Wyers v. Master Lock Co.

United States Court of Appeals
for the Federal Circuit
__________________________

PHILIP W. WYERS
AND WYERS PRODUCTS GROUP, INC.,
Plaintiffs-Appellees,
v.
MASTER LOCK COMPANY,
Defendant-Appellant.
__________________________

2009-1412
__________________________

Appeal from the United States District Court for the
District of Colorado in case no. 1:06-CV-00619, Senior
Judge Lewis T. Babcock.
___________________________

Decided: July 22, 2010
___________________________

MARK LEE HOGGE, Greenberg Traurig LLP, of Wash-
ington, DC, argued for plaintiffs-appellees. With him on
the brief were ROBERT PHILLIP CHARROW and LAURA
METKOFF KLAUS. Of counsel on the brief was AARON P.
BRADFORD, Lathrop & Gage LLP, of Denver, Colorado.

ALDO NOTO, Andrews Kurth, LLP, of Washington, DC,
argued for defendant-appellant. With him on the brief
were FREDERICK S. FREI and LORI EDEN BURGESS.
__________________________
WYERS v. MASTER LOCK 2

Before LOURIE, LINN, and DYK, Circuit Judges.
Opinion for the court filed by Circuit Judge DYK.
Concurring opinion filed by Circuit Judge LINN.
DYK, Circuit Judge.
Master Lock Company LLC (“Master Lock”) appeals
from a final judgment of the United States District Court
for the District of Colorado in favor of Philip W. Wyers
and Wyers Products Group, Inc. (collectively, “Wyers”). A
jury found that Master Lock failed to show by clear and
convincing evidence that claims 15, 19, 21, and 24 of U.S.
Patent No. 6,672,115 (the “’115 patent”), claim 1 of U.S.
Patent No. 7,165,426 (the “’426 patent”), and claims 1, 9,
and 11 of U.S. Patent No. 7,225,649 (the “’649 patent” or
the “seal patent”), would have been obvious. The district
court denied Master Lock’s renewed motion for judgment
as a matter of law (“JMOL”). Wyers v. Master Lock Co.,
No. 06-cv-00619-LTB, 2009 WL 1309774 (D. Colo. May 8,
2009) (“JMOL Order”). We reverse, as we find that the
claims in the patents-in-suit would have been obvious as a
matter of law.
BACKGROUND
The patents at issue in this case cover hitch pin locks
that secure trailers to cars and sport utility vehicles. A
hitch pin secures a draw bar or tow ball mount to a hitch
receiver attached to a motor vehicle. The hitch pin passes
through aligned apertures in the trailer hitch receiver and
draw bar in order to secure the two members together.
The patents describe a barbell-shaped lock with a stop
portion on one end, a locking head on the other end, and a
shank portion which passes through the aligned apertures
of the hitch receiver and the towball mount.
3 WYERS v. MASTER LOCK

The use of a lock in a trailer hitch receiver was well
known in the art prior to the ’115 and ’426 patents. Like
the patented inventions, U.S. Patent No. 5,664,445 (the
“Chang patent”) discloses a lock with a lock head, a
shackle having a stop member, a shank, and a latch. The
lock is shown being used as a hitch pin lock. The follow-
ing figure shows the prior art configuration:
Chang Patent, Figure 8

The use of barbell-shaped locks, such as those described
in the patents-in-suit, was also well known in the prior
art. U.S. Patent No. 4,711,106 (the “Johnson patent”)
discloses a hitch pin lock. See Johnson patent col.1 ll.6-
11; see also U.S. Patent No. 5,284,038 patent col.1. ll.6-10.
The Johnson patent shows a barbell-shaped lock being
used as a trailer hitch receiver lock:
WYERS v. MASTER LOCK 4

Johnson Patent, Figure 1

Wyers’ own patent, U.S. Patent No. 6,055,832 (the “’832
patent”), discloses a barbell-shaped locking device com-
prising a locking head, a shackle having a stop member, a
shank, and a latch. See ’832 patent col.5 ll.37-57. The
’832 patent also shows a barbell-shaped lock being used as
a hitch pin lock in a manner very similar to Figure 1 of
the Johnson patent. See id. figs.1-2.
The patents-in-suit claim improvements to the prior
art locks. The ’115 patent and ’426 patent 1 (collectively,
“the sleeve patents”) claim a hitch pin lock having a
removable sleeve to increase the shank’s diameter, and a
method for providing a hitch pin lock with a removable
sleeve on the shank. 2 Figure 5 of the ’115 patent depicts
the claimed invention.

1 The ’426 patent was filed as a divisional of the
’115 patent application.
2 Some of the asserted claims are more broadly di-
rected to a “locking device” rather than a locking hitch pin
device, see, e.g., ’115 patent col.2 ll.56-57, and the specifi-
cation indicates that “the present invention may also be
used as a coupler lock, as a watercraft lock, cross bolt gate
5 WYERS v. MASTER LOCK

’115 Patent, Figure 5

The claimed sleeve slides over the shank of the hitch pin
lock, increasing the diameter of the shank and enabling
use with trailer hitch receivers of different apertures, see
’115 patent Abstract, particularly the 1/2 inch and 5/8
inch apertures that are the industry standard for certain
towing applications. The ’115 patent touts the invention’s
primary benefit, namely its size adaptability. Id. col.1
ll.15-18, col.2 ll.20-36, 45-47. The removeable sleeve is
not claimed to improve the locking or towing functions,
but is claimed to be desirable because it allows for “a
single locking unit [to] be used for a number of varied size
locking requirements,” id. col.2 ll.32-34, thus saving
retailers shelf space. Claim 15 of the ’115 patent is repre-
sentative:
15. A locking hitch pin device for interconnecting
a hitch bar with a hitch receiver, said bar and re-
ceiver each including apertures disposed therein for

lock, spare tire lock, bike carrier lock, a cable lock and any
other similar locking structure.” Id. col.4 ll.41-45.
WYERS v. MASTER LOCK 6

receiving the hitch pin device, said device compris-
ing:
(a) a hitch pin shank having first and sec-
ond end portions and a thickness di-
mension;
(b) a latch portion disposed at said first
end portion;
(c) a locking head member moveable be-
tween locked and unlocked states and
configured for selective engagement
with said latch portion;
(d) a stop member disposed at said second
end portion;
(e) a sleeve for selective engagement with
said hitch pin shank to selectively vary
the thickness dimension thereof to
match the size diameter of the hitch
bar and the receiver apertures to per-
mit snug engagement therewith; and
(f) a retaining apparatus operative to re-
sist removal of said sleeve from said
hitch pin shank when said locking head
member is in the unlocked state and
removed from said latch portion.
’115 patent col.10 ll.21-41. The ’426 patent claims a
“method for varying the diameter of the linear shank [of a
locking device] to adapt the locking device to variable
sized apertures in components to be locked with said
device.” ’426 patent col.11 ll.17-20. The specifications for
the ’115 patent and ’426 patent are very similar.
The ’649 patent claims an improved locking device
with an external seal designed to insulate the locking
mechanism of the lock from the ingress of contaminants.
7 WYERS v. MASTER LOCK

’649 patent col.7 ll.13-15. Claim 1 of the ’649 patent is
representative:
1. A locking device, comprising:
(A) a shackle member including (1) an elon-
gated shank portion having a longitudi-
nally extending axis,
(2) a stop portion at a first end of said
shank portion, and
(3) a latch portion at a second end of said
shank portion, said shank portion hav-
ing an outer surface margin adjacent to
said latch portion;
(B) a locking head including a casing having a
surrounding sidewall surface and a gener-
ally flat transverse inner head face with
an entryway sized and adapted to mate
with said latch portion in a longitudinal
axial direction and a locking mechanism
disposed in said casing, said locking
mechanism being moveable between
(1) a locked state to lockably retain said
latch portion in said locking head when
said latch portion is in an engaged state
and
(2) an unlocked state to release said latch
portion therefrom; and
(C) a head cover including
(1) a cover portion operative to engage the
sidewall surface of said casing in sur-
rounding relation thereto and extend-
ing therealong in the longitudinal axial
direction so as to be secured thereto,
and
(2) a flexible, resilient flange portion ex-
tending inwardly from said cover por-
WYERS v. MASTER LOCK 8

tion to define an opening having a sur-
rounding flange edge that defines a
seal structure, the opening being sized
such that said latch portion may be in-
serted into and removed from said lock-
ing head through the opening with said
seal structure operative when said
latch portion is in the engaged state to
sealably engage the outer surface mar-
gin of said shank portion.
Id. col.8 ll.13-47. The head cover, which encases the
locking head, is preferably made of a “stiff yet resilient
material,” and the seal structure is formed by the flange
portion that extends inwardly from the cover. Id. col.3
ll.48-50; id. col.7 ll.7-15.
A major manufacturer, Master Lock, offered for sale
locks that allegedly fell within the claims of the ’115, ’426,
and ’649 patents. In April of 2006, Wyers filed this law-
suit, ultimately asserting infringement of claims 15, 19,
21, and 24 of the ’115 patent, claim 1 of the ’426 patent,
and claims 1, 9, and 11 of the ’649 patent. 3 The case was
tried to a jury over nine days in March of 2009. At the
close of evidence, the district court granted Wyers’ mo-
tions for JMOL on infringement. Master Lock contended,
however, that all of the patents-in-suit would have been
obvious over the prior art. At trial, Wyers admitted that
both the Chang and Johnson references disclosed every
limitation of the ’115 and ’426 patent claims except the
use of the sleeve to adjust the operative thickness of the

3 Wyers also asserted infringement of claims 17 and
18 of the ’832 patent. In May of 2008, the district court
granted Master Lock’s motion for summary judgment of
non-infringement with respect to the ’832 patent. The
claims of the ’832 patent are not involved in this appeal.
9 WYERS v. MASTER LOCK

shank. Moreover, it was undisputed that Wyers’ own
Trimax T2 and T3 barbell-shaped locks on sale prior to
the ’115 patent priority date also satisfied every limita-
tion of the asserted claims of the ’115 and ’426 patents but
those for the sleeve. Master Lock asserted that the sleeve
claims would have been obvious over the combination of
the prior art locking devices, inter alia, in combination
with U.S. Patent No. 3,963,264 (the “Down patent”), or in
combination with Master Lock’s 37D padlock. Thus, as
the district court described, the relevant question for the
jury’s consideration with respect to the asserted sleeve
patent claims was “whether Master Lock presented clear
and convincing evidence that the use of a sleeve to adjust
the operative thickness of a shank would have been
obvious.” See JMOL Order, 2009 WL 1309774, at *3.
Similarly, the external seal is concededly the only fea-
ture of the ’649 seal patent that distinguishes it from the
Chang patent and the ’832 patent. 4 Master Lock argued
that the patented device would have been obvious over
the combination of the prior art locking devices with any
of the following: the Master Lock 6121 padlock, U.S.
Patent No. 5,156,029 (the “Heald patent”), U.S. Patent
No. 3,858,419 (the “Hampton patent”), and U.S. Patent
No. 3,848,440 (the “Manuel patent”). Thus, as the district
court noted, the sole question for the jury’s consideration
with respect to the seal patent was “whether Master Lock
presented clear and convincing evidence that the use of an
external flat flange seal would have been obvious.” See
JMOL Order, 2009 WL 1309774, at *5.

4 The ’832 patent is Wyers’ own patent, and thus is
not prior art against the ’649 patent under 35 U.S.C. §
102(a). However, it is prior art against the ’649 patent
under 35 U.S.C. § 102(b), as the ’832 patent issued more
than one year prior to the filing date of the ’649 patent.
WYERS v. MASTER LOCK 10

The question of obviousness on the disputed claims of
the ’115 patent, the ’426 patent, and the ’649 patent was
submitted to the jury, which returned a verdict finding
that the asserted claims were not obvious, and awarded
Wyers $5.35 million in damages as a reasonable royalty.
The district court granted Wyers’ motion for a continuing
injunction against Master Lock for future infringement,
and entered judgment in favor of Wyers in the form of a
24% royalty for any infringing products Master Lock has
sold or does sell prior to the effective date of the injunc-
tion, plus $1,137,920 in pre-judgment interest. See Wyers
v. Master Lock Co., No. 06-cv-00619-LTB-MJW, dkt. No.
325 (D. Col. May 28, 2009) (Judgment). After trial, Mas-
ter Lock renewed its JMOL motion on obviousness. The
district court denied the motion, and upheld the jury
verdict. JMOL Order, 2009 WL 1309774, at *3. Master
Lock timely appealed, and we have jurisdiction pursuant
to 28 U.S.C. § 1295(a)(1).
DISCUSSION
A patent is invalid for obviousness “if the differences
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 to which
said subject matter pertains.” 35 U.S.C. § 103(a). Obvi-
ousness is a question of law based on underlying findings
of fact. In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009).
The underlying factual inquiries include: (1) the scope and
content of the prior art, (2) the differences between the
prior art and the claims at issue, (3) the level of ordinary
skill in the art, and (4) any relevant secondary considera-
tions, such as commercial success, long felt but unsolved
needs, and the failure of others. Graham v. John Deere
Co., 383 U.S. 1, 17-18 (1966). Here the scope of the claims
of the patents in suit are not at issue and the level of skill
11 WYERS v. MASTER LOCK

of one of ordinary skill in the art is not contested. The
primary factual issues alleged to be in dispute are (1)
whether the prior art references are in the same field of
endeavor as the patented invention; (2) whether there
was sufficient motivation to combine the references; and
(3) the existence and significance of pertinent secondary
considerations. We address each in turn.
I Relevant Prior Art
Two criteria are relevant in determining whether
prior art is analogous: “(1) whether the art is from the
same field of endeavor, regardless of the problem ad-
dressed, and (2) if the reference is not within the field of
the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which
the inventor is involved.” Comaper Corp. v. Antec, Inc.,
596 F.3d 1343, 1351 (Fed. Cir. 2010) (quoting In re Clay,
966 F.2d 656, 658-59 (Fed. Cir. 1992)). Whether a refer-
ence in the prior art is “analogous” is a fact question. In
re Clay, 966 F.2d at 658.
With respect to the sleeve patents, the district court
concluded that the jury could implicitly find that the
Down patent was outside the scope of the relevant art.
See JMOL Order, 2009 WL 1309774, at *3. However, the
Down patent is specifically directed to a trailer-towing
application, adaptable to “a motor vehicle such as an
automobile for towing by fitting a rear towing attachment
for releasably attaching the tow-bar of a trailer such as a
boat trailer, horse box, caravan or other vehicle.” Down
patent col.1 ll.9-12. Thus, the Down patent is clearly
within the same field of endeavor as the sleeve patents.
With respect to the seal patent, the district court con-
cluded that the jury could implicitly find that padlock
seals were not relevant prior art. JMOL Order, 2009 WL
1309774, at *5. The district court instructed the jury
WYERS v. MASTER LOCK 12

without objection that obviousness must be determined
“based on the perspective of a person of ordinary skill in
the field of locksmithing.” J.A. 3332. Given that this jury
instruction appears to define the field of endeavor as
“locksmithing,” there is no reason why padlocks should be
excluded from the relevant prior art. Tellingly, the ’649
patent itself refers to “the prior art padlock” in the back-
ground of the invention. ’649 patent col.1 ll.24. Moreover,
the ’649 patent itself defines its scope broadly, and makes
clear that the claims are directed to “locking device[s]”
generally. See id. col.1 ll.9, col.4 ll.65-66.
Even if the prior art padlocks were not within the
same field of endeavor, they are nonetheless clearly
“reasonably pertinent” to the problem that the inventor
was trying to solve. See In re Clay, 966 F.2d at 659. The
Supreme Court’s decision in KSR International Co. v.
Teleflex, Inc., 550 U.S. 398 (2007), directs us to construe
the scope of analogous art broadly, stating that “familiar
items may have obvious uses beyond their primary pur-
poses, and a person of ordinary skill often will be able to
fit the teachings of multiple patents together like pieces of
a puzzle.” Id. at 402 (emphasis added). Here, the prior
art padlocks were clearly directed toward the same prob-
lem the inventor was trying to solve in the ’649 patent,
namely, preventing the ingress of contaminants into the
locking mechanism. Thus, as a matter of law, the prior
art Down patent and the padlock seals were pertinent
prior art in the ’649 patent, and the district court erred in
finding that they were not. We need not determine
whether the Master Lock 37D was pertinent prior art.
II Motivation to Combine
The second question for our consideration is whether
there was motivation to combine the sleeve with the prior
art barbell locks, and similarly, whether there was moti-
13 WYERS v. MASTER LOCK

vation to combine the prior art locks with an external
sealing mechanism. Before the Supreme Court’s decision
in KSR, we required that a patent challenger show that a
person of ordinary skill in the art would have had motiva-
tion to combine the prior art references and would have
had a reasonable expectation of success in doing so. See
PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d
1342, 1360 (Fed. Cir. 2007); Noelle v. Lederman, 355 F.3d
1343, 1351-52 (Fed. Cir. 2004). We had also held that
“[t]he reason, suggestion, or motivation to combine may
be found explicitly or implicitly: 1) in the prior art refer-
ences themselves; 2) in the knowledge of those of ordinary
skill in the art that certain references, or disclosures in
those references, are of special interest or importance in
the field; or 3) from the nature of the problem to be
solved.” Ruiz v. A.B. Chance Co., 234 F.3d 654, 665 (Fed.
Cir. 2000); see In re Dembiczak, 175 F.3d 994, 999 (Fed.
Cir. 1999). KSR, however, instructs courts to take a more
“expansive and flexible approach” in determining whether
a patented invention was obvious at the time it was made.
550 U.S. at 415. In particular, the Court emphasized the
role of “common sense”: “[r]igid preventative rules that
deny factfinders recourse to common sense . . . are neither
necessary under our case law nor consistent with it.” Id.
at 421.
Before KSR, we had also consistently treated the
question of motivation to combine prior art references as a
question of fact. See, e.g., Alza Corp. v. Mylan Labs., Inc.,
464 F.3d 1286, 1289 (Fed. Cir. 2006); In re Gartside, 203
F.3d 1305, 1316 (Fed. Cir. 2000). While KSR did not
change this rule, KSR and our later cases establish that
the question of motivation to combine may nonetheless be
addressed on summary judgment or JMOL in appropriate
circumstances. See KSR, 550 U.S. at 427; Perfect Web
Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1330 (Fed.
WYERS v. MASTER LOCK 14

Cir. 2009); Ball Aerosol & Specialty Container, Inc. v.
Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009);
Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1325-
26 (Fed. Cir. 2008); Sundance, Inc. v. DeMonte Fabricat-
ing, Ltd., 550 F.3d 1356, 1366-67 (Fed. Cir. 2008).
KSR featured fairly straightforward technology—an
adjustable throttle pedal for an automobile, U.S. Patent
No. 6,237,565 (“the Engelgau patent”). The patented
technology combined an adjustable pedal with an elec-
tronic sensor to measure the pedal depression. Both
features were present in the prior art, namely U.S. Patent
No. 5,010,782 (“Asano”) disclosing an adjustable pedal
and U.S. Patent 5,819,593 (“Rixon”) disclosing an elec-
tronic sensor for detecting the pedal’s position. When
Teleflex, Inc. (“Teleflex”) sued KSR International Com-
pany (”KSR”) for infringement, the district court invali-
dated the Engelgau patent on summary judgment on the
grounds of obviousness. Teleflex, Inc. v. KSR Int’l Co., 298
F. Supp. 2d 581, 595 (E.D. Mich. 2003). This court re-
versed, holding that there were genuine issues of material
fact as to whether there was a teaching, suggestion, or
motivation to combine the prior art references. Teleflex,
Inc. v. KSR Int’l Co., 119 F. App’x 282, 290 (Fed Cir.
2005). The Supreme Court reversed again, concluding
that summary judgment was appropriate. This was so
because one skilled in the art starting with Asano would
have found it obvious to put the sensor on a fixed pivot
point, and one skilled in the art starting with Rixon would
have found it obvious to avoid the problem of wire-chafing
by combining Rixon with the adjustable pedal of Asano.
KSR, 550 U.S. at 423-24.
The Court also made clear that expert testimony con-
cerning motivation to combine may be unnecessary and,
even if present, will not necessarily create a genuine issue
of material fact. See id. at 427. We had held that the
15 WYERS v. MASTER LOCK

district court erred in granting summary judgment, as the
affidavits of Teleflex’s two experts stating their opinion
that the invention was non-obvious created a material
issue of fact. We had noted that “[a]t the summary judg-
ment stage of a proceeding, it is improper for a district
court to make credibility determinations.” Teleflex, 119 F.
App’x. at 290. The Supreme Court disagreed:
In considering summary judgment on that ques-
tion the district court can and should take into ac-
count expert testimony, which may resolve or
keep open certain questions of fact. That is not the
end of the issue, however. The ultimate judgment
of obviousness is a legal determination. . . .
Where, as here, the content of the prior art, the
scope of the patent claim, and the level of ordinary
skill in the art are not in material dispute, and the
obviousness of the claim is apparent in light of
these factors, summary judgment is appropriate.
Nothing in the declarations proffered by Teleflex
prevented the District Court from reaching the
careful conclusions underlying its order for sum-
mary judgment in this case.
KSR, 550 U.S. at 427 (emphasis added).
KSR and our later cases establish that the legal de-
termination of obviousness may include recourse to logic,
judgment, and common sense, in lieu of expert testimony.
See, e.g., Perfect Web, 587 F.3d at 1329; Ball Aerosal, 555
F.3d at 993. In Perfect Web, the patented technology
involved a method of managing bulk e-mail comprising
essentially the steps of targeting a group of recipients,
sending e-mail to those recipients, calculating the number
of successfully delivered e-mails, and repeating the first
three steps until reaching the desired quantity. It was
undisputed that the first three steps were disclosed in the
WYERS v. MASTER LOCK 16

prior art. With respect to the last step, the district court
explained: “If 100 email deliveries were ordered, and the
first transmission delivered only 95, common sense dic-
tates that one should try again. One could do little else.”
Perfect Web, 587 F.3d at 1330. We affirmed the district
court’s obviousness determination and endorsed its
“common sense” reasoning. Id. We furthermore con-
cluded that no expert opinion was required to support the
obviousness determination, because the technology was
“easily understandable.” Id. at 1329-30 (quoting Cen-
tricut, LLC v. Esab Group, Inc., 390 F.3d 1361, 1369 (Fed.
Cir. 2004)); see also Sundance, 550 F.3d at 1365. 5
Thus, in appropriate cases, the ultimate inference as
to the existence of a motivation to combine references may
boil down to a question of “common sense,” appropriate
for resolution on summary judgment or JMOL. See
Perfect Web, 587 F.3d at 1330. Other recent cases have
confirmed the appropriateness of this approach. In Ball
Aerosol, the sole disagreement between the parties and

5 However, as we noted in Centricut, “expert testi-
mony regarding matters beyond the comprehension of
laypersons is sometimes essential,” particularly in cases
involving complex technology. 390 F.3d at 1369-70 (re-
quiring expert testimony to establish infringement);
Proveris Scientific Corp. v. Innovasystems, Inc., 536 F.3d
1256, 1267 (Fed. Cir. 2008) (holding that expert testimony
was required to establish invalidity on grounds of antici-
pation and obviousness where the subject matter is suffi-
ciently complex to fall beyond the grasp of an ordinary
layperson). In such cases, expert testimony may be
critical, for example, to establish the existence of certain
features in the prior art, see Koito Mfg. Co., Ltd. v. Turn-
Key-Tech, LLC, 381 F.3d 1142, 1152 n.4 (Fed. Cir. 2004),
or the existence (or lack thereof) of a motivation to com-
bine references, see Alza Corp. v. Mylan Labs., Inc., 464
F.3d 1286, 1294-95 (Fed. Cir. 2006).
17 WYERS v. MASTER LOCK

the basis for the district court’s denial of the accused
infringer’s motion for summary judgment of obviousness
was whether a motivation to combine the prior art refer-
ences existed. 555 F.3d at 991. We held that where all of
the limitations of the patent were present in the prior art
references, and the invention was addressed to a “known
problem,” “KSR . . . compels the grant of summary judg-
ment of obviousness.” Id. at 993. Similarly, in Sundance,
we reversed a denial of JMOL on the issue of obviousness,
noting that the factual inquiries underlying the determi-
nation of obviousness were not in material dispute, and
concluding that the patent, which combined two prior art
references, was obvious as a matter of law. 550 F.3d at
1365.
With these principles in mind, we consider whether
the evidence established the existence of a motivation to
combine references as to the sleeve patents. The above-
referenced Down patent discloses a trailer towing at-
tachment, adaptable to “a motor vehicle such as an auto-
mobile for towing by fitting a rear towing attachment for
releasably attaching the tow-bar of a trailer such as a
boat trailer, horse box, caravan or other vehicle.” Down
patent col.1 ll.9-12.
WYERS v. MASTER LOCK 18

Down Patent, Figure 1

The invention is embodied by a
support plate . . . with two parallel flat lugs [2,3]
which, when the plate is mounted on a towing ve-
hicle, project rearwardly from the plate and are
spaced apart one above the other in respective
horizontal planes, the upper lug being provided on
its upper surface with an upstanding spherical
boss [5] upon which a socket of a tow-bar can be
seated, a bore extending through the centre of the
boss and through the two lugs, and a pin engage-
able in the bore [11].
19 WYERS v. MASTER LOCK

Id. col.1 ll.45-54. The towing attachment accepts either a
tow-bar eye or tow-ball arrangement. In the tow-bar eye
arrangement, the pin passes between the two lugs and
through the towing eye and then is “locked in position.”
Id. col.1 l.20. The patent describes that “[a] locking
element [9] may be provided for engagement in a trans-
verse hole in the lower end of the pin . . . . The locking
element may be of any convenient known type, preferably
with a spring retaining means.” Id. col.2 ll.3-8. The
patent also discloses a “steel sleeve” as an “optional
feature [that] fits over the portion of the pin which spans
the space between the two lugs.” Id. col.3 ll.15-17. The
external diameter of the sleeve is such that the towing eye
can be secured between the lugs with the sleeve inter-
posed between the pin and the eye.
The existence of different aperture sizes in standard
hitch receivers was a known problem: as the sleeve patent
acknowledge, industry standards require hitch receivers
to use pins of different sizes for different applications,
thus resulting in inconvenience and added expense. See
’115 patent col.2 ll.28-32 (“[A] number of different locking
devices having different sized shanks are needed to meet
varied particular applications. This is cumbersome and
expensive. Therefore, there is a need for a locking mecha-
nism using a linear shank that is convertible for various
applications.”); ’426 patent col.2 ll.37-41. Moreover, as
Philip Wyers himself acknowledged, it was also a known
problem that among mass retailers such as Wal-Mart,
space is at a premium. J.A. 4295. The Down patent
clearly teaches that sleeves of different external diameter
“may be provided for the attachment of trailer towing eyes
of different internal diameter.” Down patent col.3 ll.20-
23. When the sleeve is used, the pin accommodates
larger diameter towing eyes; without the sleeve, the pin
fits smaller ones. It is simply a matter of common sense
WYERS v. MASTER LOCK 20

that the sleeve used in Down, in a towing attachment
quite similar to a hitch receiver/tow bar arrangement,
could be combined with a barbell-shaped hitch pin lock in
order to address the known problem of different aperture
sizes in standard hitch receivers and the shelf-space
problem experienced by retailers. See KSR, 550 U.S. at
421 (“When there is a design need or market pressure to
solve a problem and there are a finite number of identi-
fied, predictable solutions, a person of ordinary skill has
good reason to pursue the known options within his or her
technical grasp. If this leads to the anticipated success, it
is likely the product not of innovation but of ordinary skill
and common sense.”); Ball Aerosol, 555 F.3d at 993.
Likewise, it is clear that a skilled artisan would have
perceived a reasonable expectation of success as a result
of combining these two elements of the prior art refer-
ences. See In re O’Farrell, 853 F.2d 894, 904 (Fed. Cir.
1988) (“For obviousness under § 103, all that is required
is a reasonable expectation of success.”).
None of Wyers’ arguments to the contrary is convinc-
ing. First, Wyers argues that Master Lock did not con-
sider Down to be invalidating prior art in its own patent
application for its convertible sleeve. Wyers filed the ’115
patent application in April of 2000. Master Lock inde-
pendently filed a patent application in February of 2001
that issued as U.S. Patent No. 6,862,905 (the “’905 pat-
ent”), claiming a pin lock with a cylindrical locking
mechanism that includes a locking disc; the patent also
claimed a “sleeve dimensioned to slide over . . . a portion
of said first locking member.” ’905 patent col.6 ll.49-50.
However, Master Lock’s ’905 patent application, while
claiming a convertible sleeve, see id. col.6 ll.50-52, did not
claim that the sleeve represented a novel aspect of the
invention. Moreover, Master Lock’s patent application
should be treated no differently than a patent application
21 WYERS v. MASTER LOCK

by a third party. Obviousness protects the public at large,
not a particular infringer, and one is not estopped from
asserting the invalidity of a patent by the fact that one
has previously made an attempt to procure a patent for
substantially the same invention. As the Supreme Court
concluded in Haughey v. Lee, 151 U.S. 282, 332-33 (1894),
“the defense of want of patentable invention in a patent
operates, not merely to exonerate the defendant, but to
relieve the public from an asserted monopoly, and the
court cannot be prevented from so declaring by the fact
that the defendant had ineffectually sought to secure the
monopoly for himself.” See also Paramount Publix Corp.
v. Am. Tri-Ergon Corp., 294 U.S. 464, 477 (1935) (“How-
ever inconsistent this early attempt to procure a patent
may be with petitioner’s present contention of its invalid-
ity for want of invention, this Court has long recognized
that such inconsistency affords no basis for an estoppel,
nor precludes the court from relieving the alleged in-
fringer and the public from the asserted monopoly when
there is no invention.”). The Master Lock application thus
does not defeat an assertion of obviousness. The failure of
Master Lock employees to cite the Down patent as prior
art in internal idea disclosure forms when Master Lock
was considering filing its own patent application similarly
does not defeat an argument of obviousness. What Mas-
ter Lock employees subjectively knew or believed at the
time they were considering filing the ’905 patent applica-
tion is irrelevant. The relevant inquiry is what a hypo-
thetical ordinarily skilled artisan would have gleaned
from the prior art references at the time that the patent
applications leading to the sleeve patents were filed. See,
e.g., Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239
F.3d 1343, 1364 (Fed. Cir. 2001).
Second, Wyers argues that Down could not be consid-
ered because Master Lock introduced no expert testimony
WYERS v. MASTER LOCK 22

directed to Down. However, as we noted above, expert
testimony is not required when the references and the
invention are easily understandable. Perfect Web, 587
F.3d at 1329.
Third, Wyers argues that there are differences be-
tween the sleeve arrangement disclosed in the Down
patent and the sleeve arrangement in the patents-in-suit.
In the Down patent, the hitch arrangement is vertical,
see Down patent, fig.1, whereas in the patents-in-suit it is
horizontal, see ’115 patent, fig.1; ’426 patent, fig.1. More-
over, in Down, the sleeve covers only the middle portion of
the pin, whereas in the patents-in-suit, the sleeve covers
the entire shank. Wyers also asserts that the pin in the
Down patent is not designed to fit tightly through a metal
eye, while in the ’115 and ’426 sleeve patents, it fits
snugly. However, we do not find these slight distinctions
to be material.
Finally, Wyers suggests that an ordinary skilled arti-
san would not have had a reasonable expectation of
success with the patented invention, because of the expec-
tation that a sleeve would weaken the strength of the pin
against “shear forces” due to a welding seam in the sleeve.
J.A. 4078. Shear forces are the scissoring actions that are
exerted by the load during towing due to stopping and
starting, bumps in the road, or other sudden impacts.
The claims do arguably require that the hitch pin be load-
bearing; the very purpose of a “locking hitch pin device for
interconnecting a bar with a hitch receiver” necessarily
implies a limitation that the hitch pin be capable of
bearing a load. See ’115 patent col.10 ll.21-22. However,
the claims do not require any particular resistance to
shear forces or any particular towing strength associated
with the towing pin or sleeve; the sole benefit of the sleeve
described in the patent is its size adaptability. See id.
col.2 ll.20-36; id. col.5 ll.52-57. Moreover, one skilled in
23 WYERS v. MASTER LOCK

the art would have known from the Down patent that a
size-adapting sleeve could work on a load-bearing towing
pin. Wyers himself conceded that Down discloses a load-
bearing pin with a sleeve. See Appellee’s Br. 25 (“[T]he
bushing and pin appear to be load-bearing . . . .”); J.A.
4328 (“Q. But it would be a load-bearing surface, wouldn’t
it? A. Sure.”). Thus, one skilled in the art would have had
a reasonable expectation of success in combining the
sleeve with the barbell lock to solve the problem of size
adaptability, in light of the prior art teachings. See
Amgen, Inc. v. F. Hoffman-La Roche, Ltd., 580 F.3d 1340,
1362 (Fed. Cir. 2009).
We conclude that it was a matter of common sense to
combine the Down patent with the prior art barbell locks
in order to arrive at the invention claimed in the ’115 and
’426 patents, and that one of ordinary skill in the art
would have had a reasonable expectation of success in
doing so.
We next address the question of whether there was
motivation to combine the prior art barbell locks with an
external sealing mechanism. Some of the prior art hitch
pin locks, such as the ’832 patent and the Chang patent,
used internal sealing mechanisms. The Chang patent
claims an internal seal consisting of a sealing ring placed
in a groove on the shank of the lock. Chang patent col.4
ll.54-57. Wyers’ ’832 patent claims an “o-ring” seal lo-
cated on a groove on the latch that serves to prevent the
ingress of unwanted substances into the locking head,
essentially moving the sealing ring of Chang from an
internal to an external position. See ’832 patent col.7
ll.52-57. Additionally, at trial Master Lock also intro-
duced a number of padlocks having a variety of external
seal configurations. The Master Lock 6121 series padlock
includes an external seal at the entry point of the shackle
into the lock head. See J.A. 762. The Heald patent simi-
WYERS v. MASTER LOCK 24

larly discloses an external flange seal that grips the
circumference of the shackle arms to form “a weatherproof
seal.” Heald patent col.3 ll.62-col.4 l.3.
Master Lock 6121

Figures 8 and 9 of the Heald Patent

The Hampton patent discloses a padlock with an external
seal covering the locking head. The flat cover lid in the
Hampton patent incorporates holes with shackle receiving
edges through which the padlock shackle passes to pro-
vide a seal around the shackle. Hampton patent col.4 ll.3-
7. The seal is intended, in part, to protect the locking
mechanism from the elements and the ingress of such
contaminants as “dirt and ice.” Id. col.1 ll.18-29. The
Manuel patent also discloses a padlock with a flat exter-
25 WYERS v. MASTER LOCK

nal seal covering the locking head, in which the holes are
beveled and adapted to receive the shackle legs. Manuel
patent col.1 ll.33-35.
Hampton Patent, Figure 1 Manuel Patent, Figure 2

Thus, at the time of the invention, there were two
known ways to protect a lock’s locking head from the
ingress of contaminants—an external or an internal
seal—and both design options were common and widely
used in locks in the prior art. It is a matter of common
sense that a flat external seal used in the prior art pad-
locks could be combined with a barbell-shaped hitch pin
lock. Indeed, the district court described the difference
between the invention of the ’649 patent and the prior art
as “slight indeed.” Wyers v. Master Lock Co., No. 06-cv-
00619, 2008 WL 2168977, at *12 (D. Colo. May 22, 2008).
Wyers himself admitted that an external flange seal
would work the same way on a padlock as it does on a
barbell-shaped lock, and that the purpose of the seals was
the same in the prior art padlocks as in the patented
device. We conclude that the invention of the ’649 patent
represents no more than “the predictable use of prior art
elements according to their established functions,” KSR,
550 U.S. at 417, and as such, the claims of the ’649 patent
are obvious as a matter of law.
WYERS v. MASTER LOCK 26

Wyers argues that one of ordinary skill in the art
would not have had a reasonable expectation of success in
using an external flange seal on a barbell lock, because a
“turtleneck” seal such as the one appearing in the Master
Lock 6121 would “limit the shackle usage as it encroaches
up the shackle,” and would subject the seal to “deforma-
tion, possible damage.” J.A. 4192. However, even if this
is in fact the case, flat external seals that do not extend
up the shank of the shackle also existed in the prior art.
Both the Manual patent and the Hampton patent disclose
a flat, external flange seal covering the locking head. See
Manuel patent col.1 ll.33-35; Hampton patent, col.4 ll.3-7.
Wyers again argues that Master Lock’s own patent
application on a similar external seal filed in July of 2003
“admitted” that the external seal was “novel, nonobvious
and useful and therefore warranted patent protection.”
Appellee’s Br. 31. Master Lock filed a patent application
in July of 2003 for a barbell-shaped coupler lock which
included an external seal in the form of a protective
covering with an opening that resulted in an “interference
fit between the seal and the shaft.” J.A. 11465. 6 Fur-
thermore, Wyers argues, Master Lock’s patent application
fails to list any of the prior art that Master Lock now
claims is invalidating. Appellee’s Br. 32. However, the
fact that Master Lock claimed that its external seal was
novel bears no evidentiary significance; Master Lock’s
patent application should be treated no differently than a
patent application by a third party, as discussed above.
Thus, we conclude that it was a matter of common
sense to combine the prior art barbell locks with an

6 This patent application never issued, apparently
because Master Lock’s application was denied in light of
Wyers’ earlier application for the ’649 patent.
27 WYERS v. MASTER LOCK

external sealing mechanism in order to arrive at the
claimed invention of the ’649 patent, and that one of
ordinary skill in the art would have had a reasonable
expectation of success in doing so.
III Secondary Considerations
At trial, Wyers presented evidence of secondary indi-
cia of nonobviousness, including commercial success,
copying, and unexpected results. Wyers argued that
commercial success was established by Master Lock’s
success in marketing and selling its infringing product,
the invention’s success among retailers such as WalMart
who sought to save shelf-space, and Master Lock’s failure
to find a non-infringing substitute. Wyers also argues that
competitors’ copying and marketing of convertible shank
hitch pin locks shortly after the invention’s existence
became known supports a finding of nonobviousness.
We reject Wyers’ contention that secondary considera-
tions of obviousness are sufficient to support the jury
verdict of nonobviousness. Our case law clearly estab-
lishes that the patentee must establish a nexus between
the evidence of commercial success and the patented
invention. See In re Huang, 100 F.3d 135, 140 (Fed. Cir.
1996) (holding that the proponent must offer proof “that
the sales were a direct result of the unique characteristics
of the claimed invention”) (emphasis added); In re GPAC
Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995) (“For objective
[evidence of secondary considerations] to be accorded
substantial weight, its proponent must establish a nexus
between the evidence and the merits of the claimed
invention.”) (emphasis added). Here, Wyers essentially
concedes that he is unable to prove a nexus to the seal
patent, and provides no independent evidence for the
commercial success of the seal patent. Even with respect
to the sleeve patents, Wyers relies solely on Master Lock’s
WYERS v. MASTER LOCK 28

$20 million in sales of the accused product, and estab-
lished no direct nexus to the sleeve feature.
Additionally, Wyers failed to establish copying. Not
every competing product that arguably falls within the
scope of a patent is evidence of copying; otherwise, “every
infringement suit would automatically confirm the
nonobviousness of the patent.” Iron Grip Barbell Co. v.
USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004).
Our case law holds that copying requires evidence of
efforts to replicate a specific product, which may be dem-
onstrated through internal company documents, direct
evidence such as disassembling a patented prototype,
photographing its features, and using the photograph as a
blueprint to build a replica, or access to the patented
product combined with substantial similarity to the
patented product. Iron Grip, 392 F.3d at 1325; see
Akamai Techs., Inc. v. Cable & Wireless Internet Servs.,
Inc., 344 F.3d 1186, 1196-97 (Fed. Cir. 2003); Advanced
Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272,
1285-86 (Fed. Cir. 2000). Wyers introduced no such
evidence here.
Moreover, secondary considerations of nonobvious-
ness—considered here by the district court—simply
cannot overcome a strong prima facie case of obviousness.
See Asyst Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310, 1316
(Fed. Cir. 2008); Agrizap, Inc. v. Woodstream Corp., 520
F.3d 1337, 1344 (Fed. Cir. 2008); Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(holding that the objective considerations of nonobvious-
ness presented, including substantial evidence of com-
mercial success, praise, and long-felt need, were
inadequate to overcome a strong showing of primary
considerations that rendered the claims at issue invalid);
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1371 (Fed. Cir. 2006) (“The
29 WYERS v. MASTER LOCK

presence of certain secondary considerations of nonobvi-
ousness are insufficient as a matter of law to overcome
our conclusion that the evidence only supports a legal
conclusion that claim 1 would have been obvious.”). Here,
where the inventions represented no more than “the
predictable use of prior art elements according to their
established functions,” KSR, 550 U.S. at 417, the secon-
dary considerations are inadequate to establish nonobvi-
ousness as a matter of law.
Thus, we conclude that the asserted claims of the
’115, ’426, and ’649 patent would have been obvious as a
matter of law. We reverse the district court’s holding that
the asserted claims of the ’115, ’426, and ’649 patents
were nonobvious. In light of our disposition, we do not
reach issues concerning the calculation of damages.
REVERSED
COSTS
Costs to Appellant.
 United States Court of Appeals
for the Federal Circuit
__________________________

PHILIP W. WYERS AND WYERS PRODUCTS
GROUP, INC.,
Plaintiff-Appellees,

v.
MASTER LOCK COMPANY,
Defendant-Appellant.
__________________________

2009-1412
__________________________

Appeal from the United States District Court for the
District of Colorado in case no. 1:06-CV-00619, Senior
Judge Lewis T. Babcock.
__________________________

LINN, Circuit Judge, concurring.

While I concur both in the conclusion reached and the
reasoning expressed in Judge Dyk’s opinion for the Court,
I write to address concerns raised following the Supreme
Court’s decision in KSR International Co. v. Teleflex, Inc.,
550 U.S. 398 (2007) with respect to general verdicts
relating to obviousness.

It is well established that whether an invention would
have been obvious at the time the invention was made is a
mixed question of law and fact. See, e.g., Takeda Chem.
Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350,
WYERS v. MASTER LOCK 2

1355 (Fed. Cir. 2007). The ultimate determination of
obviousness is a question of law, which we review de novo.
Id. This determination is based on the underlying factual
determinations set forth in Graham v. John Deere Co.,
383 U.S. 1, 17 (1966), which we review for clear error. Id.

In KSR, the Supreme Court confirmed that “[t]he ul-
timate judgment of obviousness is a legal determination.”
550 U.S. at 427. This acknowledgement did not change
longstanding precedent permitting the submission of
obviousness questions to a jury for a general verdict,
provided the jury has received proper instruction on the
law. As stated by this Court in Connell v. Sears, Roebuck
& Co.:

[I]t is not error to submit the question of obvious-
ness to the jury. No warrant appears for distin-
guishing the submission of legal questions to a
jury in patent cases from such submissions rou-
tinely made in other types of cases. So long as the
Seventh Amendment stands, the right to a jury
trial should not be rationed, nor should particular
issues in particular types of cases be treated dif-
ferently from similar issues in other types of
cases. Scholarly disputes over use of jury trials in
technically complex cases relate to the right to
trial by jury itself, and center on whether lay ju-
ries are capable of making correct fact determina-
tions, not over the propriety of submitting legal
questions to juries. The obviousness issue may be
in some cases complex and complicated, on both
fact and law, but no more so than equally compli-
cated, even technological, issues in product liabil-
ity, medical injury, antitrust, and similar cases.
Indeed, though the analogy like most is not per-
fect, the role of the jury in determining obvious-
3 WYERS v. MASTER LOCK

ness is not unlike its role in reaching a legal con-
clusion respecting negligence, putting itself in the
shoes of one “skilled in the art” at the time the in-
vention was made in the former and in the shoes
of a “reasonable person” at the time of the events
giving rise to the suit in the latter.

722 F.2d 1542, 1547 (Fed. Cir. 1983); see also Harbor Tug
& Barge Co. v. Papai, 520 U.S. 548, 554 (1997) (stating
that where an “inquiry is a mixed question of law and fact
. . . it often will be inappropriate to take the question from
the jury”) (internal citations omitted); United States v.
Gaudin, 515 U.S. 506, 511-16 (1995) (stating that the
determination of whether a statement is “material” is
ultimately a legal question, based on several underlying
questions of “purely historical fact,” which “has typically
been resolved by juries” and “[j]uries at the time of the
framing could not be forced to produce mere ‘factual
findings,’ but were entitled to deliver a general verdict
pronouncing the defendant’s guilt or innocence”); McDer-
mott Int’l, Inc. v. Wilander, 498 U.S. 337, 356 (1991)
(holding that the mixed law and fact question of who is a
“seaman” under the Jones Act is a question for the jury,
which “finds the facts and . . . applies the legal standard”);
White v. Jeffrey Mining Mach. Co., 723 F.2d 1553, 1558
(Fed. Cir. 1983) (“Jeffrey argues that the judge improperly
submitted this question of law to the jury and adopted its
conclusion as his own, without the benefit of underlying
findings of fact. The argument is without merit. Submis-
sion of such a question of law to a jury, accompanied by
appropriate instructions, is proper.” (citing Connell, 722
F.2d at 1542)).

While, “the judge must remain the ultimate arbiter on
the question of obviousness,” this role is properly exer-
cised on “giving proper instructions on the law to the jury
WYERS v. MASTER LOCK 4

before it considers its verdict” and again “when presented
with a motion for JNOV or new trial.” R.R. Dynamics,
Inc. v. A. Stucki Co., 727 F.2d 1506, 1515 (Fed. Cir. 1984).
To facilitate review and reveal more clearly the jury’s
underlying factual findings, this Court has encouraged
trial court judges to provide juries with special interroga-
tories on obviousness. Agrizap, Inc. v. Woodstream Corp.,
520 F.3d 1337, 1343 n.3 (Fed. Cir. 2008); Richardson-
Vicks, Inc. v. Upjohn Co., 122 F.3d 1476, 1484-85 (Fed.
Cir. 1997); Perkin-Elmer Corp. v. Computervision Corp.,
732 F.2d 888, 893 (Fed. Cir. 1984). However, we set forth
no hard and fast rule, and “it must be left to the sound
discretion of the trial court what form of verdict to request
of a jury.” Structural Rubber Prods. Co. v. Park Rubber
Co., 749 F.2d 707 (Fed. Cir. 1984).

Absent any special interrogatories, we must presume
the “existence of findings necessary to support the verdict
the jury reached.” Perkin-Elmer, 732 F.2d at 893. Our
review of a general verdict on obviousness thus entails
two steps. “We first presume that the jury resolved the
underlying factual disputes in favor of the verdict winner
and leave those presumed findings undisturbed if they are
supported by substantial evidence. Then we examine the
legal conclusion de novo to see whether it is correct in
light of the presumed jury fact findings.” Jurgens v.
McKasy, 927 F.2d 1552, 1557 (Fed. Cir. 1991) (internal
citations omitted); see also Boston Scientific Scimed, Inc.
v. Cordis Corp, 554 F.3d 982 (Fed. Cir. 2009); Agrizap,
520 F.3d 1337; PharmaStem Therapeutics, Inc. v. ViaCell,
Inc., 491 F.3d 1342 (Fed. Cir. 2007).

Because there is no way to determine from a general
verdict on obviousness the specific findings of fact made
by a jury on the factual questions underlying its verdict,
the court in examining the first part of the obviousness
5 WYERS v. MASTER LOCK

question is left to infer whether substantial evidence
existed from which the jury could have made the factual
findings necessary to support the verdict. Here, the
majority examined the record and after considering the
factual inferences concluded that support was lacking and
that the claims at issue would have been obvious as a
matter of law. With both the analysis and the conclusion,
I fully agree.