`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`ARCTIC CAT INC.,
`Plaintiff-Appellee
`
`v.
`
`BOMBARDIER RECREATIONAL PRODUCTS INC.,
`BRP U.S. INC.,
`Defendants-Appellants
`______________________
`
`2017-1475
`______________________
`
`Appeal from the United States District Court for the
`Southern District of Florida in No. 0:14-cv-62369-BB,
`Judge Beth Bloom.
`______________________
`
`Decided: December 7, 2017
`______________________
`
`JOHN A. DRAGSETH, Fish & Richardson P.C., Minne-
`
`apolis, MN, argued for plaintiff-appellee. Also represented
`by NICHOLAS STEPHAN BOEBEL, Populus Law LLC, Min-
`neapolis, MN; NIALL ANDREW MACLEOD, AARON MYERS,
`DIANE PETERSON, Kutak Rock LLP, Minneapolis, MN.
`
` WILLIAM F. LEE, Wilmer Cutler Pickering Hale and
`Dorr LLP, Boston, MA, argued for defendants-appellants.
`Also represented by JENNIFER JASMINE JOHN, MICHELLE
`LISZT SANDALS, LOUIS W. TOMPROS.
`______________________
`
`

`

`
`2
`
` ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL
`
`
`Before MOORE, PLAGER, and STOLL, Circuit Judges.
`MOORE, Circuit Judge.
`Bombardier Recreational Products Inc. and BRP U.S.
`Inc. (collectively, “BRP”) appeal from the United States
`District Court for the Southern District of Florida’s denial
`of judgment as a matter of law that the asserted claims of
`U.S. Patent Nos. 6,568,969 (“’969 patent”) and 6,793,545
`(“’545 patent”) would have been obvious, that Arctic Cat
`Inc. (“Arctic Cat”) failed to mark patented products, that
`the jury’s royalty award was based on improper expert
`testimony, and that BRP did not willfully infringe the
`asserted claims. BRP also appeals the district court’s
`decision to treble damages and its award of an ongoing
`royalty to Arctic Cat. We affirm the district court’s denial
`of judgment as a matter of law as to obviousness, the
`jury’s royalty rate, and willfulness. We affirm the district
`court’s decision to treble damages and award an ongoing
`royalty to Arctic Cat. We vacate the court’s denial of
`judgment as a matter of law as to marking and remand
`for further consideration limited to that issue.
`BACKGROUND
`The ’969 and ’545 patents disclose a thrust steering
`system for personal watercraft (“PWC”) propelled by jet
`stream. This type of watercraft is propelled by discharg-
`ing water out of a discharge nozzle at the rear of the
`watercraft. E.g., ’545 patent at 1:22–24. The rider con-
`trols the thrust of water out of the discharge nozzle by
`pressing a lever mounted on the steering handle. Id. at
`1:38–40. A sufficient amount of thrust out of the steering
`nozzle is required for these watercraft to steer properly
`because decreasing the thrust of the water out of the
`discharge nozzle decreases the steering capability of the
`watercraft. Id. at 1:34–36, 1:51–55.
`
`

`

`ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL
`
`3
`
`Because steering capabilities are affected by the
`amount of thrust applied, the patents explain that, to
`avoid obstacles at high speed, riders should apply con-
`stant pressure on the throttle lever while simultaneously
`turning the steering handle away from the obstacle. Id.
`at 1:59–61. This is counter-intuitive to inexperienced
`riders who often slow down to turn out of the way. Id. at
`1:55–65. In these situations a rider may not be able to
`avoid the obstacle because steering capability has been
`decreased. Id. at 1:65–67. The patents seek to overcome
`this issue by automatically providing thrust when riders
`turn the steering system. Id. at 2:11–27. Claim 15 of the
`’545 patent is representative:
`A watercraft including:
`a steering mechanism;
`a steering nozzle;
`a thrust mechanism;
`a lever adapted to allow an operator to
`manually control thrust of said thrust
`mechanism, said lever mounted on said
`steering mechanism and biased toward an
`idle position; and
`a controlled thrust steering system for
`controlling thrust of said thrust mecha-
`nism independently of the operator;
`wherein said controlled thrust steering
`system activates said thrust mechanism
`to provide a steerable thrust after said
`lever is positioned other than to provide a
`steerable thrust and after the steering
`mechanism is positioned for turning said
`watercraft.
`Arctic Cat sued BRP for infringement of claims 13, 15,
`17, 19, 25, and 30 of the ’545 patent and claims 15–17,
`
`

`

`
`4
`
` ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL
`
`and 19 of the ’969 patent, accusing the off-throttle thrust
`reapplication system in several of BRP’s Sea-Doo PWC.
`BRP refers to its proprietary off-throttle thrust reapplica-
`tion system as Off-Throttle Assisted Steering (“OTAS”).
`Before trial, BRP unsuccessfully moved for summary
`judgment on several issues, including that Arctic Cat’s
`sole licensee Honda failed to mark its products with the
`licensed patent numbers.
`At trial, the jury found both patents not invalid,
`awarded a royalty consistent with Arctic Cat’s model
`($102.54 per unit) to begin on October 16, 2008, and found
`by clear and convincing evidence that BRP willfully
`infringed the asserted claims. Based on the willfulness
`verdict, the district court trebled damages, a decision it
`further explained in a subsequent order.
`After post-trial briefing, the district court denied
`BRP’s renewed motion for judgment as a matter of law on
`all issues. It granted Arctic Cat’s motion for an ongoing
`royalty, awarding $205.08 per unit. BRP appeals the
`district court’s denial of judgment as a matter of law on
`validity, marking, damages, and willfulness, as well as its
`grant of an ongoing royalty and decision to treble damag-
`es. We have jurisdiction under 28 U.S.C. § 1295(a)(1).
`DISCUSSION
`In appeals of patent cases, we apply the law of the re-
`gional circuit “to which district court appeals normally lie,
`unless the issue pertains to or is unique to patent law.”
`AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech,
`Inc., 759 F.3d 1285, 1295 (Fed. Cir. 2014) (internal quota-
`tion marks omitted). We review rulings on motions for
`judgment as a matter of law under the law of the regional
`circuit. Id. The Eleventh Circuit reviews the denial of
`judgment as a matter of law de novo, viewing the evidence
`in the light most favorable to the non-moving party.
`Howard v. Walgreen Co., 605 F.3d 1239, 1242 (11th Cir.
`2010). “The motion should be granted only when the
`
`

`

`ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL
`
`5
`
`plaintiff presents no legally sufficient evidentiary basis
`for a reasonable jury to find for him on a material element
`of his cause of action.” Id. (internal quotation marks
`omitted).
`
`I. Obviousness
`Obviousness is a question of law based on underlying
`facts. WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1326
`(Fed. Cir. 2016). In KSR International Co. v. Teleflex Inc.,
`550 U.S. 398, 419 (2007), the Supreme Court cautioned
`that the obviousness analysis should not be reduced to
`“rigid and mandatory formulas.” In Graham v. John
`Deere Co., the Supreme Court set the framework for the
`obviousness inquiry under 35 U.S.C. § 103:
`Under § 103, the scope and content of the prior art
`are to be determined; differences between the pri-
`or art and the claims at issue are to be ascer-
`tained; and the level of ordinary skill in the
`pertinent art resolved. Against this background,
`the obviousness or nonobviousness of the subject
`matter is determined. Such secondary considera-
`tions as commercial success, long felt but unsolved
`needs, failure of others, etc., might be utilized to
`give light to the circumstances surrounding the
`origin of the subject matter sought to be patented.
`383 U.S. 1, 17–18 (1966). The Graham factors—(1) the
`scope and content of the prior art; (2) the differences
`between the claims and the prior art; (3) the level of
`ordinary skill in the art; and (4) objective considerations
`of nonobviousness—are questions of fact reviewed for
`substantial evidence. See Apple Inc. v. Samsung Elecs.
`Co., 839 F.3d 1034, 1047–48 (Fed. Cir. 2016) (en banc); In
`re Cyclobenzaprine Hydrochloride Extended–Release
`Capsule Patent Litig., 676 F.3d 1063, 1068 (Fed. Cir.
`2012). “When reviewing a denial of judgment as a matter
`of law of obviousness, where there is a black box jury
`verdict, as is the case here, we presume the jury resolved
`
`

`

`
`6
`
` ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL
`
`underlying factual disputes in favor of the verdict winner
`and leave those presumed findings undisturbed if sup-
`ported by substantial evidence.” WBIP, 829 F.3d at 1326.
`We examine the legal conclusion de novo in light of those
`facts. Id.
`“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 of those factors are considered.”
`Apple, 839 F.3d at 1048. This includes objective indicia of
`nonobviousness, which must be considered in every case
`where present. See, e.g., id. at 1048 & n.13; Millennium
`Pharm., Inc. v. Sandoz Inc., 862 F.3d 1356, 1368–69 (Fed.
`Cir. 2017); Merck & Cie v. Gnosis S.p.A., 808 F.3d 829,
`837 (Fed. Cir. 2015); Bristol-Myers Squibb Co. v. Teva
`Pharm. USA, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014);
`Transocean Offshore Deepwater Drilling, Inc. v. Maersk
`Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012).
`“This requirement is in recognition of the fact that each of
`the Graham factors helps inform the ultimate obviousness
`determination.” Apple, 839 F.3d at 1048. Objective
`indicia of nonobviousness are considered collectively with
`the other Graham factors because they “serve to ‘guard
`against slipping into use of hindsight,’ and to resist the
`temptation to read into the prior art the teachings of the
`invention in issue.” Graham, 383 U.S. at 36 (citation
`omitted); see also KSR, 550 U.S. at 415 (inviting court “to
`look at any secondary considerations that would prove
`instructive”); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d
`1530, 1538–39 (Fed. Cir. 1983) (noting that evidence of
`these factors must be considered with all the evidence and
`“not just when the decisionmaker remains in doubt after
`reviewing the art”).
`Also a fact question is whether one of ordinary skill in
`the art had a motivation to combine the prior art to
`achieve the claimed combination. Apple, 839 F.3d at
`1047–48, 1051; Wyers v. Master Lock Co., 616 F.3d 1231,
`
`

`

`ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL
`
`7
`
`1237–39 (Fed. Cir. 2010). “In KSR, the Supreme Court
`criticized a rigid approach to determining obviousness
`based on the disclosures of individual prior-art references,
`with little recourse to the knowledge, creativity, and
`common sense that an ordinarily skilled artisan would
`have brought to bear when considering combinations or
`modifications.” Randall Mfg. v. Rea, 733 F.3d 1355, 1362
`(Fed. Cir. 2013). Therefore, a motivation to combine can
`be found explicitly or implicitly in the prior art references
`themselves, in market forces, in design incentives, or in
`“any need or problem known in the field of endeavor at
`the time of invention and addressed by the patent.” KSR,
`550 U.S. at 420–21; accord Plantronics, Inc. v. Aliph, Inc.,
`724 F.3d 1343, 1354 (Fed. Cir. 2013) (“[M]otivation to
`combine may be found explicitly or implicitly in market
`forces; design incentives; the ‘interrelated teachings of
`multiple patents’; ‘any need or problem known in the field
`of endeavor at the time of invention and addressed by the
`patent’; and the background knowledge, creativity, and
`common sense of the person of ordinary skill.” (quoting
`Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324,
`1328–29 (Fed. Cir. 2009))). “The court should consider a
`range of real-world facts to determine ‘whether there was
`an apparent reason to combine the known elements in the
`fashion claimed by the patent at issue.’” Intercontinental
`Great Brands LLC v. Kellogg N. Am. Co., 869 F.3d 1336,
`1344 (Fed. Cir. 2017) (quoting KSR, 550 U.S. at 418).
`Motivation to combine is a factual determination as to
`whether there is a known reason a skilled artisan would
`have been motivated to combine elements to arrive at a
`claimed combination. This is not the ultimate legal
`determination of whether the claimed combination would
`have been obvious to the ordinary artisan—meaning that
`it is possible that a reason or motivation may exist, but
`nonetheless the ordinary artisan would not have found
`the combination obvious.
`
`

`

`
`8
`
` ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL
`
`When a challenger shows that a “motivation” ex-
`isted for a relevant skilled artisan to combine pri-
`or art in the way claimed in the patent at issue,
`such a showing commonly supports and leads
`readily to the further, ultimate determination
`that such an artisan, using ordinary creativity,
`would actually have found the claimed invention
`obvious. But the latter conclusion does not follow
`automatically from the former finding, and addi-
`tional evidence may prevent drawing it. . . . Even
`with a motivation proved, the record may reveal
`reasons that, after all, the court should not con-
`clude that the combination would have been obvi-
`ous . . . .
`Intercontinental Great Brands, 869 F.3d at 1346–47.
`Determining whether a claimed combination would
`have been obvious to a skilled artisan requires considera-
`tion of all the facts, no one of which is dispositive. The
`prior art, skill, and knowledge of the ordinarily skilled
`artisan may present a motivation or reason to combine.
`The prior art, skill, and knowledge of an ordinary artisan
`may also provide reasons not to combine which would
`likewise be a question of fact. For example, a reference
`may be found to teach away from a claimed combination,
`also a question of fact. Allergan, Inc. v. Sandoz Inc., 796
`F.3d 1293, 1305 (Fed. Cir. 2015). Prior art teaches away
`when “a person of ordinary skill, upon reading the refer-
`ence, would be discouraged from following the path set
`out in the reference, or would be led in a direction diver-
`gent from the path that was taken by the applicant.” Id.
`(citing In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). In
`fact, the prior art could contain one reference suggesting a
`combination and others critiquing or otherwise discourag-
`ing the same. Even a single reference can include both
`types of statements, and we have held that it is error to
`fail to consider the entirety of the art. See, e.g., W.L. Gore
`& Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed.
`
`

`

`ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL
`
`9
`
`Cir. 1983) (holding the district court erred by “considering
`the references in less than their entireties, i.e., in disre-
`garding disclosures in the references that diverge from
`and teach away from the invention at hand”).
`“The degree of teaching away will of course depend on
`the particular facts; in general, a reference will teach
`away if it suggests that the line of development flowing
`from the reference’s disclosure is unlikely to be productive
`of the result sought by the applicant.” Gurley, 27 F.3d at
`553. As our precedent reflects, prior art need not explicit-
`ly “teach away” to be relevant to the obviousness determi-
`nation. Implicit in our discussion of the “degree” of
`teaching away is an understanding that some references
`may discourage more than others.
` Id.; see also
`Meiresonne v. Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir.
`2017) (“A reference that ‘merely expresses a general
`preference for an alternative invention but does not
`criticize, discredit, or otherwise discourage investigation
`into’ the claimed invention does not teach away.” (quoting
`Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738
`(Fed. Cir. 2013))); DePuy Spine, Inc. v. Medtronic Sofamor
`Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (affirm-
`ing district court’s finding of teaching away where the
`reference “expresse[d] concern for failure”); ATD Corp. v.
`Lydall, Inc., 159 F.3d 534, 546 (Fed. Cir. 1998) (reversing
`a judgment of invalidity in part because references “cau-
`tioned against compressing the layers in a multilayer
`insulator”). Indeed, the Supreme Court has long held
`that “known disadvantages in old devices which would
`naturally discourage the search for new inventions may
`be taken into account in determining obviousness.”
`United States v. Adams, 383 U.S. 39, 52 (1966) (emphasis
`added).
`Such understandings about reasons to combine or
`countervailing reasons not to combine could come from
`the knowledge, skill, and creativity of the ordinarily
`skilled artisan. KSR, 550 U.S. at 418. We have held that
`
`

`

`
`10
`
` ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL
`
`where a party argues a skilled artisan would have been
`motivated to combine references, it must show the artisan
`“would have had a reasonable expectation of success from
`doing so.” Cyclobenzaprine, 676 F.3d at 1068–69. Thus, if
`an ordinarily skilled artisan would not believe that a
`particular combination would have a reasonable expecta-
`tion of “anticipated success,” the combination may not be
`obvious. See KSR, 550 U.S. at 421. Whether a reasonable
`expectation of success exists is yet another fact question.
`PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186,
`1196 (Fed. Cir. 2014). Thus, whether there exist reasons
`a skilled artisan would combine or reasons a skilled
`artisan would not combine are entirely factual determina-
`tions to which deference must be given. Once all relevant
`facts are found, the ultimate legal determination involves
`the weighing of the fact findings to conclude whether the
`claimed combination would have been obvious to an
`ordinary artisan.
`The jury, in this case, determined that BRP failed to
`prove by clear and convincing evidence that the claims at
`issue would have been obvious to a skilled artisan. BRP
`moved for judgment as a matter of law on obviousness,
`which the district court denied. On appeal, BRP argues
`that the district court erred in refusing to grant it judg-
`ment as a matter of law that the asserted claims would
`have been obvious in light of the off-throttle thrust reap-
`plication system in its 1997 Sea-Doo Challenger 1800 Jet
`Boat (“Challenger”) and an existing PWC such as the
`1998 Sea-Doo GTX RFI (“GTX”). There is no serious
`dispute that the Challenger system and a PWC like the
`GTX disclose all elements of most of the asserted claims.1
`
`
`1 BRP argues the only claims not disclosed in the
`Challenger-PWC combination are dependent claims 25 of
`the ’545 patent and 17 of the ’969 patent, but notes those
`
`

`

`ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL
`
`11
`
`BRP argues a reasonable jury could only have concluded
`an ordinarily skilled artisan would have been motivated
`to combine Challenger and a PWC, and that objective
`indicia of nonobviousness confirm the asserted claims
`would have been obvious. BRP disputes whether sub-
`stantial evidence exists for particular jury fact findings
`and the ultimate legal determination of obviousness.
`BRP argues that “KSR compels a finding of obvious-
`ness.” Appellant’s Br. 21. It argues that a conclusion of
`obviousness must be reached because there was “a design
`need or market pressure to solve a problem” and the
`combination is one of “a finite number of identified, pre-
`dictable solutions.” Id. at 24 (quoting KSR, 550 U.S. at
`421).
`In order to show a skilled artisan would have been
`motivated to modify a PWC with Challenger’s off-throttle
`thrust reapplication system, BRP principally relies on two
`prior art reports written by the Society of Automotive
`Engineers (“SAE”) that studied “personal watercraft as
`test vehicles in order to evaluate and test emerging off
`throttle steering concepts and devices.” J.A. 7530. Specif-
`ically, the SAE Interim and Draft Final Reports suggested
`using the Challenger system in a PWC to address the off-
`throttle steering problem. The Draft Final Report con-
`cluded if the Challenger system were applied to PWCs,
`“performance characteristics would remain unchanged
`when operated properly, but when off-throttle steering
`and panic was sensed, then some additional steering
`torque would automatically be restored.” J.A. 7577. BRP
`also cites additional references that it argues provided
`PWC manufacturers with overwhelming pressure to
`implement solutions to off-throttle steering so that riders
`could safely avoid obstacles. For example, the National
`
`claims are disclosed by adding another patent to the
`Challenger-PWC combination. Appellant’s Br. 23–24.
`
`

`

`
`12
`
` ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL
`
`Transportation Safety Board recommended PWC manu-
`facturers “consider . . . off-throttle steering” “to improve
`operator control and to help prevent personal injuries.”
`J.A. 7944. The National Association of State Boating Law
`Administrators similarly pressured the PWC industry to
`address the “disproportionate number of accidents” at-
`tributed
`to
`“‘off-throttle’ steering
`loss”
`in PWCs.
`J.A. 9536. BRP also argues its own patent application,
`Canadian Patent Appl. 2,207,938 (“Rheault ’938”), and
`patent, U.S. Patent No. 6,336,833 (“Rheault ’833”), dis-
`close a throttle reapplication system and suggest its use
`in a PWC.
`BRP argues a skilled artisan would have selected the
`Challenger system because it was one of a finite number
`of identified, predictable solutions to the problem of off-
`throttle steering in PWCs. See KSR, 550 U.S. at 421. The
`SAE Interim and Draft Final Reports identified the
`Challenger’s throttle reapplication as one of four solutions
`to the problem of off-throttle steering, along with rudders,
`flaps, and scoops. The National Association of State
`Boating Law Administrators also explained that jet boats
`and PWCs are similar and off-throttle directional control
`is a problem for both. Rheault ’833 disclosed that its
`steer-responsive throttle “is applicable to single-engine
`personal watercraft,” and Rheault ’938 states the Chal-
`lenger jet boat’s thrust steering “is applicable to all types
`of watercraft vehicles, including personal watercraft
`vehicles.” J.A. 8942 at Abstract; J.A. 8920 at 8:15–17.
`For these reasons, BRP argues a reasonable jury could
`only have found a skilled artisan would have been moti-
`vated to modify a PWC with Challenger’s off-throttle
`thrust reapplication system, which would have combined
`known elements to improve the system in the same way
`and yield expected results.
`We presume the jury found that an ordinarily skilled
`artisan would not have been motivated to combine the
`Challenger system with a PWC given its determination
`
`

`

`ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL
`
`13
`
`that the asserted claims are not invalid as obvious. If
`such a fact finding is supported by substantial evidence,
`we may not reverse it. In briefing and oral argument,
`BRP devoted much of its argument to re-litigating its case
`and its evidence rather than addressing the evidence that
`could have supported the jury’s finding of no motivation to
`combine. We do not reweigh the evidence and reach our
`own factual determination regarding motivation. The
`question for us on appeal is only whether substantial
`evidence supports the jury’s presumed finding. See, e.g.,
`Apple, 839 F.3d at 1052 (“Our job is not to review whether
`Samsung’s losing position was also supported by substan-
`tial evidence or to weigh the relative strength of Sam-
`sung’s evidence against Apple’s evidence. We are limited
`to determining whether there was substantial evidence
`for the jury’s findings, on the entirety of the record.”). We
`conclude that it does.
`A reasonable jury could have found that a skilled arti-
`san would not have been motivated to combine Challenger
`and a PWC. The SAE reports identified the combination
`of the Challenger system with a PWC to address the off-
`throttle steering problem, tested the Challenger for that
`purpose, and noted potential benefits of the combination.
`E.g., J.A. 7577. But the reports did not stop there. The
`Draft Final Report also stated that “additional new haz-
`ards can be envisioned with such a steering system,”
`including collisions “when inadvertent activation of re-
`stored thrust might occur close to other boats, swimmers
`or fixed objects.” Id. It explained that because these
`hazards do not currently exist, “it is difficult to predict the
`frequency with which such events may occur.” Id. Kevin
`Breen, an author of the SAE reports and BRP’s expert at
`trial, testified that automatic throttle reapplication with-
`out
`“smart” engine controls could be dangerous.
`J.A. 2361–62. The Draft Final Report likewise identified
`potential problems with proposed “smart” engine controls,
`which “would only become activated when needed and
`
`

`

`
`14
`
` ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL
`
`would not otherwise effect [sic] handling.” J.A. 7577. The
`report noted some “obvious” problems with this technolo-
`gy, such as the system performing in a manner contrary
`to the operator’s intentions and the need for the system to
`account for several variables “to be beneficial.” Id. As to
`the thought process behind “smart” engine controls,
`Mr. Breen testified that throttle reapplication “would be
`useful only if they were smart or on demand, as opposed
`to they just happened.” J.A. 2231–32. The claimed
`invention, in contrast, “just happen[s]” when the rider
`turns the steering mechanism. Id.; see, e.g., ’545 patent at
`claim 1.
`This evidence may not rise to the level of teaching
`away. Nonetheless, in light of this record, the jury’s
`determination that there was no motivation to make this
`particular combination is supported by substantial evi-
`dence. Evidence suggesting reasons to combine cannot be
`viewed in a vacuum apart from evidence suggesting
`reasons not to combine. In this case, the same reference
`suggests a reason to combine, but also suggests reasons
`that a skilled artisan would be discouraged from pursuing
`such a combination. Under such circumstances, the jury’s
`fact finding regarding motivation is supported by sub-
`stantial evidence. Coupled with testimony confirming the
`potential problems of automatic throttle reapplication and
`suggesting an alternative approach might reduce those
`same problems, J.A. 2230–32, a jury could find a skilled
`artisan would not have been motivated to combine the
`Challenger system with a PWC to arrive at the claimed
`combination.
`BRP argues that the SAE reports demonstrate market
`pressure to solve a problem and a finite number of pre-
`dictable solutions; in fact, BRP argues there were only
`four articulated solutions. Appellant’s Br. 9. In KSR, the
`Supreme Court explained when there is “market pressure
`to solve a problem and there are a finite number of identi-
`fied, predictable solutions, a person of ordinary skill has
`
`

`

`ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL
`
`15
`
`good reason to pursue the known options within his or her
`technical grasp.” 550 U.S. at 421. While the SAE reports
`identified the Challenger system, rudders, flaps, and
`scoops as potential solutions to the problem of off-throttle
`steering in PWCs, a reasonable jury could have deter-
`mined that more than four solutions existed. At trial,
`Arctic Cat’s expert and named inventor Fred Bernier
`testified there were “various fins” and “a variety of things
`tried over a course of a number of years,” including modi-
`fying where the appendages attached to the PWC. J.A.
`1219–21. BRP’s expert Richard Simard also testified BRP
`built seventeen prototypes incorporating various ap-
`proaches over the course of five years. J.A. 1951–57. An
`internal BRP “brainstorming” session identified thirty-
`two possible designs directed to off-throttle steering. J.A.
`9454. And there is evidence that other potential solutions
`to the off-throttle steering problem existed but were not
`fully disclosed for confidentiality and other concerns. See,
`e.g., J.A. 7532 (noting that some ideas offered in response
`to SAE’s inquiry “have typically either not conveyed
`sufficient information or have patent, propriety, or litiga-
`tion concerns”).
`A reasonable jury also could have found that modify-
`ing a PWC with the Challenger system would not have
`been a predictable solution yielding expected results.
`Mr. Bernier testified “[i]t was quite a—quite a surprise,
`actually” when his team realized the technology worked
`on a prototype PWC. J.A. 1232. So did Mr. Simard, who
`testified “[w]e were surprised” that Proto-14, BRP’s
`prototype incorporating the Challenger system with a
`PWC, was “pretty good in forward speed.” J.A. 1960. He
`also admitted “what works on a jet boat may not work on
`a personal watercraft.” Id. And although Arctic Cat’s
`expert Dr. Bernard Cuzzillo testified the Challenger
`system reapplies some throttle when steering, he also
`testified he did not know whether the Challenger system
`was “adequate to qualify as a steerable thrust” and that it
`
`

`

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`
` ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL
`
`would “not necessarily” comprise a “controlled-thrust
`steering system.” J.A. 2876–78. This testimony along
`with the SAE reports’ own cautions about potential haz-
`ards of the combination provide substantial evidence upon
`which a jury could conclude that a skilled artisan would
`not have “anticipated success” with the claimed combina-
`tion.
`
`A. Objective Considerations
`At trial, Arctic Cat argued the claimed invention re-
`ceived industry praise and satisfied a long-felt need. We
`presume the jury found in favor of Arctic Cat as to each of
`these objective considerations. We will not reverse these
`presumed findings if supported by substantial evidence.
`1. Industry Praise
`“Evidence that the industry praised a claimed inven-
`tion or a product that embodies the patent claims weighs
`against an assertion that the same claimed invention
`would have been obvious.” Apple, 839 F.3d at 1053;
`accord Institut Pasteur & Universite Pierre Et Marie Curie
`v. Focarino, 738 F.3d 1337, 1347 (Fed. Cir. 2013)
`(“[I]ndustry praise . . . provides probative and cogent
`evidence that one of ordinary skill in the art would not
`have reasonably expected [the claimed invention].”).
`At trial, Arctic Cat introduced a press release it is-
`sued after Captain Michael Holmes, chief of the U.S.
`Coast Guard Office of Boating Safety, rode and evaluated
`an Arctic Cat prototype incorporating the claimed inven-
`tion. J.A. 9537. After his test ride, Captain Holmes
`stated: “I like it. It’s one of the most impressive innova-
`tions I’ve seen all year.” J.A. 9537. He continued, “What
`I saw today will help us move forward in developing a
`realistic, achievable standard for a control and safety
`issue that we need to address. I’m particularly encour-
`aged that this amount of quick-turn control can be
`achieved without some of the negative handling or safety
`
`

`

`ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL
`
`17
`
`ramifications that seem to accompany fins or rudders.”
`J.A. 9537. And Mr. Bernier testified others at the proto-
`type demonstration “were very impressed with the system
`and how it worked” and said “it was the first time they
`had seen something that had a viable chance of resolving
`the off-throttle steering issues.” J.A. 1237.
`BRP argues that substantial evidence does not sup-
`port the jury’s presumed factual finding that the claimed
`invention received industry praise because “praise from a
`Coast Guard official in Arctic Cat’s own press release” is a
`“hearsay statement [that] cannot overcome persuasive
`evidence that the claimed technology described the same
`approach as BRP’s system.” Appellant’s Br. 35–36 (citing
`J.A. 7828; J.A. 7871; In re Cree, Inc., 818 F.3d 694, 702
`(Fed. Cir. 2016)). We disagree for at least two reasons.
`First, Arctic Cat contends—and BRP does not contest—
`that BRP failed to object to this evidence as hearsay at
`trial, so the jury was entitled to credit the statement.
`Appellee’s Br. 12. Second, that Captain Holmes’ state-
`ments appear in Arctic Cat’s press release goes to eviden-
`tiary weight.
` Captain Holmes’ statements and
`Mr. Bernier’s testimony constitute substantial evidence to
`support the jury’s presumed factual finding that the
`claimed invention received praise from the industry. This
`evidence of industry recognition of the significance and
`value of the claimed invention weighs in fa