well wall, a substantially longitudinally

disposed third tray wall joined to the central panel and to the second tray wall by 

respective curved transitions and standing 

up from the central panel, the central panel 

and first, second and third tray walls each 

having an outer surface facing the vehicle 

foot well and an inner surface opposed to 

the outer surface, a thickness of the central 

panel and of the, first, second and third 

tray walls measured between the outer surface and the inner surface thereof being 

substantially uniform throughout the tray;

at least 90 percent of that one-third of the 

outer surfaces of the first, second and third 

tray walls which are closest to the respective top margins of the first, second or third 

tray walls being within one-eighth of an 

inch of the respective foot well walls.

’834 patent, col. 20, lines 4–40.

B 

On June 30, 2020, Yita petitioned for IPRs of the ’186 

and ’834 patents, challenging all claims of each patent. The 

Case: 22-1373 Document: 43 Page: 6 Filed: 06/06/2023
YITA LLC v. MACNEIL IP LLC 7

Board, acting for the Director of the Patent and Trademark 

Office, instituted both IPRs on January 13, 2021—IPR 

2020-01139 for the ’186 patent and IPR 2020-01142 for the 

’834 patent. The Board issued its final written decisions in 

both IPRs on January 3, 2022.

1 

In its final written decision in the ’1139 IPR, the Board 

held claims 1–7 of the ’186 patent not unpatentable for obviousness. The Board first determined that a relevant artisan would have been motivated to combine, and had a 

reasonable expectation of success in combining, the teachings of three asserted prior-art references—Rabbe, Yung, 

and Gruenwald—to arrive at claims 1–7. J.A. 13–71. 

Rabbe, titled “[p]rotective tray for vehicle interiors,” is a 

French patent publication (No. 2,547,252), which (in the 

English translation used here) discloses “floor mats with 

raised edges, forming a tray and providing effective protection of the floors and side walls of vehicle interiors.” J.A. 

1729. The sides of Rabbe’s floor mat “perfectly conform to 

the contour of the vehicle interior.” J.A. 1730. Critically, 

the Board found that “Rabbe discloses the close conformance limitation in claim 1” of the ’186 patent. J.A. 39–40. 

Yung, titled “mat used in cars,” is a U.S. patent application 

publication (Publication No. 2002/0045029 of Application 

No. 09/903,202), which describes a vehicle floor mat with a 

middle plastic layer that is “flexible, light weight, and waterproof Polyethylene . . . or Polyethylene–Vinyl Acetate

. . . foam.” J.A. 1748, 1753 ¶ 11. Gruenwald is a book titled 

Thermoforming: A Plastics Processing Guide, which recites 

methods of thermoforming. J.A. 1755.

Notwithstanding its determination about motivation to 

combine and expectation of success in combining the priorart references to arrive at the inventions claimed in the 

’186 patent, the Board rejected Yita’s obviousness challenge because, the Board concluded, MacNeil’s “evidence of 

secondary considerations [was] compelling and indicative 

Case: 22-1373 Document: 43 Page: 7 Filed: 06/06/2023
8 YITA LLC v. MACNEIL IP LLC

of non-obviousness.” J.A. 81. “In order . . . to accord substantial weight to secondary considerations,” the Board 

recognized, “there must be a ‘legally and factually sufficient connection’”—i.e., a nexus—“between the evidence 

and the patented invention.” J.A. 72–73 (quoting Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 

2019)). And “if the marketed product embodies the claimed 

features, and is coextensive with them, then a nexus is presumed.” Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000). The Board 

found that MacNeil was entitled to a presumption of nexus, 

J.A. 75, because the Board found that MacNeil’s marketed 

“WeatherTech[] vehicle trays embody the claimed invention and are coextensive with the claims,” J.A. 73–74. MacNeil’s successful coextensiveness contention necessarily 

treated as insignificant any difference between close conformance of the tray with the foot well overall and close 

conformance of the tray with the walls of the foot well recited in claim 1.

The Board recognized that, earlier in its opinion, it had 

already found that “Rabbe discloses the close conformance 

limitation,” J.A. 39–40, but it found a presumption of nexus 

nonetheless, J.A. 74–75. The Board stated that its earlier 

finding “does not establish that close conformance was 

well-known as [Yita] contends.” J.A. 75 (emphasis added). 

And the Board stated, relying on WBIP, LLC v. Kohler Co., 

829 F.3d 1317 (Fed. Cir. 2016), that “[t]he Federal Circuit 

instructs that ‘it is the claimed combination as a whole that 

serves as a nexus for objective evidence; proof of nexus is 

not limited to only when objective evidence is tied to the 

supposedly “new” feature(s).’” J.A. 75 (quoting WBIP, 829 

F.3d at 1330).

The Board then discussed three secondary considerations—commercial success, long-felt but unsolved need, 

Case: 22-1373 Document: 43 Page: 8 Filed: 06/06/2023
YITA LLC v. MACNEIL IP LLC 9

and industry praise.2 It found that “the evidence of [each

consideration was] due to the close conforming vehicle floor 

tray,” and—presumably because it already dismissed that 

fact because close conformance was not “well-known”—it 

concluded that the evidence on those secondary considerations was “persuasive of non-obviousness.” J.A. 78 (longfelt need); J.A. 79 (industry praise); see J.A. 77 (commercial 

success) (same finding with the addition of one modifier: 

“strongly persuasive of non-obviousness” (emphasis 

added)). Giving “substantial weight” to the “evidence of 

secondary considerations,” the Board held claims 1–7 of the 

’186 patent not unpatentable. J.A. 81.

2 

In its final written decision in the ’1142 IPR, the Board 

held claims 13–15 of the ’834 patent unpatentable for obviousness. Although MacNeil has not appealed that ruling, 

it is worth noting that, in reaching that conclusion, the 

Board found unpersuasive MacNeil’s secondary-consideration evidence—which Yita asserted at oral argument in 

this court, without dispute from MacNeil, was identical to 

the secondary-consideration evidence in the ’1139 IPR. See 

Oral Arg. at 8:55–9:03 (counsel for Yita stating: “It is important to note that the . . . evidence on secondary considerations was identical for . . . both IPRs.”). That evidence, 

the Board found, “focuse[d] on the close conformity of the 

tray to the vehicle foot well, features that are not recited in 

claims 13–15.” J.A. 136; see also J.A. 137 (“[T]he long-felt 

need demonstrated by [MacNeil’s] evidence relates entirely 

to the closely-conforming floor tray . . . .”); J.A. 138 (“[T]he 

2 The Board also discussed two other secondary considerations, competitor licenses and failure of others, but 

found that the competitor-licenses evidence did not weigh 

in favor of nonobviousness and that the failure-of-others 

argument was untimely raised. MacNeil appears not to 

challenge those two findings on appeal.

Case: 22-1373 Document: 43 Page: 9 Filed: 06/06/2023
10 YITA LLC v. MACNEIL IP LLC

evidence of commercial success of the WeatherTech floor 

trays leads us to find that the commercial success is due to 

the close-conformity of the trays in the foot well . . . .”); J.A. 

139 (“[T]he industry praise of the WeatherTech floor trays 

is due to the close-conformity of the trays in the foot well 

. . . .”).

With respect to claims 1–12, the Board rejected Yita’s 

challenge at the prima-facie stage of analysis. Specifically, 

it found that the one-eighth-inch limitation of claims 1–12 

was not disclosed by any of the asserted prior-art references. In relying on that finding to hold the prima-facie 

case unpersuasive (making secondary-consideration evidence immaterial for these claims), the Board declined to 

consider an argument that Yita raised in a footnote in its 

reply brief. J.A. 154–55, 157–58. That footnote, which appears in a section addressing what “Rabbe . . . disclose[s],” 

J.A. 14784, reads: “MacNeil has not established any criticality to the 1/8 inch tolerance limitations in claims 1, 5, 

and 9, and it would have been obvious to optimize the tray 

to fit as closely as desired,” J.A. 14786 (citing J.A. 15517 

¶ 163; J.A. 3918 ¶ 24). Finding that Yita’s petition “does 

not reason that it would have been obvious to modify 

Rabbe’s floor tray to meet the conformance limitations,” 

J.A. 154, the Board declined to consider Yita’s reply–footnote position because it was a “new position” and “outside 

the scope of a proper reply under [37 C.F.R. §] 42.23(b),” 

J.A. 155; see also J.A. 158.

Yita timely appealed from both final written decisions 

on January 14, 2022, within the 63 days allowed by 37 

C.F.R. § 90.3(a)(1). We have jurisdiction under 28 U.S.C. 

§ 1295(a)(4)(A).

II

For a claimed invention to be patentable, the differences between it and the prior art must be such that a relevant artisan at the priority date would not have found the 

claimed subject matter as a whole obvious. 35 U.S.C. 

Case: 22-1373 Document: 43 Page: 10 Filed: 06/06/2023
YITA LLC v. MACNEIL IP LLC 11

§ 103(a) (2011).3 “Obviousness is a question of law based 

on underlying facts, including the scope and content of the 

prior art, differences between the prior art and the claims 

at issue, the level of ordinary skill, and relevant evidence 

of secondary considerations.” Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1331 (Fed. Cir. 2019) (citing 

Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)); see 

KSR International Co. v. Teleflex Inc., 550 U.S. 398, 406–

07, 427 (2007); Intercontinental Great Brands LLC v. Kellogg North America Co., 869 F.3d 1336, 1343–44, 1347 

(Fed. Cir. 2017). Secondary considerations include 

whether the claimed invention has been commercially successful, whether it solved a long-felt but unsolved need in 

the art, and whether the relevant industry praised it. See 

Graham, 383 U.S. at 17–18. To be relevant, such a secondary consideration must have a “legally and factually sufficient connection” (nexus) to the claimed invention. Fox 

Factory, 944 F.3d at 1373. A nexus is presumed when a 

commercial product (if relevantly successful, for example)

“is the invention disclosed and claimed in the patent.” Immunex Corp. v. Sandoz Inc., 964 F.3d 1049, 1067 (Fed. Cir. 

2020) (quoting WBIP, 829 F.3d at 1329).

We review the Board’s legal determinations de novo 

and the Board’s factual findings for substantial-evidence 

support. See Henny Penny, 938 F.3d at 1330. “A finding is 

supported by substantial evidence if a reasonable mind 

3 The parties do not dispute that, as the Board concluded, the version of § 103 that applies to the present IPRs 

is the version in force before the amendments made by the 

Leahy–Smith America Invents Act (AIA), Pub. L. No. 112-

29, 125 Stat. 284 (2011). See J.A. 5 n.5; J.A. 94 n.1. The 

parties have not suggested that the AIA changes make a 

difference here, so § 103 precedents are pertinent whether 

they involved the pre-AIA or post-AIA version of the provision.

Case: 22-1373 Document: 43 Page: 11 Filed: 06/06/2023
12 YITA LLC v. MACNEIL IP LLC

might accept the evidence as adequate to support the finding.” Id. (citing Consolidated Edison Co. v. National Labor 

Relations Board, 305 U.S. 197, 229 (1938)).

Yita presents two arguments to us. First, Yita argues 

that, in the ’1139 IPR, the Board made a result-determinative legal error regarding MacNeil’s secondary-consideration evidence in rejecting Yita’s challenge to claims 1–7 of 

the ’186 patent. Second, Yita argues that, in the ’1142 IPR,

the Board abused its discretion by not considering Yita’s 

argument raised in a footnote of its reply brief. We agree 

with Yita’s first argument, but we reject its second.

A 

In the ’1139 IPR, the Board rejected the obviousness 

challenge to claims 1–7 of the ’186 patent—despite determining that a relevant artisan would have been motivated 

with a reasonable expectation of success to combine the 

teachings of Rabbe, Yung, and Gruenwald to arrive at the 

claimed inventions—solely because it found MacNeil’s secondary-consideration evidence “compelling.” J.A. 81. The 

Board’s finding of nexus, however, rests on legal errors, 

and once those errors are corrected, the finding is not supported by substantial evidence. The Board’s judgment that 

claims 1–7 of the ’186 patent are not unpatentable must 

therefore be reversed. 

After accepting the relevancy of MacNeil’s secondaryconsideration evidence by finding a presumption of nexus, 

the Board reasoned that its finding that “Rabbe discloses 

the close conformance limitation in claim 1” of the ’186 patent, J.A. 39–40, did not undermine any determination of 

nexus to the claimed invention. The Board offered what 

can be viewed as two reasons. But both are legally incorrect.

First, the Board stated that its finding regarding 

Rabbe’s disclosure “does not establish that close conformance was well-known as [Yita] contends.” J.A. 75

Case: 22-1373 Document: 43 Page: 12 Filed: 06/06/2023
YITA LLC v. MACNEIL IP LLC 13

(emphasis added). But our case law makes clear that “objective evidence of nonobviousness lacks a nexus if it exclusively relates to a feature that was ‘known in the prior 

art’”—not necessarily well-known. Rambus Inc. v. Rea, 731 

F.3d 1248, 1257 (Fed. Cir. 2013) (emphasis added) (quoting 

Ormco Corp. v. Align Technology, Inc., 463 F.3d 1299, 1312 

(Fed. Cir. 2006)); see also Ethicon Endo-Surgery, Inc. v. 

Covidien LP, 812 F.3d 1023, 1034 (Fed. Cir. 2016) (“[I]f the 

feature that creates the commercial success was known in 

the prior art, the success is not pertinent.” (quoting Ormco, 

463 F.3d at 1312)). Where prior art teaches a feature and 

a relevant artisan would have been motivated to use it in 

combination with other prior-art teachings with a reasonable expectation of success to arrive at the claimed invention—as the Board here found—a secondary consideration 

related exclusively to that feature does not logically undermine the inference from those premises that the claimed 

invention would have been obvious from the full body of 

prior art just because the feature was not well known.

Second, the Board, citing WBIP, stated that “[t]he Federal Circuit instructs that ‘it is the claimed combination as 

a whole that serves as a nexus for objective evidence; proof 

of nexus is not limited to only when objective evidence is 

tied to the supposedly “new” feature(s).’” J.A. 75 (quoting 

and citing WBIP, 829 F.3d at 1330). But in WBIP we recognized that secondary-consideration evidence “may be 

linked to an individual element” of the claimed invention 

or “to the inventive combination of known elements” in the 

prior art. 829 F.3d at 1332. It was for the latter circumstance, which was the circumstance present in WBIP, that 

this court in WBIP made the point relied on by the Board 

here. But that rationale, applicable when no single feature 

(but only the combination) is responsible for the secondaryconsideration evidence, does not undermine our case law, 

just discussed, denying force to a secondary consideration 

that is exclusively related to a single feature that is in the 

prior art.

Case: 22-1373 Document: 43 Page: 13 Filed: 06/06/2023
14 YITA LLC v. MACNEIL IP LLC

That is this case. The Board found that MacNeil’s secondary-consideration evidence “relate[d] entirely” to the 

close-conformance limitation disclosed in the prior art. J.A. 

137; see also J.A. 137–39 (finding that the evidence of commercial success and industry praise “is due to the close-conformity of the trays in the foot well”). And that finding is 

supported by substantial evidence. See, e.g., J.A. 1097 

(MacNeil arguing in sur-reply that its witness, WeatherTech’s Vice President of Product Development, “testified 

that customers are willing to pay a premium for WeatherTech’s trays primarily due to their fit in the vehicle, even 

as he acknowledged that marketing could also contribute” 

(citing J.A. 9051 ¶¶ 77–78; J.A. 4583, lines 11–16)); J.A. 

9056 ¶¶ 83–84 (WeatherTech’s Vice President of Product 

Development stating that “[c]onsumer reviews often point 

out the closeness of fit as the salient characteristic of the 

part, or as the reason for purchase” and that “[t]he biggest 

reason for the WeatherTech FloorLiner’s commercial success, based on the feedback received over the years, is that 

they ‘fit’ the foot wells for which they were custom-designed, to a degree not achieved by competitors”).4 Thus, 

4 We note in particular that the Board found MacNeil’s evidence of industry praise to be “relate[d] specifically to the ‘close conformance’ [feature],” J.A. 139 (citing 

J.A. 9220 ¶ 171), and that in this court MacNeil does not 

challenge, but rather expressly defends, the Board’s finding regarding industry praise, MacNeil’s Response Br. at 

71–73. The absence of a challenge to that finding is hardly 

surprising, because, while MacNeil refers to one article in 

the record that mentions other features as well, id. at 72

(citing J.A. 9892–93), the Board was not required to deem 

that article significant within the full record on industry 

praise. Nor, in any event, would this one article be entitled 

to significant weight in the overall legal weighing of the 

prior-art and secondary-consideration findings and evidence.

Case: 22-1373 Document: 43 Page: 14 Filed: 06/06/2023
YITA LLC v. MACNEIL IP LLC 15

the Board’s own findings, in light of the proper application 

of our precedent, compel the conclusion that MacNeil’s secondary-consideration evidence is of no relevance to the obviousness inquiry in this case. 

The Board’s finding that the WeatherTech floor tray is

coextensive with the claimed invention does not alter the 

result. The coextensiveness inquiry bears only on the presumption of nexus; it does not decide the overall nexus 

question. And the presumption inquiry compares only the 

claim with the commercial product. It does not involve the 

connection between the commercial product and prior art, 

which governs the final nexus question and here is the decisive problem for MacNeil.

In sum, the secondary-consideration evidence was the 

only Graham factor that the Board deemed to weigh in favor of nonobviousness. For the reasons that we have explained, the finding of secondary considerations lacks

substantial-evidence support under the proper legal standard. Because the Board determined that a relevant artisan 

would have been motivated to combine the teachings of 

Rabbe, Yung, and Gruenwald to arrive at claims 1–7 of the 

’186 patent with a reasonable expectation of success, the

Board’s judgment that those claims are not unpatentable 

for obviousness must be reversed.

B 

Yita’s second argument on appeal concerns the Board’s 

rejection of its challenge to claims 1–12 of the ’834 patent 

in the ’1142 IPR. Yita contends that the Board abused its 

discretion by declining to consider Yita’s argument about 

modifying the teaching of Rabbe, an argument that the 

Board declined to consider because it was presented too 

late—in a footnote in Yita’s reply brief. We see no abuse of 

discretion by the Board.

The Board’s rules of practice provide: “A reply may only 

respond to arguments raised in the corresponding 

Case: 22-1373 Document: 43 Page: 15 Filed: 06/06/2023
16 YITA LLC v. MACNEIL IP LLC

opposition, patent owner preliminary response, patent 

owner response, or decision on institution.” 37 C.F.R. 

§ 42.23(b). This regulation means that an “IPR petitioner 

may not raise in reply ‘an entirely new rationale,’” Henny 

Penny, 938 F.3d at 1330–31 (quoting Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1370 

(Fed. Cir. 2016)), not “raised in its petition” or “responsive 

to arguments raised in the patent owner’s response brief,” 

Apple Inc. v. Andrea Electronics Corp., 949 F.3d 697, 706 

(Fed. Cir. 2020). The regulation “reflects . . . efficiency and 

fairness interests,” Ariosa Diagnostics v. Verinata Health, 

Inc., 805 F.3d 1359, 1368 (Fed. Cir. 2015), and flows from 

the statutory “requirement that the initial petition identify 

‘with particularity’ . . . ‘the grounds for the challenge to 

each claim,’” Intelligent Bio-Systems, 821 F.3d at 1369 

(quoting 35 U.S.C. § 312(a)(3)).

The Board “must make [the] judgment[] about . . . 

when a [r]eply contention crosses the line from the responsive to the new,” Ariosa Diagnostics, 805 F.3d at 1368—a 

judgment that we review for abuse of discretion, Henny 

Penny, 938 F.3d at 1330 (citing Intelligent Bio-Systems, 821 

F.3d at 1367). “The Board abuses its discretion if its decision: ‘(1) is clearly unreasonable, arbitrary, or fanciful; (2) 

is based on an erroneous conclusion of law; (3) rests on 

clearly erroneous fact finding; or (4) involves a record that 

contains no evidence on which the Board could rationally 

base its decision.’” Henny Penny, 938 F.3d at 1330 (quoting 

Intelligent Bio-Systems, 821 F.3d at 1367).

Yita contends that the argument raised in a footnote of 

its reply brief before the Board—that “it would have been 

obvious to optimize the tray to fit as closely as desired,” J.A. 

14786 n.4 (citing J.A. 15517 ¶ 163; J.A. 3918 ¶ 24)—was

not a new, untimely argument because “Yita raised the argument in its [p]etition,” Yita’s Opening Br. at 44. Yita directs us to passages of its petition that, Yita says, anchor 

its reply argument to those made in its petition. The first 

such passage, which appears in a section of Yita’s petition 

Case: 22-1373 Document: 43 Page: 16 Filed: 06/06/2023
YITA LLC v. MACNEIL IP LLC 17

that overarchingly argues that “Rabbe . . . discloses [limitation] 1[h],” J.A. 14229 (second bracketing in original), 

reads: “Rabbe discloses, or at least suggests, having at least 

90 percent of the one-third of the outer surfaces of the tray 

walls closest to the top margins being within one-eighth of 

an inch of the respective foot well walls,” J.A. 14230. Another passage reads: “[A relevant artisan] would have been 

able to make molds for different vehicle interiors (or different areas of a vehicle’s interior) and adjust the mold-making process to achieve even greater conformity with the 

vehicle interior.” J.A. 14237.

We have repeatedly held that the Board acts within its 

discretion when it declines under section 42.23(b) to consider a new theory of unpatentability raised for the first 

time in reply. See, e.g., Intelligent Bio-Systems, 821 F.3d 

at 1369–70; Ariosa Diagnostics, 805 F.3d at 1367–68. Most 

notably for the present case, in Intelligent Bio-Systems, we 

affirmed the Board’s decision not to consider an argument 

made on reply because in the original petition the challenger argued only that a reference disclosed a limitation 

(“Zavgorodny teaches the desired property . . . that the azidomethyl group ‘can be removed under very specific and 

mild conditions.’”), while in the reply the challenger argued 

that a relevant artisan would have considered it obvious to 

modify that reference to arrive at the limitation (“[A]n ordinary artisan would have considered it obvious to use 

deprotecting conditions other than those described in 

Zavgorodny.”). 821 F.3d at 1369 (emphasis omitted). The 

present case is sufficiently similar to Intelligent Bio-Systems that we cannot say that the Board abused its discretion in its ruling here.

Like the petitioner in Intelligent Bio-Systems, Yita 

waited until its reply to present what in substance is an 

argument that it would have been obvious to a relevant artisan to modify Rabbe to arrive at the one-eighth limitation. This argument was a “meaningfully distinct 

contention,” Ariosa Diagnostics, 805 F.3d at 1367, from 

Case: 22-1373 Document: 43 Page: 17 Filed: 06/06/2023
18 YITA LLC v. MACNEIL IP LLC

those made in Yita’s petition, which focused (for the claim 

limitation at issue) only on what Rabbe discloses. Nor was

Yita’s new theory within “the scope of a proper reply” to 

any argument that MacNeil made in its patent owner response. Intelligent Bio-Systems, 821 F.3d at 1367. Yita 

points us to passages in MacNeil’s response brief before the 

Board, but in the cited passages MacNeil argued only about 

what Rabbe teaches—not what a relevant artisan would 

have found obvious to modify. See J.A. 14499–500 (MacNeil arguing in its patent owner response: “Rabbe does not 

teach ‘substantially conforming’ first and second tray walls 

‘being within one-eighth of an inch’ as required by [the] 

[c]laims.”).

Yita, as the “master of its complaint,” could have “present[ed] [its reply] argument in its petition[] but chose not 

to.” Acceleration Bay, LLC v. Activision Blizzard Inc., 908 

F.3d 765, 775 (Fed. Cir. 2018) (quoting SAS Institute, Inc. 

v. Iancu, 138 S. Ct. 1348, 1355 (2018)). And the patent 

owner’s response did not justify the new argument in reply. 

We thus see no abuse of discretion in the Board’s decision 

not to consider the new argument.

III

For the foregoing reasons, we reverse the Board’s judgment in the ’1139 IPR holding claims 1–7 of the ’186 patent 

not unpatentable, and we affirm the Board’s judgment in 

the ’1142 IPR holding claims 1–12 of the ’834 patent not 

unpatentable. 

No costs.

REVERSED IN PART AND AFFIRMED IN PART

Case: 22-1373 Document: 43 Page: 18 Filed: 06/06/2023