United States Court of Appeals 

for the Federal Circuit ______________________ 

POLARIS INDUSTRIES, INC.,

Appellant 

v.

ARCTIC CAT, INC.,

Cross-Appellant

______________________ 

2016-1807, 2016-2280

______________________ 

Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. 

IPR2014-01427, IPR2014-01428.

______________________ 

Decided: February 9, 2018

______________________ 

 J. DEREK VANDENBURGH, Carlson, Caspers, Vandenburgh, Lindquist & Schuman, P.A., Minneapolis, MN, 

argued for appellant. Also represented by ALAN GARY 

CARLSON, DENNIS BREMER. 

 JOSEPH HERRIGES, JR., Fish & Richardson P.C., Minneapolis, MN, argued for cross-appellant. Also represented by JOHN CAMERON ADKISSON, ROBERT P. COURTNEY,

CONRAD GOSEN. 

______________________ 

Before LOURIE, O’MALLEY, and HUGHES, Circuit Judges.
2 POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 

O’MALLEY, Circuit Judge. 

Polaris Industries, Inc. (“Polaris”) owns U.S. Patent 

No. 8,596,405 (“the ’405 patent”), which is directed to allterrain vehicles (“ATVs”) having at least two seats arranged side-by-side. Polaris’s competitor, Arctic Cat, Inc. 

(“Arctic Cat”), filed two petitions for inter partes review, 

challenging the patentability of all thirty-eight claims of 

the ’405 patent as obvious under 35 U.S.C. § 103 based on 

different combinations of prior art references. The Patent 

Trial and Appeal Board (“Board”) found, in two inter 

partes review proceedings, that the claims are unpatentable over one combination of references, but not the other. 

See Arctic Cat, Inc. v. Polaris Indus., Inc., No. IPR2014-

01427, 2016 WL 498434 (P.T.A.B. Feb. 4, 2016) (1427 

Decision); Arctic Cat, Inc. v. Polaris Indus., Inc., No. 

IPR2014-01428, 2016 WL 498539 (P.T.A.B. Feb. 4, 2016) 

(1428 Decision). The parties cross-appealed. 

For the reasons below, we affirm in part, vacate in 

part, and remand for further proceedings in the 1427 

Decision. We affirm the Board’s determination that the 

challenged claims were not proven unpatentable in the 

1428 Decision. 

I. BACKGROUND

A. The ’405 Patent

The ’405 patent, titled “Side-by-Side ATV,” issued on 

December 3, 2013, and was assigned to Polaris. According to the specification, the invention of the ’405 patent 

“relates to [ATVs] having at least a pair of laterally 

spaced apart seating surfaces.” ’405 patent, col. 1, ll. 10–

12. At several points, the ’405 patent expresses a desire 

that the ATV have a low center of gravity. The specification, for example, explains that in one “illustrative embodiment,” shown in Figure 2, “the ratio of the wheelbase to 

the seat height, or distance A to distance B, is about 6.55 

to 1.” Id. col. 4, ll. 19–21. The specification goes on to 
POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 3

state that “the present invention contemplates ATVs 

having a ratio of wheelbase to seat height greater than 

about 6.0 to 1,” which “facilitates a relatively low vehicle 

center of gravity and further provides improved ergonomics, handling, and space utilization.” Id. col. 4, ll. 23–28. 

The specification also provides that, in another embodiment, “various relatively heavy components” such as the 

battery and fuel tank “are positioned vertically proximate 

the frame 15 to lower the vehicle’s center of gravity, 

thereby improving balance and stability.” Id. col. 5, ll. 

23–35

Each of the thirty-eight claims recites components 

housed within the ATVs, and specifies the spatial relationship between these components. For example, independent claim 1, at issue on appeal, recites an ATV 

including: 

[a] a frame, comprising a front frame portion, a 

mid frame portion and a rear frame portion;

[b] a front suspension supported by the front 

frame portion;

[c] at least two front wheels coupled to the front 

suspension;

[d] a front axle assembly supported by the front 

frame portion and drivingly coupled to the front 

wheels; 

[e] a seating area supported by the mid frame 

portion, comprising side by side seats;

[f] an engine supported by the rear frame portion, the engine positioned rearwardly of the seating area;

[g] a transmission coupled to and extending 

rearwardly of the engine;
4 POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 

[h] a rear suspension supported by the rear frame 

portion;

[i] at least two rear wheels coupled to the rear 

suspension;

[j] a rear axle assembly supported by the rear 

frame portion and drivingly coupled to the rear 

wheels; 

[k] a front drive shaft extending between the 

transmission and the front axle assembly for coupling the transmission to the front wheels;

[l] and a rear drive shaft extending between the 

transmission and the rear axle assembly for coupling the transmission to the rear wheels.

Id. col. 11, ll. 2–25. 

The claims that depend from claim 1—i.e., claims 2–33 

and 35—either specify the spatial relationship between 

the various components or recite additional components, 

such as “side-by-side bucket seats having a seat back and 

seat bottom.” Id. col. 11, ll. 26–28 (claim 2). Also at issue 

on appeal are dependent claims 15–19, which include 

limitations regarding the placement of a “protective 

panel,” fuel tank, battery, and front driveshaft. Id. col. 

11, l. 61–col. 12, l. 6. These five claims all depend from

claim 5, which recites “[t]he all-terrain vehicle of claim 1, 

wherein the rear frame portion comprises a lower rear 

frame portion and an upper rear frame portion.” Id. col. 

11, ll. 35–37.

The only other independent claim, claim 34, differs 

from claim 1 in two relevant ways. First, while claim 1 

requires that the front and rear drive shafts “extend[] 

between” the transmission and the front and rear axle 

assemblies, respectively, claim 34 requires that these 

drive shafts “extend[] forward of the transmission” and 

“rearward of the transmission,” respectively. Compare id. 
POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 5

col. 11, ll. 20–26, with id. col. 13, ll. 6–11. Second, while 

claim 1 requires that the transmission “extend[] rearwardly of the engine,” claim 34 requires that the transmission be located “completely rearward of the seating 

area.” Compare id. col. 11, ll. 14–15, with id. col. 12, ll. 

66–67. 

B. The Prior Art

Three prior art references—U.S. Patent Nos. 

7,658,258 (“Denney”), 5,327,989 (“Furuhashi”), and 

3,709,314 (“Hickey”)—are relevant to these appeals. 

These references are described below.

1. Denney

Denney is directed to “an all terrain, four-wheeled vehicle frame for carrying at least two passengers in a sideby-side riding configuration, comprising a rigid, tubular 

frame body.” Denney, at Abstract. The invention of 

Denney “provides for a forward passenger compartment 

having structural support members for carrying a pair of 

seats for the side-by-side passengers” and “a rearward 

engine compartment configured for receiving an engine, 

power train, and transmission for driving wheels of the 

vehicle.” Id. The invention in Denney “includes a vertical, load-bearing truss member extending generally along 

a longitudinal, central axis of the vehicle within the 

passenger compartment, the truss member forming a 

load-bearing structural member between the pair of 

seats.” Id.

Denney’s specification describes the state of the art at 

the time of the invention disclosed therein, and the 

tradeoffs between certain known vehicle designs. The 

specification explains that ATVs “typically have a short 

wheelbase which gives the ATV increased maneuverability and transportability over their counterpart recreational vehicles such as sandrails or a dune buggies [sic].” Id.

col. 1, ll. 17–20 (emphasis added). But, “[h]istorically, 
6 POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 

ATVs with a shorter wheelbase require that the ATV 

occupancy area be raised to accommodate the decreased 

amount of space between the wheels. By raising the 

occupancy area, the center of gravity of the ATV is also 

raised.” Id. col. 1, ll. 22–26 (emphasis added). “The result 

of a higher center of gravity is a decrease in vehicle stability and subsequent increased risk of rollovers.” Id. col. 1, 

ll. 26–28 (emphasis added). 

On the other hand, recreational vehicles such as dune 

buggies “with wider wheelbases are able to accommodate 

vehicle occupants lower in the vehicle plane and hence 

have a lower center of gravity.” Id. col. 1, ll. 30–32 (emphasis added). But “the wider wheelbase decreases the 

vehicles [sic] maneuverability as well as the ability to 

transport the recreational vehicle in the back of a standard pick up truck bed.” Id. col. 1, ll. 34–36 (emphasis 

added). Denney therefore explains that “[i]t would be 

advantageous to combine the attractive features of the 

lower center of gravity vehicles with the attractive features of the shorter wheelbase . . . vehicles such that the 

resultant ATV has the increased maneuverability and 

transportability of a smaller ATV and the lower center of 

gravity and resultant enhanced stability of the vehicles 

with the wider wheelbases.” Id. col. 1, ll. 37–43. 

The invention described in Denney purports to 

achieve this desired combination, but purportedly does so 

in a two-wheel drive system. See id. col. 4, ll. 29–35 

(describing the power train giving the rear wheels additional movement through the driving axle). It is undisputed that Denney lacks features claimed in the ’405 

patent that relate to front-wheel drive. See CrossAppellant Br. 17. It is also undisputed that Denney does 

not disclose the additional limitations recited in claims 

16–19 of the ’405 patent. See id. at 23–25.
POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 7

2. Furuhashi

Furuhashi, by contrast, is directed to a “four-wheeled 

buggy” that can accommodate a single rider. Furuhashi, 

at Abstract; id. col. 1, ll. 6–9. Furuhashi’s specification 

explains that, in one embodiment, “a seat S is arranged in 

front of the engine room 11 and a fuel tank 120 is located 

within an area defined under a cushion 81 of the seat S.” 

Id. col. 12, ll. 23–26. Moreover, “[a] battery 16” is “arranged at the right side of the engine 12 in such a way 

that the battery 16 is supported on the right main frame 1 

. . . .” Id. col. 5, ll. 39–42. The specification goes on to 

explain that, “[u]nder a seatback 80 a fixed plate 123 is 

provided to cover a clearance 122 positioned behind the 

rider’s waist and is formed thereon with air ventilating 

slots 124.” Id. col. 12, ll. 31–34. In addition, Figure 19 

depicts a “space 121” running below the fixed plate 123, 

the “lower part” of which “is provided for passing 

therethrough a front wheel driving apparatus such as a 

front propeller shaft 18 and the like as referred to in 

FIGS. 2 and 5.” Id. col. 12, ll. 26–31; id. Fig. 19. 

3. Hickey

Hickey is directed to “provid[ing] a wheeled high 

speed, cross-country, rough terrain vehicle suitable for 

use as a reconnaissance vehicle for use with highly mobile 

armored forces or for use as a family recreational vehicle.” 

Hickey, col. 1, ll. 11–15. The specification explains that

“presently known vehicles are not capable of operating 

with modern armored forces at sufficiently high speed and 

safety in rough terrain conditions,” and declares that: 

[t]he vehicle of the present invention achieves this 

higher mobility through a novel drive train that 

takes power from the transmission and divides it 

between a front differential and a rear limited slip 

differential by means of an interaxle differential 

that incorporates a limited slip features [sic] in 

both forward or reverse.
8 POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 

Id. col. 1, ll. 15–25. 

C. The Board’s Final Written Decisions 

After being sued for infringing claims of the ’405 patent in district court, Arctic Cat filed two petitions for 

inter partes review, challenging the patentability of claims 

1–38 as obvious in view of combinations of certain prior 

art references, including Denney, Furuhashi, and Hickey. 

In one petition, Arctic Cat argued that all relevant claims

were obvious in view of the combination of Denney and 

Furuhashi. See 1427 Decision, 2016 WL 498434, at *2.1 

In the other petition, it contended that all thirty-eight 

claims were obvious in view of Hickey and at least one

other reference. See 1428 Decision, 2016 WL 498539, at 

*2. The U.S. Patent and Trademark Office instituted 

review on these grounds, and the Board issued two Final 

Written Decisions on February 4, 2016. See 1427 Decision, 2016 WL 498434, at *1; 1428 Decision, 2016 WL 

498539, at *1. These decisions, and relevant arguments 

raised by the parties as part of these IPRs, are discussed 

below. 

1. The 1427 IPR

In the 1427 IPR, the Board considered whether the

relevant claims were obvious over the combination of 

Denney and Furuhashi. With respect to claim 1, Arctic 

 

1 Arctic Cat argued that all claims except dependent claims 14 and 35 would have been obvious over the 

combination of Denney and Furuhashi, and that these 

two claims would have been obvious over the combination 

of Denney, Furuhashi, and a third prior art reference. 

1427 Decision, 2016 WL 498434, at *2. In the proceedings 

below, Polaris did not “set forth any assertions concerning 

the separate patentability of any of dependent claims 14 

and 35.” Id. Polaris does not argue that dependent 

claims 14 and 35 are separately patentable on appeal.
POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 9

Cat argued that Denney discloses every limitation recited

in that claim, with the exception of limitations relating to 

four-wheel drive and the limitation “a transmission 

coupled to and extending rearwardly from the engine.” 

1427 Decision, 2016 WL 498434, at *5. Arctic Cat relied 

on Furuhashi for these limitations, and provided “three 

separate rationales for combining Denney and Furuhashi 

to arrive at the subject matter of independent claim 1.” 

Id. (citing paragraphs 77–82 of Arctic Cat’s opening 

expert declaration). Arctic Cat further argued and submitted evidence that a person of skill in the art would 

have been motivated to position the protective panel, 

front driveshaft fuel tank, battery, and driveshaft disclosed in Furuhashi within the vehicle disclosed in Denney in the manner recited in claims 15–19. 

The Board determined that all thirty-eight claims had 

been proven unpatentable as obvious in view of Denney 

and Furuhashi, and in so ruling, rejected Polaris’s myriad 

arguments to the contrary. First, it disagreed with Polaris that skilled artisans would not have been motivated to 

modify Denney into a four-wheel drive vehicle because 

Denney discloses a desire for a low center of gravity, and 

therefore “teach[es] away” from including anything under 

the seating area, such as the front drive shaft and fuel 

tank of Furuhashi. Id. at *6. The Board reasoned that, 

although Denney “discloses a desire for a low center of 

gravity,” this desire is simply one of several “subjective 

preferences” that is “a tool of limited value in evaluating 

obviousness” due to its “infinite[] variab[ility]” that could 

be overcome by other known preferences, such as adding 

four-wheel drive to a two-wheel drive vehicle. Id. at *6, 

*8. 

The Board likewise rejected Polaris’s assertion that 

the combination of Denney and Furuhashi does not disclose or suggest the additional limitations recited in 

dependent claims 15–19, relying in part on its discussion 

of “subjective preferences” articulated in its analysis of 
10 POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 

the obviousness of claim 1. Id. at *14–15. Finally, with 

respect to claim 34 and its dependents, the Board, among 

other things, rejected Polaris’s evidence of secondary 

considerations of nonobviousness. Id. at *16–17. In 

particular, the Board was not persuaded that Polaris 

showed that its “RZR vehicles are covered by claims 34 

and 36–38 of the ’405 patent,” and found the supporting 

testimony from Polaris’s expert, Dr. John Moskwa, to be 

“conclusory” and “devoid of any analysis as to how the 

RZR vehicles are covered by” these claims. Id. at *16.

2. The 1428 IPR

In the 1428 IPR, the Board examined whether the 

claims of the ’405 patent would have been obvious over 

combinations that rely on Hickey as the primary reference. The Board began its analysis by construing terms 

recited in the limitations “a front drive shaft extending 

between the transmission and the front axle assembly” 

and “a rear drive shaft extending between the transmission and the rear axle assembly.” 1428 Decision, 2016 WL 

498539, at *3–6. The Board construed the term “drive 

shaft” to mean “a shaft structure that transmits torque, 

and excludes other hardware, such as universal joints, 

couplers, bearings, and interaxle differentials.” Id. at *4. 

It construed the phrase “extending between” as requiring 

“that a given drive shaft, and only that given drive shaft,

must account for the entire distance between the transmission and the respective axle assembly.” Id. at *6.

The Board found that Hickey’s “shaft 22 is connected 

to transmission 14 . . . via at least interaxle differential 20 

and universal joint 26.” Id. at *7. The Board therefore 

concluded “that Hickey does not disclose or suggest ‘a 

front drive shaft extending between the transmission and 

the front axle assembly,’ as recited in independent claim 

1,” and determined that Arctic Cat had not shown, by a 

preponderance of the evidence, that the claims of the ’405 
POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 11

patent were obvious over combinations including Hickey. 

Id.

Polaris appeals the 1427 Decision, while Arctic Cat 

conditionally cross-appeals the 1428 Decision. We have 

jurisdiction over the appeals under 28 U.S.C. 

§ 1295(a)(4)(A) (2012).

II. STANDARD OF REVIEW

Obviousness is a question of law based on underlying 

factual findings, including the scope and content of prior 

art references and the existence of a reason to combine 

those references. See In re Hyon, 679 F.3d 1363, 1365–66 

(Fed. Cir. 2012) (explaining that motivation to combine is 

an underlying factual issue that is reviewed for substantial evidence); In re NuVasive, Inc., 842 F.3d 1376, 1381–

82 (Fed. Cir. 2016) (providing that the “ultimate determination of obviousness is a question of law” that is based 

on underlying factual findings, including those set forth in 

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

uphold the Board’s factual findings unless they are not 

supported by substantial evidence, while we review the 

Board’s legal conclusions de novo. Dynamic Drinkware, 

LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 

2015). A finding is supported by substantial evidence if a 

reasonable mind might accept the evidence to support the 

finding. In re Jolley, 308 F.3d 1317, 1320 (Fed. Cir. 2002).

III. DISCUSSION

Polaris attacks the 1427 Decision on three grounds. 

First, it argues that the Board’s analysis of the purported 

obviousness of claims 15–19 cannot withstand scrutiny, 

either because it is predicated on an improper claim 

construction or was too cursory. Second, it submits that 

the Board relied on impermissible hindsight in combining 

features of Denney and Furuhashi to arrive at certain of 

the claimed inventions, failing to articulate a valid motivation to combine these references and applying a “sub-
12 POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 

jective preferences” analysis that finds no basis in this 

court’s precedents. Finally, it contends that the Board 

erred in rejecting the undisputed evidence that Polaris 

introduced regarding the commercial success of its RZR 

vehicles that purportedly embody claims 34 and 36–38. 

Arctic Cat, in its conditional cross-appeal, argues that 

the Board erred in construing the phrase “extending 

between” to exclude the possibility of intervening structures along the length of a given driveshaft. It therefore 

asks this court to vacate the Board’s construction, confirm 

that the “extending between” limitation permits the 

interposition of certain elements in the path of the drive 

shaft, and remand for further proceedings.

A. The 1427 IPR

We address Polaris’s challenges in the order they are 

raised in its opening brief.

1. Claims 15–19

a. Claim 15

Claim 15 recites the ATV of claim 5, further comprising “a protective panel positioned between the pair of 

laterally spaced-apart seating surfaces and the engine.” 

’405 patent, col. 11, ll. 61–63 (emphasis added). Polaris 

submits that the Board adopted an impermissibly broad 

construction of the term “protective panel,” which caused 

it to erroneously find that Denney’s “mounting plate 45” 

satisfies this limitation. According to Polaris, Denney’s 

mounting plate is positioned behind the driver’s side seat 

only, whereas the claims require that the “protective 

panel” be positioned behind both seats.

Arctic Cat contends that Polaris’s claim construction 

argument is both waived and wrong on the merits. We 

agree with Arctic Cat that Polaris’s proposed construction 

is overly restrictive, and therefore reject Polaris’s argu-
POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 13

ment that the Board erred in finding that Denney’s 

mounting plate satisfies the protective panel limitation.

In inter partes review proceedings, the Board gives 

claim terms their broadest reasonable interpretation in 

light of the claim language and the specification. See 

Cuozzo Speed Techs., LLC v. Lee, ––– U.S. ––––, 136 

S. Ct. 2131, 2142–46 (2016). Claim 15 specifies that the 

protective panel must be “positioned between” the “pair of 

laterally spaced-apart seating surfaces” and the engine. 

’405 patent, col. 11, ll. 61–63. The specification, moreover, 

explains that, in one embodiment, the “output shaft 138 

extends under protective panel 134,” which “is positioned 

behind upper and lower seating surfaces 18a, 18b and 

20a, 20b and protects passengers in ATV 10 from moving 

parts of modular engine assembly 34, as well as, assists in 

shielding from noise.” Id. col. 7, ll. 41–46.

Nothing in the claims or the specification commands 

that the protective panel have any particular positioning 

relative to one or both seats. Instead, the intrinsic evidence requires that a portion of the panel must exist in 

the space between the seating surfaces and the engine 

and must serve some protective function.

Denney’s mounting plate meets both of these requirements. Denney discloses a “mounting plate 45 [that] 

may be positioned between the engine and the main 

support truss 40” that “may be utilized to separate engine 

compartment 25 from the passenger compartment 15 and 

provide additional support for placement of the passenger 

seats.” Denney, col. 3, ll. 27–32. Figure 1 of Denney, 

reproduced below, depicts the mounting plate 45 positioned laterally between the spaces that house the seating 

surfaces and the engine:
14 POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 

Id. at Fig. 1. Although Polaris contends that no portion of 

mounting plate 45 depicted in Figure 1 is positioned 

between any portion of the passenger-side seat and the 

engine compartment, we do not read this illustration so 

restrictively.2 Even if Polaris is correct that Figure 1 

shows a mounting plate that does not extend across the 

entire passenger compartment, Denney’s specification is 

broader than the embodiment illustrated in that figure. 

In particular, the specification states that the mounting 

plate may be used to separate the engine “from the passenger compartment,” which houses both seats, and may 

“provide additional support for placement of the passenger 

seats.” Id. col. 3, ll. 27–32 (emphases added). These 

disclosures suggest that the mounting plate can run 

behind both seats, which would fall within the broadest 

reasonable interpretation of the term “protective panel.” 

This is consistent with the Board’s finding that Denney’s 

mounting plate “is disposed between engine compartment 

25 and passenger compartment 15,” which, “[b]y virtue of 

its placement and existence alone . . . would provide some

 

2 It is not clear from the drawing where mounting 

plate 45 begins and ends.
POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 15

protection” to those in the passenger compartment. 1427 

Decision, 2016 WL 498434, at *14. It is also consistent 

with the testimony of Arctic Cat’s expert, which the Board 

credited, see id., that a person of ordinary skill would 

have recognized that Denney “teaches a protective panel 

positioned between the seating surfaces and the engine, 

as claimed in claim 15,” J.A. 1026 ¶ 120.

In short, we see no error in the Board’s finding that 

Denney’s mounting plate satisfies the protective panel 

limitation. We therefore affirm the Board’s determination 

that claim 15 would have been obvious.

b. Claim 16

Claim 16 recites the ATV of claim 15, “wherein the 

front driveshaft extends under the protective panel.” ’405 

patent, col. 11, ll. 64–65. Polaris contends that the 

Board’s conclusion that claim 16 was obvious is based on 

the unsupported finding that a skilled artisan would have 

known to include Furuhashi’s front driveshaft “underneath the ATV of Denney” to obtain the known benefits of 

four-wheel drive. According to Polaris, the only evidence 

on the issue of adding a driveshaft “underneath the ATV 

of Denney” came from its expert, who unequivocally 

stated that one skilled in the art would not have adopted 

such a design because “[t]his location would expose the 

driveshaft to damage and decrease the vehicle’s clearance.” J.A. 3636. Arctic Cat responds by arguing, among 

other things, that it introduced sufficient evidence to 

demonstrate the obviousness of claim 16’s below-panelpositioning limitation, including by describing the benefits that such a modification would confer, particularly 

regarding safety.

Substantial evidence supports the Board’s determinations that one of ordinary skill in the art would have been 

motivated to place the front driveshaft of Furuhashi 

underneath the mounting plate of Denney and would 

have known how to accomplish this modification. As part 
16 POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 

of its analysis concerning the obviousness of claim 1, the 

Board expressly credited the testimony of Arctic Cat’s 

expert that “the structure of Denney discloses adequate 

space to place a front drive shaft with minimal other 

modifications,” and relied on Arctic Cat’s evidence to find 

that “Denney’s existing structure could support a front 

drive shaft alongside or in place of support truss 40, 

which would not raise the center of gravity of Denney’s 

ATV.” 1427 Decision, 2016 WL 498434, at *10 (citing 

paragraphs 16–18 of Arctic Cat’s expert’s declaration and 

certain other exhibits).

Figures 1 and 3 of Denney illustrate that support 

truss 40 runs “under” mounting plate 45, and therefore 

running a front driveshaft alongside or in place of this 

truss would result in running the driveshaft underneath 

the protective panel, satisfying the additional limitation 

of claim 16. Denney, Figs. 1, 3. Although the Board’s 

reasoning could have been more thorough, we do not “find 

fault in the Board’s arguably limited treatment of [Polaris’s] arguments” concerning the positioning of the 

driveshaft, where the Board’s treatment “was at least 

commensurate with” Polaris’s presentation of this issue. 

Novartis AG v. Torrent Pharm. Ltd., 853 F.3d 1316, 1327–

28 (Fed. Cir. 2017) (concluding that the Board did not err 

in failing to consider the patent owner’s argument concerning a lack of motivation to combine references where 

the patent owner “did not direct the Board to the expert 

declarations it now highlights on appeal” or “to any record 

evidence at all” and did not “meaningfully advance [its] 

suggested negatives or develop[ ] them in such a fashion 

as to necessarily overcome the numerous advantages” 

found to result from the combination). Accordingly, we 

affirm the Board’s determination that claim 16 would 

have been obvious.
POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 17

c. Claims 17–19

Claims 17–19 depend from claim 16 and include the 

following additional limitations: (1) “a fuel tank, the 

spaced-apart seating surfaces including a driver seating 

surface and a passenger seating surface, the fuel tank 

being positioned below one of the seating surfaces,” (claim 

17); (2) “a battery positioned below the other of the seating 

surfaces,” (claim 18); and (3) a front driveshaft “extend[ing] laterally between the fuel tank and the battery,” 

(claim 19). ’405 patent, col. 11, l. 66–col. 12, l. 6 (emphasis added). The Board determined that all three claims 

were obvious, rejecting each of Polaris’s arguments and 

citing Arctic Cat’s expert’s testimony. 1427 Decision, 

2016 WL 498434, at *15.

Polaris contends that the Board’s analysis with respect to these claims suffers from multiple legal errors, all 

of which stem from the premise that “[v]ehicle design is 

essentially a packaging exercise,” in which the “components are standard, but where they are placed is creative.” Appellant Br. 36. First, it argues that the Board 

improperly relied on hindsight in determining that these 

claims were obvious. It next submits that the Board 

mistakenly concluded that, because Polaris introduced 

undisputed evidence that these components could be 

configured in multiple ways, Polaris admitted that these 

claims would have been obvious. Third, Polaris contends 

that the Board improperly rejected its evidence that 

Denney teaches away from introducing these modifications. Finally, Polaris argues that the Board failed to 

explain its rationale for determining that claims 18 and 

19 would have been obvious.

We conclude that the Board’s analysis of these claims 

was inadequate. We begin with claim 17. Although it is 

true that the Board credited the testimony of Arctic Cat’s 

expert that skilled artisans would have been motivated to 

include a fuel tank below one of the surfaces to improve 
18 POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 

the distribution of weight across the vehicle, see 1427 

Decision, 2016 WL 498434, at *15, this finding does not, 

standing alone, support a determination of obviousness. 

This is because the Board (1) failed to consider Polaris’s 

uncontested evidence that skilled artisans would not have 

been motivated to place a fuel tank under Denney’s seats; 

and (2) applied a legal analysis that not only finds no 

support in our caselaw, but also runs contrary to the 

concept of teaching away.

Regarding the first point, Polaris introduced undisputed evidence below that placing a fuel tank underneath 

one of Denney’s seats would have required significantly 

raising the occupancy area. See J.A. 3667–68 (citing 

Denney, col. 1, ll. 25–28). According to Polaris, such a 

modification would have been contrary to Denney’s teaching that, “[b]y raising the occupancy area, the center of 

gravity of the ATV is also raised,” which results in “a 

decrease in vehicle stability and subsequent increased 

risk of rollovers. See Denney, col. 1, ll. 25–28.3 The 

question, then, is whether the Board properly considered 

this undisputed evidence and other evidence introduced 

by the parties in evaluating whether persons of skill in 

the art would have been motivated to modify Denney to 

meet the limitations of claims 17–19.

The remainder of the Board’s analysis demonstrates 

that it did not. The Board failed to analyze whether 

 

3 Although Polaris made a similar “teaching away” 

argument with respect to claim 1, Arctic Cat introduced 

evidence that a person of skill in the art could have modified Denney to meet the additional limitations of claim 1 

without raising the center of gravity of the vehicle. The 

Board credited Arctic Cat’s evidence, and Polaris does not 

challenge this finding on appeal. Thus, the obviousness 

inquiry with respect to claim 17 is materially distinct 

from that concerning claim 1.
POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 19

Denney “teaches away” from claims 17–19 by determining 

whether “a person of ordinary skill, upon reading [Denney], would be discouraged from following the path set out 

in [Denney], or would be led in a direction divergent from 

the path that was taken by the applicant.” In re Fulton, 

391 F.3d 1195, 1201 (Fed. Cir. 2004). This was error.

The Board’s evaluation of Polaris’s teaching away argument was, in the Board’s own words, “the same as that 

set forth above with respect to why similar assertions set 

forth for independent claim 1 were unpersuasive . . . .” 

1427 Decision, 2016 WL 498434, at *15. As part of this 

earlier analysis, the Board rejected Polaris’s supposed 

“conflat[ion] [of] known modifications having known 

benefits with subjective preferences,” and held “that an 

obviousness analysis should focus on whether a modification is known to implement and has known benefits[.]” 

Id. at *6. The Board then stated that “one of ordinary 

skill has the ability to weigh the various benefits and 

disadvantages based on subjective preferences in an 

analysis largely unrelated to obviousness.” Id. (emphasis 

added). 

We have never articulated a framework for analyzing

whether claims would have been obvious that includes the 

phrase “subjective preference” or that permits a tribunal

to wholly disregard the significance of prior art teachings 

based on such a characterization. Nevertheless, the 

Board applied its “subjective preferences” analysis to 

reject Polaris’s argument that Denney’s stated desire for a 

low center of gravity “teaches away” from making modifications that would raise the ATV’s center of gravity, 

without conducting a proper teaching away analysis. See 

generally id. at *6–11.

There are three specific problems with the “subjective 

preference” analysis espoused and applied by the Board. 

First, by completely disregarding certain teachings as illdefined “subjective preferences,” the Board’s approach 
20 POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 

invited the “distortion caused by hindsight bias” into the 

fold. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 

(2007). We have observed that “the prejudice of hindsight 

bias” often overlooks that the “genius of invention is often 

a combination of known elements which in hindsight 

seems preordained.” Power Integrations, Inc. v. Fairchild 

Semiconductor Int’l, Inc., 711 F.3d 1348, 1368 (Fed. Cir. 

2013) (quoting McGinley v. Franklin Sports, Inc., 262 F.3d 

1339, 1351 (Fed. Cir. 2001)). We have also recognized 

that, “[w]hen the art in question is relatively simple, as is 

the case here, the opportunity to judge by hindsight is

particularly tempting.” McGinley, 262 F.3d at 1351 

(citations omitted).

Second, the Board focused on what a skilled artisan 

would have been able to do, rather than what a skilled 

artisan would have been motivated to do at the time of the 

invention. See InTouch Techs., Inc. v. VGO Commc’ns, 

Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014) (concluding that 

a party’s expert “succumbed to hindsight bias in her 

obviousness analysis” where such analysis “primarily 

consisted of conclusory references to her belief that one of 

ordinary skill in the art could combine these references, 

not that they would have been motivated to do so”). 

Third, the Board’s analysis encourages the fact-finder 

to outright discard evidence relevant both to “teaching 

away” and to whether skilled artisans would have been 

motivated to combine references. “A reference may be 

said to teach away when a person of ordinary skill, upon 

reading the reference, would be discouraged from following the path set out in the reference, or would be led in a 

direction divergent from the path that was taken by the 

applicant.” DePuy Spine, Inc. v. Medtronic Sofamor 

Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting 

Ricoh Co., Ltd. v. Quanta Comput. Inc., 550 F.3d 1325, 

1332 (Fed. Cir. 2008)). Moreover, a reference “must [be] 

considered for all it taught, disclosures that diverged and 

taught away from the invention at hand as well as disclo-
POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 21

sures that pointed towards and taught the invention at 

hand.” Ashland Oil, Inc. v. Delta Resins & Refractories, 

Inc., 776 F.2d 281, 296 (Fed. Cir. 1985) (citation omitted). 

A reference does not teach away “if it merely expresses a 

general preference for an alternative invention but does 

not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.” DePuy, 567 F.3d at 1327 

(quoting In re Fulton, 391 F.3d at 1201). But even if a 

reference is not found to teach away, its statements 

regarding preferences are relevant to a finding regarding 

whether a skilled artisan would be motivated to combine 

that reference with another reference. See Apple Inc. v. 

Samsung Elecs. Co., 839 F.3d 1034, 1051 n.15 (Fed. Cir. 

2016) (en banc) (noting that, even if a reference “does not 

teach away, its statements regarding users preferring 

other forms of switches are relevant to a finding regarding 

whether a skilled artisan would be motivated to combine 

the slider toggle in” that reference with the invention of a 

second reference). 

In this case, it is undisputed that adding a fuel tank 

under one of the seats of Denney’s ATV would significantly raise its occupancy area, thereby raising the center of 

gravity and rendering the vehicle less stable, which would 

run contrary to one of Denney’s stated purposes. See

Denney, col. 1, ll. 25–28, 38–44; J.A. 3667–68. The 

Board’s treatment of this evidence was deficient, and we 

therefore vacate its determination that claim 17 would 

have been obvious.4 Because claims 18 and 19 depend 

 

4 The Board compounded this error by transforming 

Polaris’s argument that “[t]here are many other potential 

locations for a gas tank in an ATV” into an admission that 

it would have been obvious to place a fuel tank underneath one of the two seats in Denney. 1427 Decision, 

2016 WL 498434, at *15. The Board failed to consider 

that “[m]erely stating that a particular placement of an 
22 POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 

from claim 17, we vacate the Board’s obviousness determination with respect to those claims as well.5

On remand, the Board must analyze whether Denney 

“teaches away” from claims 17–19 under the framework 

that our caselaw has articulated. The Board must determine whether Denney merely expresses a general preference for maintaining very low seats or whether Denney’s 

teachings “criticize, discredit, or otherwise discourage” 

significantly raising the occupancy area of Denney’s ATV 

to add a fuel tank under one of the seats. DePuy, 

 

element is a design choice does not make it obvious.” 

Cutsforth, Inc. v. MotivePower, Inc., 636 F. App’x 575, 578 

(Fed. Cir. 2016). Instead, the Board must explain why a 

person of ordinary skill in the art “would have selected 

these components for combination in the manner 

claimed.” In re Kotzab, 217 F.3d 1365, 1371 (Fed. Cir. 

2000); In re Rouffet, 149 F.3d 1350, 1359 (Fed. Cir. 1998)

(“[T]he Board must explain the reasons one of ordinary 

skill in the art would have been motivated to select the 

references and to combine them to render the claimed 

invention obvious.”). 5 The Board’s analysis with respect to claims 18 

and 19 failed to credit any evidence submitted by Arctic 

Cat regarding a motivation or ability to modify Denney’s 

ATV to satisfy the additional limitations of these claims 

using Furuhashi’s battery and front driveshaft. This is 

particularly problematic given that Furuhashi discloses a 

single-seat ATV. “The PTAB’s own explanation must 

suffice for us to see that the agency has done its job and 

must be capable of being ‘reasonably . . . discerned’ from a 

relatively concise PTAB discussion.” In re Nuvasive, 842 

F.3d at 1383 (quoting In re Huston, 308 F.3d 1267, 1281 

(Fed. Cir. 2002)). “[I]t is not adequate to summarize and 

reject arguments without explaining why the PTAB 

accepts the prevailing argument.” Id. (citation omitted).
POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 23

567 F.3d at 1327. Even if the Board determines that 

Denney does not teach away because it merely expresses 

a general preference, the statements in Denney are still 

relevant to determining whether a skilled artisan would 

be motivated to combine Denney and Furuhashi. See 

Apple, 839 F.3d at 1051 n.15.

2. Claim 1

Polaris argues that the Board erred in its analysis of 

whether claim 1 would have been obvious because it

improperly found a motivation to combine the dune buggy

disclosed in Denney with the ATV disclosed in Furuhashi. 

Appellant Br. 47–49. According to Polaris, the Board’s 

analysis does not address why a person of skill in the art 

“looking to get the benefits of four-wheel drive would start 

with a dune buggy reference like Denney as the primary 

reference in the first place.” Id. at 48. Polaris submits 

that the evidence demonstrates that a person of skill in 

the art “does not simply convert a rear-wheel-drive vehicle to a four-wheel-drive vehicle without having to do a 

complete vehicle redesign, which would motivate such a 

person to not modify Denney as Arctic contends.” Id. at 

49.

We find Polaris’s argument that there is no evidence 

why one of skill in the art looking to create a four-wheel 

drive ATV would be motivated to start with Denney’s 

dune buggy unavailing. First, as the Board found, Denney refers to its invention as an “all terrain vehicle[]” with 

“a pair of seats for the side-by-side passengers.” 1427 

Decision, 2016 WL 498434, at *6; see Denney, col. 1, ll. 14–

15 (“The present invention relates generally to all terrain

vehicles.”). Polaris also does not challenge the Board’s 

conclusion that the inventions described in Denney and in 

the ’405 patent are directed to solving problems associated with side-by-side ATVs, and are therefore analogous 

art under the test set forth in In re Bigio, 381 F.3d 1320, 

1325 (Fed. Cir. 2004). See 1427 Decision, 2016 WL 
24 POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 

498434, at *6 (“[W]e find that the ’405 patent and Denney 

are both directed to solving problems associated with sideby-side ATVs, which meets either prong of the analogous

art test.”). Nor does Polaris challenge the Board’s findings that four-wheel drive was a well-known feature with 

known benefits, including increased traction and better 

acceleration in off-road conditions, and that a person 

skilled in the art could add four-wheel drive to Denney 

without raising the center of gravity of Denney’s vehicle. 

See Appellant Br. 26, 48. 

Based on these fact-findings, we conclude that the 

Board articulated a valid motivation to combine the 

inventions of Denney and Furuhashi. See WBIP, LLC v. 

Kohler Co., 829 F.3d 1317, 1337 (Fed. Cir. 2016) (“Whether a skilled artisan would be motivated to make a combination includes whether he would select particular 

references in order to combine their elements. This is 

part of the fact question . . . .”). We therefore affirm the 

Board’s determination that claim 1 would have been

obvious.6 We likewise affirm the Board’s obviousness 

 

6 Polaris claims that the Board improperly invoked 

the “subjective preferences” analysis we rejected above to 

ignore Denney’s teaching away from the inventions of 

claims 1, 25, and 34, and contends that the Board’s reference to this analysis warrants vacatur of the Board’s 

conclusions on each of these claims, just as it does with 

respect to claims 17–19. Polaris wholly fails to explain, 

however, how the Board relied on this test in concluding 

that claim 1 and its dependents were obvious. Importantly, Polaris fails to explain how any reference to “subjective 

preferences” in connection with claim 1 impacted the 

factual findings which we find support the Board’s obviousness conclusion with respect to that claim. We, thus, 

conclude that any reference to “subjective preferences” in 
POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 25

determination regarding claims 2–14, 20–33, and 35, as 

Polaris does not raise any separate patentability arguments as to these dependent claims.

3. Claims 34 and 36–38

Polaris next challenges the Board’s analysis of claims 

34 and 36–38. Polaris argues that the Board improperly 

failed to weigh its evidence of commercial success in 

assessing whether claims 34 and 36–38 would have been

obvious. Specifically, Polaris contends that the Board was 

wrong to reject its evidence of commercial success on the 

ground that Polaris failed to prove that its successful RZR 

vehicles are actually covered by or practice those particular claims of the ’405 patent.

According to Polaris, its expert performed a proper 

and complete analysis of the evidence of commercial 

success by reviewing the patent and claims, inspecting 

the RZR vehicles, studying literature relating to these 

vehicles, and comparing the vehicles to the claims. Polaris further points out that neither Arctic Cat nor its 

experts disputed these conclusions. On these grounds, 

Polaris submits that the Board’s rejection of Polaris’s 

expert’s testimony runs afoul of our recent decision in 

PPC Broadband, Inc. v. Corning Optical Communications 

RF, LLC, 815 F.3d 734, 747 (Fed. Cir. 2016). We agree.

Polaris also submits that, because it presented evidence showing its covered RZR vehicles were a commercial success, having generated over $1.5 billion in sales 

since 2007, it was entitled to a presumption of commercial 

success. Polaris claims that it should have been entitled 

to such a presumption because it introduced evidence that 

the RZR vehicles became the market leader within two 

years after launch. Appellant Br. 58 (citing J.A. 3862 

 

the Board’s analysis of claim 1, though error, was harmless.
26 POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 

¶ 56). Relatedly, Polaris argues that it is entitled to a 

presumption of a nexus between that commercial success 

and the claims of the ’405 patent, citing to WBIP, LLC v. 

Kohler Co. for the proposition that “[t]here is a presumption of nexus for objective considerations when the patentee shows that the asserted objective evidence is tied 

to a specific product and that product ‘is the invention 

disclosed and claimed in the patent.’” 829 F.3d at 1329

(quoting J.T. Eaton & Co. v. Atl. Paste & Glue Co., 106 

F.3d 1563, 1571 (Fed. Cir. 1997)). Again, we agree.

“The objective indicia of non-obviousness play an important role as a guard against the statutorily proscribed 

hindsight reasoning in the obviousness analysis.” Id. at 

1328. Indeed, we have held that such evidence “may often 

be the most probative and cogent evidence in the record.” 

Id. (quoting Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 

1530, 1538 (Fed. Cir. 1983)). “A determination of whether 

a patent claim is invalid as obvious under § 103 requires 

consideration of all four Graham factors, and it is error to 

reach a conclusion of obviousness until all those factors 

are considered.” Id. (citing In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 

1063, 1075 (Fed. Cir. 2012)).

Evidence of commercial success is one such objective 

indicator of non-obviousness. We have held that a patentee “cannot demonstrate commercial success, for 

purposes of countering the challenge of obviousness, 

unless it can show that the commercial success of the 

product results from the claimed invention.” J.T. Eaton, 

106 F.3d at 1571. Put another way, “objective evidence of 

non-obviousness must be commensurate in scope with the 

claims which the evidence is offered to support.” Asyst 

Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310, 1316 (Fed. Cir. 

2008) (quoting In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 

1983)). We presume that such a nexus applies for objective indicia when the patentee shows that the asserted 

objective evidence is tied to a specific product and that 
POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 27

product “embodies the claimed features, and is coextensive with them.” Brown & Williamson Tobacco Corp. v. 

Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000). 

Conversely, “[w]hen the thing that is commercially successful is not coextensive with the patented invention—for 

example, if the patented invention is only a component of 

a commercially successful machine or process—the patentee must show prima facie a legally sufficient relationship between that which is patented and that which is 

sold.” Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 

851 F.2d 1387, 1392 (Fed. Cir. 1988).

A patent challenger may rebut the presumption of 

nexus by presenting evidence “to show that the commercial success was due to extraneous factors other than the 

patented invention,” id. at 1393, such as “additional 

unclaimed features and external factors, such as improvements in marketing,” WBIP, 829 F.3d at 1329. 

“However, a patent challenger cannot successfully rebut 

the presumption with argument alone—it must present 

evidence.” WBIP, 829 F.3d at 1329 (citing Brown & 

Williamson Tobacco, 229 F.3d at 1130; Demaco, 851 F.2d 

at 1393).

Relying on these principles, we considered how the 

Board should treat undisputed evidence from a patentee 

that its product is the invention disclosed in the challenged claims in PPC Broadband, writing:

When the patentee has presented undisputed evidence that its product is the invention disclosed in 

the challenged claims, it is error for the Board to 

find to the contrary without further explanation. 

There was no such explanation here. The Board 

in its opinions did not explain why the SignalTight connectors fail to embody the claimed features, or what claimed features in particular are 

missing from the SignalTight connectors. Nor 

does Corning justify this finding on appeal. Sub-
28 POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 

stantial evidence does not support the Board’s 

finding on this point.

815 F.3d 734, 745–47 (footnote omitted).

 Here, the Board “decline[d] to accord . . . substantive 

weight” to the patentee’s undisputed evidence that its 

product is the invention disclosed in certain claims because it characterized the patentee’s evidence as “conclusory.” 1427 Decision, 2016 WL 498434, at *16. On these 

facts, we conclude that the Board erred in failing to credit 

Polaris’s undisputed evidence that its RZR vehicles embody and are coextensive with claims 34 and 36–38 of the 

’405 patent. 

Polaris’s expert, Dr. Moskwa, submitted a declaration 

in which he testified that he had reviewed the ’405 patent 

and all claims recited therein, reviewed the RZR vehicles 

“and literature (e.g., parts catalogs and parts drawings) 

associated therewith,” and construed the claim terms 

recited in the claims as one of ordinary skill in the art 

would understand them. J.A. 3593 ¶¶ 58–60. He further 

testified that he compared the RZR vehicles to the claims 

and determined, “based on [his] inspection, analysis, and 

study,” that a list of eight RZR vehicles embody each 

element recited in claims 34 and 36–38 of the ’405 patent. 

J.A. 3594 ¶ 61. Arctic Cat presented no contrary evidence.

The Board found Dr. Moskwa’s averments to be “conclusory statements,” and, thus, rejected Polaris’s evidence 

of commercial success in its entirety. Our case law does

not require a patentee and its expert to go further than 

Polaris did here, however, to demonstrate that its commercial products are the inventions disclosed in the 

challenged claims, where the proffered evidence is not 

rebutted and the technology is relatively simple. Claims 

34 and 36–38 broadly cover the entire vehicle, rather than 

“only a component of a commercially successful machine.” 

Demaco, 851 F.2d at 1392. Moreover, the Board did not 
POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 29

point to any limitation it found missing in the RZR vehicles. On these undisputed facts, we hold that the Board 

erred in failing to find that Polaris’s eight RZR vehicles 

are the inventions disclosed in claims 34 and 36–38.7

Because the evidence submitted by Polaris demonstrates these vehicles are “the invention disclosed and 

claimed in the patent,” we presume that any commercial 

success of these products is due to the patented invention. 

J.T. Eaton, 106 F.3d at 1571. On remand, the Board 

must assess the import of this evidence after presuming 

that a nexus between the claims and the commercial 

success of the RZR vehicles exists, unless and until that 

presumption is adequately rebutted. 

4. Conclusion Regarding the 1427 IPR

We have considered the remainder of the parties’ arguments related to the 1427 IPR, and find them unpersuasive. We therefore affirm the Board’s determination in 

the 1427 Decision that claims 1–16, 20–33, and 35 are 

unpatentable as obvious. We vacate the Board’s obviousness determination as to claims 17–19, 34, and 36–38 and 

remand for further proceedings.

B. The 1428 IPR

Finally, because we vacate the Board’s obviousness 

determination with respect to certain claims in the 1427 

 

7 We reject the implication that either a “limitationby-limitation analysis” or “documentary evidence” is 

required for PPC Broadband to apply, finding no support 

for such a principle in our precedent. Compare CrossAppellant Br. 65 (arguing that PPC Broadband requires 

limitation-by-limitation analysis or documentary evidence), with Appellant Br. 34 (arguing that PPC Broadband does not so require). 
30 POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 

IPR, we consider the merits of Arctic Cat’s conditional 

cross appeal from the 1428 Decision. 

Arctic Cat argues that the Board erred in its construction of the phrase “extending between” in claim 1’s limitation “a front drive shaft extending between the 

transmission and the front axle assembly.” The Board 

construed this phrase as requiring that a front drive 

shaft, and only that drive shaft, “account for the entire 

distance between the transmission and the [front] axle 

assembly.” 1428 Decision, 2016 WL 498539, at *6.

Arctic Cat submits that, in typical use, and certainly 

in its broadest reasonable use, the phrase “extending 

between” does not exclude the possibility of intervening 

structures. In so arguing, Arctic Cat analogizes that 

Pennsylvania Avenue extends between Georgetown and 

the southeast border of Washington, DC, even though “the 

U.S. Capitol is interposed between.” Cross-Appellant Br. 

79. It submits that the Board’s decision to “cherry-pick” 

dictionary definitions of the phrase “extending between” 

is improper, and further argues that other definitions 

tend to show that the broadest reasonable meaning of 

“extend” demonstrates that this limitation is not as 

narrow as the Board held. Id. at 80–82. Arctic Cat also

contends that the Board erred by improperly elevating 

dictionary definitions over the clear guidance of the 

specification.

We disagree, and conclude that the phrase “extending 

between,” read in light of the claims, specification, and 

extrinsic evidence of record, requires that the front 

driveshaft account for the entire distance between the 

transmission and the front axle assembly, rather than 

some portion of that distance. A derivation of the phrase 

“extend between” appears four times in the specification. 

In each instance, the specification and associated figures 

illustrate that the component that “extends between” two 

other components spans the entire distance, as opposed to 
POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 31

a portion of the entire distance, between those other 

components. See ’405 patent, col. 4, ll. 13–15 

(“[W]heelbase A, which extends between the center of 

front axle 36 and the center of rear axle 38, is equal to 

about 77 inches (195.6 centimeters).”); id. col. 4, ll. 30–33 

(“[W]idth C, which is defined as the overall width of ATV 

10, extends between the outermost lateral points of ATV 

10.”); id. col. 8, ll. 2–4 (“Front brackets 162 and rear 

brackets 160 extend between lower tubes 180 and down 

tubes 105.”); id. col. 8, ll. 51–53 (“Upper ends of dampeners 217 are pivotally coupled to bracket 223 extending 

between rear tubes 207.”). Arctic Cat points to no instance where the ’405 patent specification uses “extending 

between” to refer to a structure that is merely located

between two other structures. We have considered Arctic 

Cat’s other arguments, and find them unpersuasive.

Because we agree with the Board’s construction of the 

phrase “extending between,” and because Arctic Cat does 

not submit that we should reverse or vacate the Board’s 

decision under that construction, we affirm the Board’s 

determination that Arctic Cat has not demonstrated, by a 

preponderance of the evidence, that claims 1–38 of the 

’405 patent are unpatentable as obvious. We do not 

address the remainder of Arctic Cat’s cross-appeal.

IV. CONCLUSION

For the foregoing reasons, we affirm the Board’s determination in the 1427 Decision that claims 1–16, 20–33, 

and 35 of the ’405 patent are unpatentable as obvious. 

We vacate the Board’s obviousness determination as to 

claims 17–19, 34, and 36–38 and remand for further 

proceedings. We affirm the Board’s determination in the 

1428 Decision that Arctic Cat failed to meet its burden of 

demonstrating that the claims of the ’405 patent are 

unpatentable.

AFFIRMED IN PART, VACATED IN PART, AND 

REMANDED
32 POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 

COSTS

No costs.