# Yita v. MacNeil: When Commercial Success Cannot Rescue an Obvious Claim

> The Federal Circuit held that secondary-considerations evidence lacks nexus when the feature driving a product's success was already disclosed in the prior art.

Topic: Patents  |  Author: Lidiia Levitska  |  Source: Intellectual Property Law (outsideipcounsel.com)
Canonical: https://outsideipcounsel.com/blog/yita-v-macneil-secondary-considerations-nexus/


*Yita LLC v. MacNeil IP LLC*, 69 F.4th 1356 (Fed. Cir. 2023), decided June 6, 2023, is the Federal Circuit's sharpest modern statement of when objective evidence of nonobviousness cannot save a patent claim. MacNeil, maker of the well-known WeatherTech vehicle floor trays, defended two patents at the Patent Trial and Appeal Board largely on secondary considerations: commercial success, long-felt need, and industry praise. As to claims 1 through 7 of U.S. Patent No. 8,382,186, the Board found that evidence compelling enough to outweigh an otherwise strong obviousness case. The Federal Circuit reversed that ruling, holding that secondary-considerations evidence carries no weight when it relates exclusively to a feature that was already disclosed in the prior art. In a companion appeal from a second review of U.S. Patent No. 8,833,834, the court affirmed a separate ruling in MacNeil's favor on procedural grounds, so the judgment was reversed in part and affirmed in part. The decision is now a leading authority on the nexus requirement and on the limited role of "coextensiveness" in the analysis.

## At a glance

- **Case:** *Yita LLC v. MacNeil IP LLC*, 69 F.4th 1356 (Fed. Cir. 2023) (Nos. 2022-1373, 2022-1374)
- **Court:** United States Court of Appeals for the Federal Circuit
- **Decided:** June 6, 2023; opinion by Judge Taranto, joined by Judges Chen and Stoll
- **Holding:** Objective indicia of nonobviousness lack the required nexus, and cannot overcome a strong prima facie case of obviousness, where the evidence relates exclusively to a feature that was disclosed in the prior art
- **Disposition:** Reversed in part and affirmed in part. The court reversed the Board's judgment in IPR2020-01139 that claims 1 through 7 of the '186 patent were not unpatentable, and affirmed the Board's judgment in IPR2020-01142 that claims 1 through 12 of the '834 patent were not unpatentable
- **Subsequent history:** Certiorari denied December 11, 2023 (*MacNeil IP LLC v. Yita LLC*, No. 23-494)

## The patents and the WeatherTech trays

MacNeil's patents claimed vehicle floor trays: molded liners that sit in the footwell to catch water, mud, and debris. The claimed trays were thermoformed from a polymer sheet of substantially uniform thickness and, critically, were designed to "closely conform" to the walls of the vehicle footwell so that the tray would stay in place once installed. MacNeil marketed trays embodying the claimed invention under the WeatherTech brand, a commercially successful line, and contended that the products were coextensive with the claims.

Yita petitioned for inter partes review of both patents, challenging the claims as obvious over a combination of prior-art references: Rabbe, a French patent publication disclosing a floor mat with raised edges that conform to the vehicle interior; Yung, a published U.S. application for a car mat; and Gruenwald, a thermoforming textbook. In the review of the '186 patent, the Board agreed that a person of ordinary skill would have been motivated to combine the references, with a reasonable expectation of success, to arrive at the claimed trays. Ordinarily that finding points toward unpatentability. But the Board then weighed MacNeil's secondary-considerations evidence and found it strong enough to tip the balance the other way, concluding that Yita had not proved claims 1 through 7 unpatentable. The appeal turned on whether that objective evidence could bear the weight the Board placed on it.

## The nexus requirement

Secondary considerations, also called objective indicia of nonobviousness, are a recognized and important part of the obviousness analysis under 35 U.S.C. Section 103, mandated as part of the framework of *Graham v. John Deere Co.*, 383 U.S. 1 (1966). Commercial success, long-felt but unmet need, failure of others, industry praise, and copying can all show that an invention was not, in fact, obvious to those working in the field. But the evidence counts only if it has a "nexus" to the claimed invention: the success or praise must flow from what the patent actually claims as new, not from features already known, from marketing, or from factors unrelated to the inventive advance. Without nexus, a best-selling product proves market savvy, not nonobviousness.

The Federal Circuit's controlling point in *Yita* is that objective evidence lacks a nexus if it relates exclusively to a feature that was known in the prior art. Two points about that rule carried the case. First, the standard is "known in the prior art," not "well-known": the Board had reasoned that its own finding on the prior art did not establish that close conformance was well known, and the court held that this was the wrong test. Second, the court distinguished *WBIP, LLC v. Kohler Co.*, 829 F.3d 1317 (Fed. Cir. 2016), on which the Board relied. *WBIP* holds that objective evidence may be tied to an inventive combination of known elements rather than to a single new feature, but that reasoning applies only where the combination, and not one feature, is what the evidence responds to. Here the Board itself had found that Rabbe disclosed the close-conformance limitation, and that MacNeil's evidence of commercial success, long-felt need, and industry praise related entirely to that close-conforming fit. On those findings, the secondary-considerations evidence was of no relevance to the obviousness inquiry.

## Coextensiveness bears only on the presumption

A recurring source of confusion in nexus disputes is the doctrine of "coextensiveness." When a patentee shows that the product on which the objective evidence rests is essentially coextensive with the claim, the patentee earns a presumption that the evidence has a nexus to the claimed invention. MacNeil leaned on coextensiveness to argue that its WeatherTech data automatically counted.

The Federal Circuit clarified the limited work coextensiveness does. The coextensiveness inquiry, the court held, bears only on whether the patentee gets the presumption of nexus. It does not decide the overall nexus question. Even with a presumption, or even proving nexus directly, the patentee cannot prevail if the feature responsible for the objective evidence is in the prior art. The presumption is a burden-shifting device, not a substitute for the substantive requirement that the success trace to the inventive contribution. So the "decisive problem for MacNeil," in the court's words, was not the presence or absence of the presumption but the fact that the driving feature was old.

## Why the claims fell

The reversal followed directly. The Board had weighed only one *Graham* factor in favor of nonobviousness: the secondary-considerations evidence. Every other consideration pointed toward obviousness, since the Board itself had found a motivation to combine the references with a reasonable expectation of success. Once the objective evidence was stripped of nexus, nothing remained to offset the prima facie case. The Federal Circuit therefore held that the finding of secondary considerations lacked substantial-evidence support under the proper legal standard, and reversed the Board's judgment on claims 1 through 7 of the '186 patent rather than remanding.

The companion appeal came out the other way, and for reasons that had nothing to do with nexus. Claims 1 through 12 of the '834 patent require the tray to sit within one-eighth of an inch of the foot well walls, and the Board found that no asserted reference disclosed that limitation, so the challenge failed at the prima facie stage and the objective evidence never mattered. Yita's answer, that it would have been obvious to optimize the tray to fit as closely as desired, surfaced only in a footnote of its reply brief. The Board refused to consider it as a new position outside the scope of a proper reply under 37 C.F.R. Section 42.23(b), and the Federal Circuit found no abuse of discretion. The lesson sits alongside the nexus holding: a petitioner is master of its petition, and an unpatentability theory withheld until reply may never be heard.

## Open questions

*Yita* draws a firm rule but leaves room for fact-intensive contests. How finely must a court parse a product's appeal to decide that the "feature driving" success is the prior-art feature rather than the specific claimed combination or the way the known feature was implemented? When a claimed advance is an improved or more effective version of a feature that existed in cruder form in the prior art, can objective evidence attach to the improvement even though the general feature is old? And because the court reversed rather than remanded on the '186 claims, practitioners continue to debate how strong a prima facie case must be before objective evidence, even with nexus, becomes legally incapable of changing the result. MacNeil pressed that reverse-versus-remand point to the Supreme Court, arguing the Federal Circuit had departed from the ordinary remand rule, but certiorari was denied on December 11, 2023. These questions remain live in PTAB and Federal Circuit practice as of July 2026.

## Implications for inventors and businesses

- **Tie your success story to the claimed advance.** Commercial success and praise help only if they flow from the specific feature that distinguishes the claim from the prior art. Build the evidentiary record around that feature, not the product in general.
- **Audit the prior art before relying on objective indicia.** If the feature customers love was already disclosed, secondary considerations will not rescue the claim. Assess that risk before staking a defense on commercial success.
- **Do not over-read coextensiveness.** Showing a product is coextensive with the claim only earns a presumption of nexus. It does not answer whether the success traces to the invention or to old features.
- **Strengthen the intrinsic case.** Because objective evidence can be neutralized on nexus grounds, patentees should not treat it as a substitute for a robust argument that the claimed combination itself was not obvious.

## Frequently asked questions

**What are secondary considerations of nonobviousness?** They are objective indicia that an invention was not obvious, such as commercial success, long-felt but unmet need, industry praise, and copying. To carry weight, they must have a 'nexus' to the specific claimed feature that distinguishes the invention from the prior art.

**Why did MacNeil's evidence fail the nexus test?** The Board itself found that the prior art disclosed the close-conforming fit of the floor tray, and that MacNeil's evidence of commercial success, long-felt need, and industry praise related entirely to that fit. The Federal Circuit held that objective indicia relating exclusively to a feature known in the prior art cannot establish that the claimed combination was nonobvious.

**What did the court say about coextensiveness?** The court clarified that whether a product is 'coextensive' with the claim bears only on whether a presumption of nexus applies. It does not decide the overall nexus question. A patentee can still prove nexus without the presumption, but MacNeil could not, because the relevant feature came from the prior art.

## Authorities and sources

- *Yita LLC v. MacNeil IP LLC*, 69 F.4th 1356 (Fed. Cir. 2023). Precedential opinion via the [U.S. Court of Appeals for the Federal Circuit](https://www.cafc.uscourts.gov/opinions-orders/22-1373.OPINION.6-6-2023_2137962.pdf) (No. 22-1373).
- 35 U.S.C. Section 103 (nonobviousness); *Graham v. John Deere Co.*, 383 U.S. 1 (1966).
- Sterne, Kessler, Goldstein & Fox, ["Yita LLC v. MacNeil IP LLC, 69 F.4th 1356 (Fed. Cir. 2023)"](https://sternekessler.com/news-insights/publications/yita-llc-v-macneil-ip-llc-69-f4th-1356-fed-cir-2023-taranto-chen-stoll).
- Fed Circuit Blog, ["MacNeil IP LLC v. Yita LLC"](https://fedcircuitblog.com/supreme-court/petitions/macneil-ip-llc-v-yita-llc/) (subsequent history).