       NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                ______________________

            PROBATTER SPORTS, LLC,
                Plaintiff-Appellee

                           v.

               SPORTS TUTOR, INC,
                Defendant-Appellant
               ______________________

                      2016-1800
                ______________________

    Appeal from the United States District Court for the
District of Connecticut in No. 3:05-cv-01975-VLB, Judge
Vanessa Lynne Bryant.
                 ______________________

                Decided: March 1, 2017
                ______________________

     JOHN RICHARD HORVACK, JR., Carmody Torrance San-
dak & Hennessey LLP, New Haven, CT, argued for plain-
tiff-appellee. Also represented by FATIMA LAHNIN, JOHN
LOUIS CORDANI.

    BLAKE ROBERT HARTZ, Woodard, Emhardt, Moriarty,
McNett & Henry LLP, Indianapolis, IN, argued for de-
fendant-appellant. Also represented by JOHN C. MCNETT,
QUENTIN G. CANTRELL.
                ______________________
2                PROBATTER SPORTS, LLC   v. SPORTS TUTOR, INC




    Before DYK, CLEVENGER, and STOLL, Circuit Judges.
STOLL, Circuit Judge.
    The district court in this case entered summary
judgment that Sports Tutor, Inc., infringes two of ProBat-
ter Sports, LLC’s, patents relating to pitching machines.
Sports Tutor appeals the district court’s determination
that those patents were not invalid as obvious. Because
Sports Tutor did not meet its burden of establishing
obviousness before the district court, we affirm.
                        BACKGROUND
     ProBatter and Sports Tutor both sell programmable
pitching machines meant to simulate real-life pitching
situations.   ProBatter’s mechanical pitching machine
stands behind a video projection of an actual pitcher
winding up and pitching. A ball thrust from the pitching
machine emerges from a hole in the video screen towards
a batter and/or catcher. Probatter’s product synchronizes
the ball release with the video so that the batter and/or
catcher experience something similar to a live pitcher’s
pitch. The machine can throw a wide variety of pitch
types at varying speeds and can alternate between right-
handed and left-handed pitcher simulation. Major league
and collegiate baseball programs have purchased ProBat-
ter’s system.
    The ProBatter system practices ProBatter’s U.S.
Patent No. 6,182,649 and its continuation patent, U.S.
Patent No. 6,546,924. These patents describe a ball-
throwing machine “able to interchangeably deliver pitches
of different types to different locations at different speeds
with less than ten-second intervals between pitches.” ’649
patent abstract. The claimed machine is also capable of
changing pitch type, speed, and delivery location “without
the need to manually readjust the machine between
pitches.” Id. at col. 3 ll. 43–46. The patents allege that
PROBATTER SPORTS, LLC   v. SPORTS TUTOR, INC              3



this was not possible in prior art machines because of the
difficulty in quickly changing motor speed. The patents
explain that the claimed machine is able to rapidly decel-
erate its motors by incorporating a dynamic braking
mechanism.
    By way of example, independent claim 27 of the ’649
patent recites:
         27. A ball-throwing machine of the type hav-
    ing a power head including at least two coacting
    wheels for propelling a ball toward a batter to
    simulate a pitch, said power head being pivotably
    mounted on a base at a center pivot about which
    the power head may be pivoted in both a horizon-
    tal and a vertical direction, said machine includ-
    ing:
        means for causing the power head to rotate
    about said center pivot to assume a predeter-
    mined horizontal position, said means for causing
    comprising at least one horizontal linear actuator;
    and
        means for causing the power head to rotate
    about said center pivot to assume a predeter-
    mined vertical position, said means for causing
    comprising at least one vertical linear actuator;
    and
        dynamic braking means for powering motors
    for the said coacting wheels, said means compris-
    ing a dynamic or regenerative braking circuit.
’649 patent reexamination certificate col. 3 ll. 12–28.
    Probatter sued Sports Tutor in the District of Con-
necticut, alleging that Sports Tutor’s HomePlate machine
infringed ’649 patent claims 1–12, 25–27, and 31, as well
as ’924 patent claim 1. Sports Tutor then challenged the
patents in a series of ex parte reexaminations, two on
4                PROBATTER SPORTS, LLC   v. SPORTS TUTOR, INC



each patent, during which the district court stayed the
litigation. In the first round of reexaminations, the
examiner rejected many of the claims as obvious in view
of the prior art, but the Board of Patent Appeals and
Interferences reversed those rejections and allowed the
claims. The Board reasoned that the dynamic braking
limitation was not disclosed in any of the allegedly antici-
patory references and that there was no motivation to
combine the prior art ball-throwing machine references
with the prior art dynamic braking reference, U.S. Patent
No. 5,187,419 (“DeLange”), drawn generally to an electric
motor. The examiner rejected Sports Tutor’s invalidity
challenges in the second round of reexaminations and
allowed the asserted claims.
    Following reexamination, the district court lifted the
stay and entered summary judgment of infringement,
which Sports Tutor does not appeal. The district court
denied motions seeking to determine validity on summary
judgment and held a bench trial on that issue, after which
the parties filed post-trial briefs. The court ruled that
Sports Tutor did not carry its clear and convincing burden
at trial or in its post-trial briefing to prove invalidity of
the asserted patent claims. The district court specifically
found that Sports Tutor did not satisfy its burden because
it never explicitly argued for a particular combination of
references or proffered a motivation to combine refer-
ences. The court emphasized that it could not make
factual findings on the scope and content of the prior art
or the differences between the claims and the prior art
because Sports Tutor failed to identify any particular
prior art combinations.
    Sports Tutor appeals the district court’s validity rul-
ing, and we have jurisdiction under 28 U.S.C.
§ 1295(a)(1).
PROBATTER SPORTS, LLC   v. SPORTS TUTOR, INC                5



                         DISCUSSION
                              I.

    A patent claim is unpatentable as obvious “if the dif-
ferences between the subject matter sought to be patented
and the prior art are such that the subject matter as a
whole would have been obvious at the time the invention
was made to a person having ordinary skill in the art.”
35 U.S.C. § 103. 1 “[P]atents are presumed to be valid and
overcoming this presumption requires clear and convinc-
ing evidence.” Alcon Research Ltd. v. Barr Labs., Inc.,
745 F.3d 1180, 1188 (Fed. Cir. 2014) (citing 35 U.S.C.
§ 282; Microsoft Corp. v. i4i Ltd., 564 U.S. 91, 95 (2011);
Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1354
(Fed. Cir. 2010) (en banc)).
    “Obviousness is a question of law, based on underly-
ing factual determinations including: ‘the scope and
content of the prior art’; ‘differences between the prior art
and the claims at issue’; ‘the level of ordinary skill in the
pertinent art’; and ‘[s]uch secondary considerations as
commercial success, long felt but unsolved needs, failure
of others, etc.’” Insite Vision Inc. v. Sandoz, Inc., 783 F.3d
853, 858 (Fed. Cir. 2015) (quoting Graham v. John Deere
Co., 383 U.S. 1, 17 (1966)). “Following a bench trial on
the issue of obviousness, we review the court’s ultimate
legal conclusions de novo and the underlying factual
findings for clear error.” Id. (quoting Tyco Healthcare
Grp. LP v. Ethicon Endo–Surgery, Inc., 774 F.3d 968, 974
(Fed. Cir. 2014)).




    1    Given the effective filing date of the ’649 and ’924
patents’ claims, the version of 35 U.S.C. § 103 that applies
here is the one in force preceding the changes made by the
America Invents Act. See Leahy–Smith America Invents
Act, Pub. L. No. 112-29, § 3(n), 125 Stat. 284, 293 (2011).
6                PROBATTER SPORTS, LLC   v. SPORTS TUTOR, INC



                            II.
    Sports Tutor argues that the district court erred by
holding that Sports Tutor failed to show that the claims
were invalid as obvious. As support, Sports Tutor directs
us to the examiner’s initial rejections of the claims during
reexamination and to the Board’s later reversal of those
rejections, both of which Sports Tutor placed into evidence
along with the underlying prior art references. Sports
Tutor reads the Board’s decision narrowly, interpreting
the Board as disagreeing with the examiner only on
whether a motivation to combine references existed. In
other words, Sports Tutor speculates that the Board’s
silence as to the examiner’s findings on scope and content
of the prior art and other Graham factors means that the
Board acquiesced in those findings. Therefore, according
to Sports Tutor, all it needed to do to prove obviousness
before the district court was to show dynamic braking in
the context of a ball-throwing machine. Sports Tutor thus
believes that, at the district court, it “cured the problem”
with the reexamination by introducing new prior art
references that teach dynamic braking in ball-throwing
machines, even though Sports Tutor nowhere addressed
any of the other claim limitations in its presentations to
the district court. See J.A. 1117. Sports Tutor argues
that by purportedly showing that the dynamic braking
limitation was in the prior art, taken with the examiner’s
rejection that the Board reversed, it met its burden of
proving obviousness by clear and convincing evidence
before the district court.
    We disagree. The district court did not err in conclud-
ing that Sports Tutor’s showing was insufficient to estab-
lish obviousness. We emphasize that a defendant seeking
to overcome the statutory presumption of patent validity
must persuade the factfinder by clear and convincing
evidence. See i4i, 564 U.S. at 95. Sports Tutor did not
satisfy that burden here because it failed to articulate a
clear theory of obviousness.
PROBATTER SPORTS, LLC   v. SPORTS TUTOR, INC              7



     We first note that Sports Tutor did not identify to the
district court a prior art obviousness combination on
which it relied. Indeed, neither its briefing nor its trial
presentation informed the district court of the specific
references that Sports Tutor proposed to combine with the
dynamic braking references, explained the content of
those references, or demonstrated how to combine them.
See Oral Arg. at 33:05–35:03, http://oralarguments.cafc.
uscourts.gov/default.aspx?fl=2016-1800.mp3         (showing
Sports Tutor unable to direct the court to any portion of
its trial presentation where it identified the references to
combine). Sports Tutor merely cited, without explana-
tion, the examiner’s original—and ultimately reversed—
rejection, which spanned one-hundred pages and included
a slew of references in ten separate obviousness combina-
tions, some of which combined as many as five different
references.
     Our precedent affirms the district court’s ability to
demand greater specificity than Sports Tutor demonstrat-
ed here to meet its burden of proving invalidity by clear
and convincing evidence. For example, in Motorola Mobil-
ity, LLC v. International Trade Commission, Motorola, a
respondent to an International Trade Commission § 337
investigation, made obviousness arguments that the
administrative law judge rejected as “conclusory and
generalized sentences” in which “Motorola did not clearly
identify the scope and content of the prior art that it was
asserting, or provide any argument that certain prior art
references render a specific claim obvious.” 737 F.3d
1345, 1350 (Fed. Cir. 2013) (internal citations omitted).
In affirming, we explained:
   The administrative law judge had no obligation to
   guess about which prior art combinations
   Motorola asserted, and how those references ren-
   dered the claims invalid. . . .
8                PROBATTER SPORTS, LLC   v. SPORTS TUTOR, INC



        . . . Neither the administrative law judge, nor
    the Commission, nor this court has the task of di-
    vining an invalidity defense from the record.
Id. (citing Schumer v. Lab. Comput. Sys., 308 F.3d 1304,
1316 (Fed. Cir. 2002)); see also In re Brimonidine Patent
Litig., 643 F.3d 1366, 1376 (Fed. Cir. 2011) (holding
district court did not abuse its discretion in refusing to
consider prior art references admitted into evidence “in
light of the absence of testimony explaining their rele-
vance to the obviousness issue”); Koito Mfg. Co. v. Turn-
Key-Tech, LLC, 381 F.3d 1142, 1151–52 (Fed. Cir. 2004). 2
    Sports Tutor avers that ProBatter admitted that all
non-braking claim limitations existed in the prior art
when it stipulated that dynamic braking was “[t]he key
distinguishing factor in the ProBatter Patents, and the
primary issue at bar.” Appellant Br. 18–19 (quoting J.A.
197, 213). Even if we were to agree with Sports Tutor
that ProBatter’s recitation of the patents’ point of novelty
is a concession that all other elements existed in the prior
art, that would not be enough for Sports Tutor to prove its
obviousness case. The law is clear that “a patent com-
posed of several elements is not proved obvious merely by
demonstrating that each of its elements was, inde-
pendently, known in the prior art.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007). Indeed, “it can be


    2   Sports Tutor’s appeal briefing attempts to explain
its proposed obviousness combinations, but we do not
consider this new argument raised for the first time on
appeal. See Sage Prods., Inc. v. Devon Indus., Inc., 126
F.3d 1420, 1426 (Fed. Cir. 1997) (“With a few notable
exceptions, such as some jurisdictional matters, appellate
courts do not consider a party’s new theories, lodged first
on appeal. If a litigant seeks to show error in a trial
court’s overlooking an argument, it must first present
that argument to the trial court.”).
PROBATTER SPORTS, LLC   v. SPORTS TUTOR, INC             9



important to identify a reason that would have prompted
a person of ordinary skill in the relevant field to combine
the elements in the way the claimed new invention does.”
Id. In the district court, Sports Tutor did not adduce
expert testimony or even present attorney argument on
why one of skill would have been motivated to combine
dynamic braking with the other prior art references
directed to pitching machines. Accepting Sports Tutor’s
argument would essentially eliminate the motivation to
combine requirement and essentially turn an obviousness
analysis into an anticipation analysis.
    The same logic holds true with Sports Tutor’s argu-
ment that, in the reexaminations, the Board implicitly
agreed with the examiner that the other non-braking
elements existed in the prior art. Even if we accept this
factual predicate as true, Sports Tutor still presented no
motivation to combine the dynamic braking references
with the references the examiner relied on to teach the
remaining limitations. Indeed, the Board’s reasoning in
reversing the examiner was precisely that a motivation to
combine dynamic braking with prior art pitching ma-
chines had not been demonstrated. Ex Parte Probatter
Sports, LLC, Patent Owner & Appellant, 2011-008815,
2011 WL 6739397, at *10 (B.P.A.I. Dec. 21, 2011); Ex
Parte Probatter Sports, LLC, No. 2011-008816, 2011 WL
6739343, at *9 (B.P.A.I. Dec. 21, 2011). Again, on the
record before us, Sports Tutor’s showing that dynamic
braking existed in isolation is not enough to show that
one of ordinary skill would have combined that teaching
with prior art pitching machines absent some motivation
to combine supplied by Sports Tutor.
    Because we conclude that Sports Tutor failed to estab-
lish obviousness by clear and convincing evidence even
without considering Probatter’s contrary evidence, we
need not address ProBatter’s evidence of objective indicia
of nonobviousness.
10               PROBATTER SPORTS, LLC   v. SPORTS TUTOR, INC



                          CONCLUSION
    We have considered Sports Tutor’s remaining argu-
ments and find them unpersuasive. We affirm the judg-
ment of the district court that Sports Tutor did not meet
its burden to prove the asserted patents were invalid as
obvious.
                          AFFIRMED
                            COSTS
     Costs to Appellee.
