CAFC discusses nexus in XACTWARE SOLUTIONS, INC. v. EAGLE VIEW TECHNOLOGIES

Of interest in the decision,



The parties spent most of their briefing in these appeals debating
the evidentiary showing required for a patent owner to be given the presumption of nexus as to
evidence it offers to show secondary considerations of nonobviousness.
We do not reach that issue for two reasons.
First, this was not clearly at issue in the parties’ briefing
before the Board. In its Patent Owner Response, Eagle
View Technologies, Inc. (“Eagle View”) argued that a nexus
existed between its secondary considerations evidence and
the patent claims because the relevant products “are the
invention disclosed.” E.g., J.A. 1162. In its Reply,
Xactware merely challenged the credibility of Eagle View’s
expert and argued that the expert’s testimony failed to
demonstrate that the products actually practiced the
claimed inventions. E.g., J.A. 1786–88. The evidentiary
showing necessary to earn the presumption of nexus was
simply not at issue before the Board. Second, substantial
evidence supports the Board’s finding of nexus based on the
limited evidentiary record on this issue.
Appellant raises a few other arguments apart from the
challenge to the Board’s nexus finding. With respect to the
ʼ770 patent, we hold that substantial evidence supports the
Board’s finding that the “moving” and “movement” limitations are not disclosed
in Yair Avrahami, et al., Extraction
of 3D Spatial Polygons Based on the Overlapping Criterion
for Roof Extraction from Aerial Images, International Archives of
Photogrammetry, Remote Sensing and Spatial Information Sciences, August 29–30, 2005 (“Avrahami”). We
also see no error in the Board’s decision not to consider
Xactware’s untimely-raised argument that Avrahami discloses the “moving” and “movement” limitations by the
placement of subsequent seed points after placement of a
first seed point, as well as the addition of segmentations
around each seed point. As to Appellant’s arguments regarding the ʼ152 patent, we see no reversible error in the
Board’s treatment of claims 10, 15, and 25.



Specifically


First, this was not clearly at issue in the parties’ briefing
before the Board. In its Patent Owner Response, Eagle
View Technologies, Inc. (“Eagle View”) argued that a nexus
existed between its secondary considerations evidence and
the patent claims because the relevant products “are the
invention disclosed.” E.g., J.A. 1162. In its Reply,
Xactware merely challenged the credibility of Eagle View’s
expert and argued that the expert’s testimony failed to
demonstrate that the products actually practiced the
claimed inventions. E.g., J.A. 1786–88. The evidentiary
showing necessary to earn the presumption of nexus was
simply not at issue before the Board.



Although the CAFC acknowledged that the parties
disputed facts relating to nexus, the CAFC seems to require a discussion
of the legal requirements for nexus to entertain the appeal [?]