Cablz, Inc. v. Chums, Inc.

NOTE: This disposition is nonprecedential.

United States Court of Appeals
for the Federal Circuit
______________________

CABLZ, INC.,
Appellant

v.

CHUMS, INC., CROAKIES, INC.,
Appellees
______________________

2016-1823
______________________

Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2014-
01240.
______________________

Decided: September 12, 2017
______________________

MICHAEL ANTHONY LADRA, Atherton, CA, argued for
appellant. Also represented by MICHAEL J. DOUGLAS, JOE
L. LEAK, HUNTER SPENCER MORANO, Leak, Douglas &
Morano, PC, Birmingham, AL.

MARC T. RASICH, Stoel Rives LLP, Salt Lake City, UT,
argued for appellees. Also represented by JOSHUA GIGGER;
HUNTER OLDS FERGUSON, Seattle, WA.
______________________
Before REYNA, SCHALL, and WALLACH, Circuit Judges.
2 CABLZ, INC. v. CHUMS, INC.

REYNA, Circuit Judge.
Following institution of inter partes review, the Unit-
ed States Patent Trial and Appeal Board found every
claim of U.S. Patent No. 8,366,268 (“’268 patent”) un-
patentable as obvious. Cablz, Inc., the owner of the ’268
patent, appeals from this decision, arguing that substan-
tial evidence fails to support the Board’s obviousness
determination and that the Board failed to adequately
explain a motivation to combine the prior art. Finding no
error in the Board’s decision, we affirm.
BACKGROUND
The ’268 patent is entitled “Eye Wear Retention De-
vice.” As the patent explains, people have long been using
devices like chains, strings, and ropes to retain their
glasses around their necks. A significant problem is that
such devices rest directly against the wearer’s back or
neck, which can cause the device to become entangled
with clothing or coated with sweat or suntan lotion. The
’268 patent purports to solve the problem and discloses an
eyewear retainer that “extends rearward from the head of
the wearer and is suspended off the neck of the wearer.”
J.A. 40 at Abstract. Figure 4 is illustrative of the inven-
tion:
CABLZ, INC. v. CHUMS, INC. 3

J.A. 44. The ’268 patent has 17 claims. Claim 1 is repre-
sentative and recites:
1. An eyewear retention device comprising two
temple retainers connected by a resilient cable,
such that when the temple retainers are attached
to a pair of eyeglasses and the eyeglasses are
worn over the ears of a wearer, the cable extends
rearward from the head of the wearer and is sus-
pended off the neck of the wearer.
J.A. 47 at col. 4, ll. 36–41.
Cablz sued Chums, Inc. and Croakies, Inc. (“Appel-
lees”) for infringement of the ’268 patent in the United
States District Court for the Northern District of Ala-
bama. In response, Appellees successfully petitioned for
inter partes review of all claims of the ’268 patent. The
U.S. Patent Trial and Appeal Board (“Board”) instituted
the IPR over four pieces of prior art: (1) Bill Monroe,
Outdoor folks don’t use trendy glasses-holders, The Ore-
gonian, E4 (July 5, 1991) (“Monroe”); (2) U.S. Patent No.
6,941,619, “Eyeglass Retainer with Dual Use Connectors”
(“Mackay”); (3) U.S. Patent App. Pub. No. 2007/0046889,
“Eyewear with Weighted Flexible Temples” (“Miller”) and
4 CABLZ, INC. v. CHUMS, INC.

(4) U.S. Patent No. 6,764,177, “Eyeglass Retainer” (“Chi-
solm”). Chums, Inc. v. Cablz, Inc., No. IPR2014–01240,
2016 WL 763054, at *2 (P.T.A.B. Feb. 8, 2016).
PRIOR ART
1. Monroe
Monroe is a 1991 news article from The Oregonian
that details a sunglass retainer crafted by fisherman
Mark Sosin. Mr. Sosin explained that he used a piece of
300-lb test monofilament tied onto his glasses with dental
floss, depicted here:

J.A. 412. Mr. Sosin explained that he did not like the
feeling of a glasses retainer resting on his neck in the
heat. J.A. 416. Consequently, as described in the article,
he created a retainer that “never hangs up and never
drapes around his neck. Indeed, it sticks straight out
behind his head at all times the glasses are worn.” J.A.
416. To make the retainer, Mr. Sosin bent “a length of
CABLZ, INC. v. CHUMS, INC. 5

300-pound test monofilament so thick and stiff that the
only knot it would take would be big enough to tie up a
small ship.” J.A. 416.
2. Mackay
Mackay discloses an eyewear retainer that includes
two temple retainers attached to the ends of a variety of
different cords. Mackay shows that the temple retainers
can be attached to different parts of a pair of glasses:

J.A. 420–21 at Fig. 2A & 2B.
3. Miller
Miller discloses a counter-weighted eyeglass frame
that uses cable “made from a metallic core coated in a
smooth casing.” J.A. 440. Miller’s frame is depicted here:
6 CABLZ, INC. v. CHUMS, INC.

J.A. 436 at Fig. 8.
4. Chisolm
Chisolm, like Mackay, discloses temple retainers that
can be attached in different configurations to a pair of
eyeglasses:

J.A. 444; see also J.A. 447–49.
CABLZ, INC. v. CHUMS, INC. 7

THE BOARD’S DECISION
The Board ultimately found claims 1–17 of the ’268
patent unpatentable. Relevant to this appeal, the Board
construed “resilient” to mean “having sufficient stiffness
to maintain its shape and to return to its original form
after being bent.” Chums, 2016 WL 763054, at *2. On
this construction, the Board concluded that Monroe in
combination with the other references taught “temple
retainers connected by a resilient cable” or “member.” Id.
at *6. In doing so, the Board described Mr. Sosin’s device
as a “resilient cable/member” that “must in some way be
connected or attached to the eyeglasses in order to func-
tion.” Id. The Board additionally found that the prior art
in combination disclosed each of the dependent claim
limitations. Id. at *7.
Regarding motivation to combine, the Board rejected
Cablz’s arguments that the cited combinations taught
away from the ’268 patent’s invention. “None of Patent
Owner’s examples of purported ‘teaching away’ criticize,
discredit, or otherwise discourage the solution
claimed. . . . We are persuaded, rather, by Petitioner’s
more detailed responses explaining why the prior art
references do not ‘teach away’ in the manner alleged by
Patent Owner.” Id. at *8.
The Board also discussed Cablz’s argument that no
one had recognized or solved the “being in the way” prob-
lem, that is, that traditional glasses retainers could
become entangled in clothing. Chums, 2016 WL 763054,
at *8–9. Contrary to Cablz’s arguments, the Board found
that Mr. Sosin’s device both recognized and solved this
problem. Id. at *8–9. The Board also addressed but
ultimately found unavailing Cablz’s contention that the
age of the references and the fact that Appellees did not
combine the references to create their own product were
no impediment to a motivation to combine the prior art.
Id. at *9–10. The Board also recognized that to achieve
8 CABLZ, INC. v. CHUMS, INC.

the ’268 patent’s configuration required only “simple
substitution.” Id. at *11.
Finally, the Board considered objective indicia of non-
obviousness, but concluded that “Petitioner’s strong
evidence of obviousness of claims 1–17 outweighs the
evidence of secondary considerations of nonobviousness.”
Id. at *15.
Cablz timely appealed, and we have jurisdiction under
28 U.S.C. § 1295(a).
STANDARD OF REVIEW
The court reviews the Board’s legal conclusions of ob-
viousness de novo. Underlying factual findings are re-
viewed for substantial evidence. In re Magnum Oil Tools
Int’l, Ltd., 829 F.3d 1364, 1373 (Fed. Cir. 2016). Substan-
tial evidence is such relevant evidence as a reasonable
mind might accept as adequate to support a conclusion.
Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1000
(Fed. Cir. 2016) (citation omitted).
DISCUSSION
Cablz challenges the Board’s conclusion that the
claims of the ’268 patent are unpatentable for two rea-
sons. First, Cablz argues that substantial evidence does
not support the Board’s determination that the device
described in Monroe uses “resilient” material, and second,
that the Board failed to articulate a motivation to com-
bine the references.
1. Waiver
As an initial matter, we conclude that Cablz waived
its argument that Monroe fails to disclose a “resilient”
cable or member because it failed to raise this argument
in its briefing before the IPR oral hearing. The court
retains case-by-case discretion over whether to apply
waiver. In re Nuvasive, Inc., 842 F.3d 1376, 1380 (Fed.
Cir. 2016) (citing Harris Corp. v. Ericsson Inc., 417 F.3d
CABLZ, INC. v. CHUMS, INC. 9

1241, 1251 (Fed. Cir. 2005)). A party waives an argument
that it failed to present to the Board because it deprives
the court of the benefit of the Board’s informed judgment.
Id. (citing In re Watts, 354 F.3d 1362, 1367–68 (Fed. Cir.
2004)).
Cablz points only to a generic statement in its Patent
Owner Response to argue that it preserved this issue for
appeal. In its Response, Cablz argued generally that “no
reference teaches a resilient cable connected to a temple
retainer as claimed.” J.A. 239. But this does not suffi-
ciently preserve the particular issue of whether Monroe
discloses a “resilient” cable as that term was construed by
the Board. This is especially true as Cablz, in numerous
other places, admitted that Monroe’s retainer was “resili-
ent.” See, e.g., J.A. 250 (“A POSITA would not use Chi-
solm’s slider without Monroe’s heavy, thick, stiff and
stout line or any other resilient cable.”) (emphasis added);
J.A. 258 (“Monroe discloses a resilient member, but not a
cable.”) (emphasis added); J.A. 261–62 (referring to Mon-
roe’s “resilient member”).
Cablz’s failure to brief the issue prior to the IPR oral
hearing caused the Board to not explicitly address Cablz’s
argument that Monroe fails to teach a “resilient” retainer.
Instead, the Board categorized Monroe’s retainer as
resilient based on its reading of the reference: “We un-
derstand that Monroe’s resilient cable/member must in
some way be connected . . . .” Chums, 2016 WL 763054, at
*6 (emphasis added). As a result, we do not have the
benefit of the Board’s informed judgment on the specific
reading of Monroe that Cablz advances on appeal. The
argument is thus waived. See Watts, 354 F.3d at 1368.
2. Substantial Evidence
Notwithstanding the arguments concerning waiver,
we find that the Board’s conclusion that Monroe discloses
a “resilient” retainer is supported by substantial evidence.
Cablz argues that while Monroe may disclose a device
10 CABLZ, INC. v. CHUMS, INC.

that uses a retainer that is sufficiently stiff to retain its
shape, it says nothing about the retainer’s ability to
return to its original shape after being bent.
First, as described above, Cablz referred to Monroe’s
retainer as “resilient.” Second, Monroe describes the
retainer as “so thick and stiff that the only knot it would
take would be big enough to tie up a small ship.” J.A.
416. Third, Mr. Sosin testified that “300-pound mono, you
can’t bend it or keep it down there, it will pop right back
up.” J.A. 987. Fourth, Appellees’ expert concluded that
“the monofilament in Sosin’s eyewear retainer is an
elongated piece of resilient plastic.” J.A. 474. This infor-
mation was all before the Board and sufficient for a
reasonable mind to conclude that Monroe’s retainer is
made from material that both retains its shape and
returns to its original form after being bent. As such, the
Board’s determination is supported by substantial evi-
dence. See Unwired, 841 F.3d at 1003–04.
3. Motivation to Combine
Cablz argues that the Board failed to provide evidence
and reasoning that would support a motivation to com-
bine the prior art references. Cablz argues that the Board
did not explicitly provide a reason to combine the prior art
references, but rather shifted the burden to Cablz to
argue why the references should not have been combined.
We disagree.
We may affirm the Board’s ruling if we reasonably
discern that it followed a proper path, even if that path is
less than perfectly clear. Nuvasive, 842 F.3d at 1383
(citing Bowman Transp., Inc. v. Ark.-Best Freight Sys.,
Inc., 419 U.S. 281, 285–86 (1974)); Ariosa Diagnostics v.
Verinata Health, Inc., 805 F.3d 1359, 1365 (Fed. Cir.
2015).
The Board’s decision provides a reasonably discerna-
ble path for articulating a motivation to combine the prior
CABLZ, INC. v. CHUMS, INC. 11

art. The Board noted initially that Appellees contend that
“one of skilled in the art would have ‘immediately recog-
nized that a simple substitution of the eyewear retainers
of Mackay for the attachment method employed in Mon-
roe would have had various advantages.’” Chums, 2016
WL 763054 at *5. The Board similarly summarized
Appellee’s arguments regarding a motivation to combine
the other prior art references. Id. at *5–6. After analyz-
ing the arguments, the Board concluded that achieving
the ’268 patent’s configuration required only “simple
substitution.” Id. at *11.
The Board also addressed and rejected each of Cablz’s
arguments that there was no motivation to combine the
prior art. First, the Board found no persuasive reason
why the cited combinations “taught away” from the ’268
patent’s invention. Id. at *8. Second, the Board rejected
Cablz’s argument that Mr. Sosin failed to recognize and
solve the “being in the way problem.” Id. at *8–9. Third,
the Board found the age of the references and the fact
that Appellees did not combine the references to create
their own product did not preclude a motivation to com-
bine the prior art. Id. at *9–10. Ultimately, the Board
concluded that Appellees provided “strong evidence of
obviousness.” Id. at *15. Taken together, we may rea-
sonably discern that the Board found a motivation to
combine the references because doing so would have been
a matter of simple substitution that would result in an
eyeglass retainer with certain advantages.
CONCLUSION
We have considered Cablz’s other arguments and do
not find them persuasive. We thus affirm the Board’s
conclusion that claims 1–17 of the ’268 patent are un-
patentable.
AFFIRMED