Case: 22-1373   Document: 43    Page: 1   Filed: 06/06/2023




   United States Court of Appeals
       for the Federal Circuit
                 ______________________

                      YITA LLC,
                       Appellant

                           v.

                  MACNEIL IP LLC,
                        Appellee
                 ______________________

                  2022-1373, 2022-1374
                 ______________________

     Appeals from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in Nos. IPR2020-
 01139, IPR2020-01142.
                  ______________________

                  Decided: June 6, 2023
                 ______________________

     MARK P. WALTERS, Lowe Graham Jones PLLC, Seattle,
 WA, argued for appellant. Also represented by JASON A.
 FITZSIMMONS, RALPH WILSON POWERS, III, Sterne Kessler
 Goldstein & Fox, PLLC, Washington, DC.

     DAVID G. WILLE, Baker Botts LLP, Dallas, TX, argued
 for appellee. Also represented by CLARKE STAVINOHA,
 CHAD C. WALTERS; MICHAEL HAWES, Houston, TX.
                 ______________________

    Before TARANTO, CHEN, and STOLL, Circuit Judges.
Case: 22-1373     Document: 43      Page: 2      Filed: 06/06/2023




 2                                   YITA LLC   v. MACNEIL IP LLC



 TARANTO, Circuit Judge.
      MacNeil IP LLC is the assignee of two U.S. patents,
 Nos. 8,382,186 and 8,833,834, that were the subject of de-
 cisions by the Patent Trial and Appeal Board in inter
 partes reviews (IPRs) of challenges to all claims of the pa-
 tents on obviousness grounds presented in petitions filed
 by Yita LLC. In IPR 2020-01139, the Board rejected Yita’s
 challenge to all claims (1–7) of the ’186 patent, concluding
 that—although a relevant artisan would have been moti-
 vated to combine, and had a reasonable expectation of suc-
 cess in combining, the teachings of the asserted prior-art
 references to arrive at each challenged claim—“[MacNeil’s]
 evidence of secondary considerations [was] compelling and
 indicative of non-obviousness.” J.A. 81. Yita appeals that
 ruling. In IPR 2020-01142, the Board, while agreeing with
 Yita’s challenge to claims 13–15 of the ’834 patent (a ruling
 that MacNeil does not appeal), rejected Yita’s challenge to
 claims 1–12. Yita appeals that ruling. For the reasons be-
 low, we reverse the Board’s judgment in the ’1139 IPR and
 affirm its judgment in the ’1142 IPR.
                               I
                               A
      The ’186 and ’834 patents share a specification, so for
 simplicity we cite only the specification of the ’186 patent.
 The subject addressed is a “vehicle floor tray . . . ther-
 moformed from a polymer sheet of substantially uniform
 thickness.” ’186 patent, Abstract. The specification ex-
 plains that traditional vehicle “floor mats end up not being
 centered on the area protected”; “pushed up so as to occlude
 the gas, brake, or clutch pedals”; or “bunched up or folded
 over” because “[h]uman beings have a tendency to move
 their feet around” and to “push around the floor mats.” Id.
 col. 1, lines 27, 30–33. “A need therefore persists,” the spec-
 ification adds, “for a floor tray that will have a more exact
 fit to the vehicle foot well” and “that stays in place once it
 is installed.” Id. col. 2, lines 4–7.
Case: 22-1373       Document: 43    Page: 3     Filed: 06/06/2023




 YITA LLC   v. MACNEIL IP LLC                                  3



      The specification describes a way to meet this need by
 creating a floor tray through a process that involves taking
 a digital scan of a vehicle’s foot well, id. col. 16, line 30,
 through col. 17, line 3, then using a thermoform process to
 give a sheet of polymer the shape of that scan, id. col. 17,
 line 20, through col. 18, line 58. The resulting vehicle tray
 “fits the surface” of the vehicle floor well “to an enhanced
 degree of precision.” Id. col. 17, lines 22–23. In claims 1–
 7 of the ’186 patent, the floor tray must “closely conform[]”
 to certain walls of the vehicle foot well, id. col. 19, line 45;
 id. col. 20, line 2, and in claims 1–12 of the ’834 patent,
 portions of the floor tray must be “within one-eighth of an
 inch” of certain walls of the vehicle foot well, ’834 patent,
 col. 20, line 39. 1 Figure 1 illustrates the claimed floor tray.




     The ’186 patent has seven claims, one of which (claim
 1) is independent. The ’834 patent has 15 claims, four of



     1    Claims 13–15 of the ’834 patent require neither
 close conformance nor a maximum separation of one-eighth
 of an inch. See ’834 patent, col. 22, line 56, through col. 24,
 line 19.
Case: 22-1373    Document: 43     Page: 4      Filed: 06/06/2023




 4                                 YITA LLC   v. MACNEIL IP LLC



 which (claims 1, 5, 9, and 13) are independent. Claim 1 of
 each patent is reproduced below.
     1. A vehicle floor tray thermoformed from a sheet
     of thermoplastic polymeric material of substan-
     tially uniform thickness, comprising:
        a central panel substantially conforming to
        a floor of a vehicle foot well, the central
        panel of the floor tray having at least one
        longitudinally disposed lateral side and at
        least one transversely disposed lateral
        side;
        a first panel integrally formed with the cen-
        tral panel of the floor tray, upwardly ex-
        tending from the transversely disposed
        lateral side of the central panel of the floor
        tray, and closely conforming to a first foot
        well wall, the first panel of the floor tray
        joined to the central panel of the floor tray
        by a curved transition;
        a second panel integrally formed with the
        central panel of the floor tray and the first
        panel, upwardly extending from the longi-
        tudinally disposed lateral side of the cen-
        tral panel of the floor tray, and closely
        conforming to a second foot well wall, the
        second panel of the floor tray joined to the
        central panel of the floor tray and to the
        first panel of the floor tray by curved tran-
        sitions;
        a reservoir disposed in the central panel of
        the floor tray;
        a plurality of upstanding, hollow, elongate
        baffles disposed in the reservoir, each of the
        baffles having at least two ends remote
        from each other, the central panel, the first
Case: 22-1373       Document: 43    Page: 5     Filed: 06/06/2023




 YITA LLC   v. MACNEIL IP LLC                                 5



         panel, the second panel, the reservoir and
         the baffles each having a thickness from a
         point on the upper surface to a closest point
         on the bottom surface thereof, said thick-
         nesses, as a result of the tray being ther-
         moformed from the sheet of thermoplastic
         polymeric material of substantially uni-
         form thickness, being substantially uni-
         form throughout the tray;
         the baffles each having a width, in any hor-
         izontal direction, of more than two times its
         thickness, the baffles adapted to elevate
         the shoe or foot of the occupant above fluid
         collected in the reservoir, and further
         adapted to impede lateral movement, in-
         duced by a change in vehicle speed or direc-
         tion, of fluid collected in the reservoir, any
         portion of the reservoir connected to a re-
         mote portion of the reservoir by a path
         formed around ends of the baffles.
 ’186 patent, col. 19, line 35, through col. 20, line 24.
     1. A system including a vehicle and a floor tray for
     consumer installation into a predetermined foot
     well of the vehicle, the system comprising:
         a vehicle foot well having a floor, a substan-
         tially longitudinally disposed first foot well
         wall upstanding from the floor, a substan-
         tially transversely disposed second foot
         well wall upstanding from the floor and
         joined to the first foot well wall, a substan-
         tially longitudinally disposed third foot
         well wall upstanding from the floor and
         joined to the second foot well wall; and
         a vehicle floor tray molded from a sheet of
         polymeric material of substantially
Case: 22-1373     Document: 43       Page: 6     Filed: 06/06/2023




 6                                   YITA LLC   v. MACNEIL IP LLC



         uniform thickness, a central panel of the
         tray substantially conforming to the floor of
         the vehicle foot well, a substantially longi-
         tudinally disposed first tray wall joined to
         the central panel by a curved transition
         and standing up from the central panel to
         substantially conform to the first foot well
         wall, a substantially transversely disposed
         second tray wall joined to the central panel
         and to the first tray wall by respective
         curved transitions and standing up from
         the central panel, the second tray wall sub-
         stantially conforming to the second foot
         well wall, a substantially longitudinally
         disposed third tray wall joined to the cen-
         tral panel and to the second tray wall by
         respective curved transitions and standing
         up from the central panel, the central panel
         and first, second and third tray walls each
         having an outer surface facing the vehicle
         foot well and an inner surface opposed to
         the outer surface, a thickness of the central
         panel and of the, first, second and third
         tray walls measured between the outer sur-
         face and the inner surface thereof being
         substantially uniform throughout the tray;
         at least 90 percent of that one-third of the
         outer surfaces of the first, second and third
         tray walls which are closest to the respec-
         tive top margins of the first, second or third
         tray walls being within one-eighth of an
         inch of the respective foot well walls.
 ’834 patent, col. 20, lines 4–40.
                               B
    On June 30, 2020, Yita petitioned for IPRs of the ’186
 and ’834 patents, challenging all claims of each patent. The
Case: 22-1373       Document: 43    Page: 7     Filed: 06/06/2023




 YITA LLC   v. MACNEIL IP LLC                                  7



 Board, acting for the Director of the Patent and Trademark
 Office, instituted both IPRs on January 13, 2021—IPR
 2020-01139 for the ’186 patent and IPR 2020-01142 for the
 ’834 patent. The Board issued its final written decisions in
 both IPRs on January 3, 2022.
                                1
        In its final written decision in the ’1139 IPR, the Board
 held claims 1–7 of the ’186 patent not unpatentable for ob-
 viousness. The Board first determined that a relevant ar-
 tisan would have been motivated to combine, and had a
 reasonable expectation of success in combining, the teach-
 ings of three asserted prior-art references—Rabbe, Yung,
 and Gruenwald—to arrive at claims 1–7. J.A. 13–71.
 Rabbe, titled “[p]rotective tray for vehicle interiors,” is a
 French patent publication (No. 2,547,252), which (in the
 English translation used here) discloses “floor mats with
 raised edges, forming a tray and providing effective protec-
 tion of the floors and side walls of vehicle interiors.” J.A.
 1729. The sides of Rabbe’s floor mat “perfectly conform to
 the contour of the vehicle interior.” J.A. 1730. Critically,
 the Board found that “Rabbe discloses the close conform-
 ance limitation in claim 1” of the ’186 patent. J.A. 39–40.
 Yung, titled “mat used in cars,” is a U.S. patent application
 publication (Publication No. 2002/0045029 of Application
 No. 09/903,202), which describes a vehicle floor mat with a
 middle plastic layer that is “flexible, light weight, and wa-
 terproof Polyethylene . . . or Polyethylene–Vinyl Acetate
 . . . foam.” J.A. 1748, 1753 ¶ 11. Gruenwald is a book titled
 Thermoforming: A Plastics Processing Guide, which recites
 methods of thermoforming. J.A. 1755.
     Notwithstanding its determination about motivation to
 combine and expectation of success in combining the prior-
 art references to arrive at the inventions claimed in the
 ’186 patent, the Board rejected Yita’s obviousness chal-
 lenge because, the Board concluded, MacNeil’s “evidence of
 secondary considerations [was] compelling and indicative
Case: 22-1373    Document: 43      Page: 8      Filed: 06/06/2023




 8                                  YITA LLC   v. MACNEIL IP LLC



 of non-obviousness.” J.A. 81. “In order . . . to accord sub-
 stantial weight to secondary considerations,” the Board
 recognized, “there must be a ‘legally and factually suffi-
 cient connection’”—i.e., a nexus—“between the evidence
 and the patented invention.” J.A. 72–73 (quoting Fox Fac-
 tory, Inc. v. SRAM, LLC, 

, 1373 (Fed. Cir.
 2019)). And “if the marketed product embodies the claimed
 features, and is coextensive with them, then a nexus is pre-
 sumed.” Brown & Williamson Tobacco Corp. v. Philip Mor-
 ris Inc., 

 (Fed. Cir. 2000). The Board
 found that MacNeil was entitled to a presumption of nexus,
 J.A. 75, because the Board found that MacNeil’s marketed
 “WeatherTech[] vehicle trays embody the claimed inven-
 tion and are coextensive with the claims,” J.A. 73–74. Mac-
 Neil’s successful coextensiveness contention necessarily
 treated as insignificant any difference between close con-
 formance of the tray with the foot well overall and close
 conformance of the tray with the walls of the foot well re-
 cited in claim 1.
     The Board recognized that, earlier in its opinion, it had
 already found that “Rabbe discloses the close conformance
 limitation,” J.A. 39–40, but it found a presumption of nexus
 nonetheless, J.A. 74–75. The Board stated that its earlier
 finding “does not establish that close conformance was
 well-known as [Yita] contends.” J.A. 75 (emphasis added).
 And the Board stated, relying on WBIP, LLC v. Kohler Co.,
 

 (Fed. Cir. 2016), that “[t]he Federal Circuit
 instructs that ‘it is the claimed combination as a whole that
 serves as a nexus for objective evidence; proof of nexus is
 not limited to only when objective evidence is tied to the
 supposedly “new” feature(s).’” J.A. 75 (quoting WBIP, 

).
     The Board then discussed three secondary considera-
 tions—commercial success, long-felt but unsolved need,
Case: 22-1373       Document: 43    Page: 9     Filed: 06/06/2023




 YITA LLC   v. MACNEIL IP LLC                                  9



 and industry praise. 2 It found that “the evidence of [each
 consideration was] due to the close conforming vehicle floor
 tray,” and—presumably because it already dismissed that
 fact because close conformance was not “well-known”—it
 concluded that the evidence on those secondary considera-
 tions was “persuasive of non-obviousness.” J.A. 78 (long-
 felt need); J.A. 79 (industry praise); see J.A. 77 (commercial
 success) (same finding with the addition of one modifier:
 “strongly persuasive of non-obviousness” (emphasis
 added)). Giving “substantial weight” to the “evidence of
 secondary considerations,” the Board held claims 1–7 of the
 ’186 patent not unpatentable. J.A. 81.
                                2
      In its final written decision in the ’1142 IPR, the Board
 held claims 13–15 of the ’834 patent unpatentable for obvi-
 ousness. Although MacNeil has not appealed that ruling,
 it is worth noting that, in reaching that conclusion, the
 Board found unpersuasive MacNeil’s secondary-considera-
 tion evidence—which Yita asserted at oral argument in
 this court, without dispute from MacNeil, was identical to
 the secondary-consideration evidence in the ’1139 IPR. See
 Oral Arg. at 8:55–9:03 (counsel for Yita stating: “It is im-
 portant to note that the . . . evidence on secondary consid-
 erations was identical for . . . both IPRs.”). That evidence,
 the Board found, “focuse[d] on the close conformity of the
 tray to the vehicle foot well, features that are not recited in
 claims 13–15.” J.A. 136; see also J.A. 137 (“[T]he long-felt
 need demonstrated by [MacNeil’s] evidence relates entirely
 to the closely-conforming floor tray . . . .”); J.A. 138 (“[T]he


     2   The Board also discussed two other secondary con-
 siderations, competitor licenses and failure of others, but
 found that the competitor-licenses evidence did not weigh
 in favor of nonobviousness and that the failure-of-others
 argument was untimely raised. MacNeil appears not to
 challenge those two findings on appeal.
Case: 22-1373     Document: 43       Page: 10      Filed: 06/06/2023




 10                                    YITA LLC   v. MACNEIL IP LLC



 evidence of commercial success of the WeatherTech floor
 trays leads us to find that the commercial success is due to
 the close-conformity of the trays in the foot well . . . .”); J.A.
 139 (“[T]he industry praise of the WeatherTech floor trays
 is due to the close-conformity of the trays in the foot well
 . . . .”).
      With respect to claims 1–12, the Board rejected Yita’s
 challenge at the prima-facie stage of analysis. Specifically,
 it found that the one-eighth-inch limitation of claims 1–12
 was not disclosed by any of the asserted prior-art refer-
 ences. In relying on that finding to hold the prima-facie
 case unpersuasive (making secondary-consideration evi-
 dence immaterial for these claims), the Board declined to
 consider an argument that Yita raised in a footnote in its
 reply brief. J.A. 154–55, 157–58. That footnote, which ap-
 pears in a section addressing what “Rabbe . . . disclose[s],”
 J.A. 14784, reads: “MacNeil has not established any criti-
 cality to the 1/8 inch tolerance limitations in claims 1, 5,
 and 9, and it would have been obvious to optimize the tray
 to fit as closely as desired,” J.A. 14786 (citing J.A. 15517
 ¶ 163; J.A. 3918 ¶ 24). Finding that Yita’s petition “does
 not reason that it would have been obvious to modify
 Rabbe’s floor tray to meet the conformance limitations,”
 J.A. 154, the Board declined to consider Yita’s reply–foot-
 note position because it was a “new position” and “outside
 the scope of a proper reply under [37 C.F.R. §] 42.23(b),”
 J.A. 155; see also J.A. 158.
     Yita timely appealed from both final written decisions
 on January 14, 2022, within the 63 days allowed by 

(a)(1). We have jurisdiction under 

(a)(4)(A).
                                II
     For a claimed invention to be patentable, the differ-
 ences between it and the prior art must be such that a rel-
 evant artisan at the priority date would not have found the
 claimed subject matter as a whole obvious. 35 U.S.C.
Case: 22-1373      Document: 43   Page: 11    Filed: 06/06/2023




 YITA LLC   v. MACNEIL IP LLC                              11



 § 103(a) (2011). 3 “Obviousness is a question of law based
 on underlying facts, including the scope and content of the
 prior art, differences between the prior art and the claims
 at issue, the level of ordinary skill, and relevant evidence
 of secondary considerations.” Henny Penny Corp. v. Fry-
 master LLC, 

 (Fed. Cir. 2019) (citing
 Graham v. John Deere Co., 

, 17–18 (1966)); see
 KSR International Co. v. Teleflex Inc., 

, 406–
 07, 427 (2007); Intercontinental Great Brands LLC v. Kel-
 logg North America Co., 

, 1343–44, 1347
 (Fed. Cir. 2017).       Secondary considerations include
 whether the claimed invention has been commercially suc-
 cessful, whether it solved a long-felt but unsolved need in
 the art, and whether the relevant industry praised it. See
 Graham, 383 U.S. at 17–18. To be relevant, such a second-
 ary consideration must have a “legally and factually suffi-
 cient connection” (nexus) to the claimed invention. Fox
 Factory, 944 F.3d at 1373. A nexus is presumed when a
 commercial product (if relevantly successful, for example)
 “is the invention disclosed and claimed in the patent.” Im-
 munex Corp. v. Sandoz Inc., 

 (Fed. Cir.
 2020) (quoting WBIP, 

).
    We review the Board’s legal determinations de novo
 and the Board’s factual findings for substantial-evidence
 support. See Henny Penny, 

. “A finding is
 supported by substantial evidence if a reasonable mind



     3   The parties do not dispute that, as the Board con-
 cluded, the version of § 103 that applies to the present IPRs
 is the version in force before the amendments made by the
 Leahy–Smith America Invents Act (AIA), Pub. L. No. 112-
 29, 

 (2011). See J.A. 5 n.5; J.A. 94 n.1. The
 parties have not suggested that the AIA changes make a
 difference here, so § 103 precedents are pertinent whether
 they involved the pre-AIA or post-AIA version of the provi-
 sion.
Case: 22-1373    Document: 43     Page: 12     Filed: 06/06/2023




 12                                YITA LLC   v. MACNEIL IP LLC



 might accept the evidence as adequate to support the find-
 ing.” Id. (citing Consolidated Edison Co. v. National Labor
 Relations Board, 

 (1938)).
     Yita presents two arguments to us. First, Yita argues
 that, in the ’1139 IPR, the Board made a result-determina-
 tive legal error regarding MacNeil’s secondary-considera-
 tion evidence in rejecting Yita’s challenge to claims 1–7 of
 the ’186 patent. Second, Yita argues that, in the ’1142 IPR,
 the Board abused its discretion by not considering Yita’s
 argument raised in a footnote of its reply brief. We agree
 with Yita’s first argument, but we reject its second.
                              A
     In the ’1139 IPR, the Board rejected the obviousness
 challenge to claims 1–7 of the ’186 patent—despite deter-
 mining that a relevant artisan would have been motivated
 with a reasonable expectation of success to combine the
 teachings of Rabbe, Yung, and Gruenwald to arrive at the
 claimed inventions—solely because it found MacNeil’s sec-
 ondary-consideration evidence “compelling.” J.A. 81. The
 Board’s finding of nexus, however, rests on legal errors,
 and once those errors are corrected, the finding is not sup-
 ported by substantial evidence. The Board’s judgment that
 claims 1–7 of the ’186 patent are not unpatentable must
 therefore be reversed.
     After accepting the relevancy of MacNeil’s secondary-
 consideration evidence by finding a presumption of nexus,
 the Board reasoned that its finding that “Rabbe discloses
 the close conformance limitation in claim 1” of the ’186 pa-
 tent, J.A. 39–40, did not undermine any determination of
 nexus to the claimed invention. The Board offered what
 can be viewed as two reasons. But both are legally incor-
 rect.
     First, the Board stated that its finding regarding
 Rabbe’s disclosure “does not establish that close conform-
 ance was well-known as [Yita] contends.”           J.A. 75
Case: 22-1373      Document: 43    Page: 13    Filed: 06/06/2023




 YITA LLC   v. MACNEIL IP 

 (emphasis added). But our case law makes clear that “ob-
 jective evidence of nonobviousness lacks a nexus if it exclu-
 sively relates to a feature that was ‘known in the prior
 art’”—not necessarily well-known. Rambus Inc. v. Rea, 

 (Fed. Cir. 2013) (emphasis added) (quoting
 Ormco Corp. v. Align Technology, Inc., 

 (Fed. Cir. 2006)); see also Ethicon Endo-Surgery, Inc. v.
 Covidien LP, 

 (Fed. Cir. 2016) (“[I]f the
 feature that creates the commercial success was known in
 the prior art, the success is not pertinent.” (quoting Ormco,
 

)). Where prior art teaches a feature and
 a relevant artisan would have been motivated to use it in
 combination with other prior-art teachings with a reason-
 able expectation of success to arrive at the claimed inven-
 tion—as the Board here found—a secondary consideration
 related exclusively to that feature does not logically under-
 mine the inference from those premises that the claimed
 invention would have been obvious from the full body of
 prior art just because the feature was not well known.
      Second, the Board, citing WBIP, stated that “[t]he Fed-
 eral Circuit instructs that ‘it is the claimed combination as
 a whole that serves as a nexus for objective evidence; proof
 of nexus is not limited to only when objective evidence is
 tied to the supposedly “new” feature(s).’” J.A. 75 (quoting
 and citing WBIP, 

). But in WBIP we rec-
 ognized that secondary-consideration evidence “may be
 linked to an individual element” of the claimed invention
 or “to the inventive combination of known elements” in the
 prior art. 

. It was for the latter circum-
 stance, which was the circumstance present in WBIP, that
 this court in WBIP made the point relied on by the Board
 here. But that rationale, applicable when no single feature
 (but only the combination) is responsible for the secondary-
 consideration evidence, does not undermine our case law,
 just discussed, denying force to a secondary consideration
 that is exclusively related to a single feature that is in the
 prior art.
Case: 22-1373    Document: 43     Page: 14      Filed: 06/06/2023




 14                                 YITA LLC   v. MACNEIL IP LLC



      That is this case. The Board found that MacNeil’s sec-
 ondary-consideration evidence “relate[d] entirely” to the
 close-conformance limitation disclosed in the prior art. J.A.
 137; see also J.A. 137–39 (finding that the evidence of com-
 mercial success and industry praise “is due to the close-con-
 formity of the trays in the foot well”). And that finding is
 supported by substantial evidence. See, e.g., J.A. 1097
 (MacNeil arguing in sur-reply that its witness, Weather-
 Tech’s Vice President of Product Development, “testified
 that customers are willing to pay a premium for Weather-
 Tech’s trays primarily due to their fit in the vehicle, even
 as he acknowledged that marketing could also contribute”
 (citing J.A. 9051 ¶¶ 77–78; J.A. 4583, lines 11–16)); J.A.
 9056 ¶¶ 83–84 (WeatherTech’s Vice President of Product
 Development stating that “[c]onsumer reviews often point
 out the closeness of fit as the salient characteristic of the
 part, or as the reason for purchase” and that “[t]he biggest
 reason for the WeatherTech FloorLiner’s commercial suc-
 cess, based on the feedback received over the years, is that
 they ‘fit’ the foot wells for which they were custom-de-
 signed, to a degree not achieved by competitors”). 4 Thus,


      4   We note in particular that the Board found Mac-
 Neil’s evidence of industry praise to be “relate[d] specifi-
 cally to the ‘close conformance’ [feature],” J.A. 139 (citing
 J.A. 9220 ¶ 171), and that in this court MacNeil does not
 challenge, but rather expressly defends, the Board’s find-
 ing regarding industry praise, MacNeil’s Response Br. at
 71–73. The absence of a challenge to that finding is hardly
 surprising, because, while MacNeil refers to one article in
 the record that mentions other features as well, 

 at 72
 (citing J.A. 9892–93), the Board was not required to deem
 that article significant within the full record on industry
 praise. Nor, in any event, would this one article be entitled
 to significant weight in the overall legal weighing of the
 prior-art and secondary-consideration findings and evi-
 dence.
Case: 22-1373      Document: 43     Page: 15   Filed: 06/06/2023




 YITA LLC   v. MACNEIL IP LLC                              15



 the Board’s own findings, in light of the proper application
 of our precedent, compel the conclusion that MacNeil’s sec-
 ondary-consideration evidence is of no relevance to the ob-
 viousness inquiry in this case.
     The Board’s finding that the WeatherTech floor tray is
 coextensive with the claimed invention does not alter the
 result. The coextensiveness inquiry bears only on the pre-
 sumption of nexus; it does not decide the overall nexus
 question. And the presumption inquiry compares only the
 claim with the commercial product. It does not involve the
 connection between the commercial product and prior art,
 which governs the final nexus question and here is the de-
 cisive problem for MacNeil.
     In sum, the secondary-consideration evidence was the
 only Graham factor that the Board deemed to weigh in fa-
 vor of nonobviousness. For the reasons that we have ex-
 plained, the finding of secondary considerations lacks
 substantial-evidence support under the proper legal stand-
 ard. Because the Board determined that a relevant artisan
 would have been motivated to combine the teachings of
 Rabbe, Yung, and Gruenwald to arrive at claims 1–7 of the
 ’186 patent with a reasonable expectation of success, the
 Board’s judgment that those claims are not unpatentable
 for obviousness must be reversed.
                                B
     Yita’s second argument on appeal concerns the Board’s
 rejection of its challenge to claims 1–12 of the ’834 patent
 in the ’1142 IPR. Yita contends that the Board abused its
 discretion by declining to consider Yita’s argument about
 modifying the teaching of Rabbe, an argument that the
 Board declined to consider because it was presented too
 late—in a footnote in Yita’s reply brief. We see no abuse of
 discretion by the Board.
     The Board’s rules of practice provide: “A reply may only
 respond to arguments raised in the corresponding
Case: 22-1373     Document: 43      Page: 16     Filed: 06/06/2023




 16                                  YITA LLC   v. MACNEIL IP LLC



 opposition, patent owner preliminary response, patent
 owner response, or decision on institution.” 

(b). This regulation means that an “IPR petitioner
 may not raise in reply ‘an entirely new rationale,’” Henny
 Penny, 938 F.3d at 1330–31 (quoting Intelligent Bio-Sys-
 tems, Inc. v. Illumina Cambridge Ltd., 

 (Fed. Cir. 2016)), not “raised in its petition” or “responsive
 to arguments raised in the patent owner’s response brief,”
 Apple Inc. v. Andrea Electronics Corp., 

, 706
 (Fed. Cir. 2020). The regulation “reflects . . . efficiency and
 fairness interests,” Ariosa Diagnostics v. Verinata Health,
 Inc., 

 (Fed. Cir. 2015), and flows from
 the statutory “requirement that the initial petition identify
 ‘with particularity’ . . . ‘the grounds for the challenge to
 each claim,’” Intelligent Bio-Systems, 

 (quoting 

(a)(3)).
     The Board “must make [the] judgment[] about . . .
 when a [r]eply contention crosses the line from the respon-
 sive to the new,” Ariosa Diagnostics, 805 F.3d at 1368—a
 judgment that we review for abuse of discretion, Henny
 Penny, 

 (citing Intelligent Bio-Systems, 

). “The Board abuses its discretion if its deci-
 sion: ‘(1) is clearly unreasonable, arbitrary, or fanciful; (2)
 is based on an erroneous conclusion of law; (3) rests on
 clearly erroneous fact finding; or (4) involves a record that
 contains no evidence on which the Board could rationally
 base its decision.’” Henny Penny, 

 (quoting
 Intelligent Bio-Systems, 

).
      Yita contends that the argument raised in a footnote of
 its reply brief before the Board—that “it would have been
 obvious to optimize the tray to fit as closely as desired,” J.A.
 14786 n.4 (citing J.A. 15517 ¶ 163; J.A. 3918 ¶ 24)—was
 not a new, untimely argument because “Yita raised the ar-
 gument in its [p]etition,” Yita’s Opening Br. at 44. Yita di-
 rects us to passages of its petition that, Yita says, anchor
 its reply argument to those made in its petition. The first
 such passage, which appears in a section of Yita’s petition
Case: 22-1373      Document: 43    Page: 17    Filed: 06/06/2023




 YITA LLC   v. MACNEIL IP LLC                               17



 that overarchingly argues that “Rabbe . . . discloses [limi-
 tation] 1[h],” J.A. 14229 (second bracketing in original),
 reads: “Rabbe discloses, or at least suggests, having at least
 90 percent of the one-third of the outer surfaces of the tray
 walls closest to the top margins being within one-eighth of
 an inch of the respective foot well walls,” J.A. 14230. An-
 other passage reads: “[A relevant artisan] would have been
 able to make molds for different vehicle interiors (or differ-
 ent areas of a vehicle’s interior) and adjust the mold-mak-
 ing process to achieve even greater conformity with the
 vehicle interior.” J.A. 14237.
      We have repeatedly held that the Board acts within its
 discretion when it declines under section 42.23(b) to con-
 sider a new theory of unpatentability raised for the first
 time in reply. See, e.g., Intelligent Bio-Systems, 821 F.3d
 at 1369–70; Ariosa Diagnostics, 805 F.3d at 1367–68. Most
 notably for the present case, in Intelligent Bio-Systems, we
 affirmed the Board’s decision not to consider an argument
 made on reply because in the original petition the chal-
 lenger argued only that a reference disclosed a limitation
 (“Zavgorodny teaches the desired property . . . that the az-
 idomethyl group ‘can be removed under very specific and
 mild conditions.’”), while in the reply the challenger argued
 that a relevant artisan would have considered it obvious to
 modify that reference to arrive at the limitation (“[A]n or-
 dinary artisan would have considered it obvious to use
 deprotecting conditions other than those described in
 Zavgorodny.”). 

 (emphasis omitted). The
 present case is sufficiently similar to Intelligent Bio-Sys-
 tems that we cannot say that the Board abused its discre-
 tion in its ruling here.
     Like the petitioner in Intelligent Bio-Systems, Yita
 waited until its reply to present what in substance is an
 argument that it would have been obvious to a relevant ar-
 tisan to modify Rabbe to arrive at the one-eighth limita-
 tion.   This argument was a “meaningfully distinct
 contention,” Ariosa Diagnostics, 

, from
Case: 22-1373     Document: 43      Page: 18     Filed: 06/06/2023




 18                                  YITA LLC   v. MACNEIL IP LLC



 those made in Yita’s petition, which focused (for the claim
 limitation at issue) only on what Rabbe discloses. Nor was
 Yita’s new theory within “the scope of a proper reply” to
 any argument that MacNeil made in its patent owner re-
 sponse. Intelligent Bio-Systems, 

. Yita
 points us to passages in MacNeil’s response brief before the
 Board, but in the cited passages MacNeil argued only about
 what Rabbe teaches—not what a relevant artisan would
 have found obvious to modify. See J.A. 14499–500 (Mac-
 Neil arguing in its patent owner response: “Rabbe does not
 teach ‘substantially conforming’ first and second tray walls
 ‘being within one-eighth of an inch’ as required by [the]
 [c]laims.”).
     Yita, as the “master of its complaint,” could have “pre-
 sent[ed] [its reply] argument in its petition[] but chose not
 to.” Acceleration Bay, LLC v. Activision Blizzard Inc., 

 (Fed. Cir. 2018) (quoting SAS Institute, Inc.
 v. Iancu, 

 (2018)). And the patent
 owner’s response did not justify the new argument in reply.
 We thus see no abuse of discretion in the Board’s decision
 not to consider the new argument.
                              III
     For the foregoing reasons, we reverse the Board’s judg-
 ment in the ’1139 IPR holding claims 1–7 of the ’186 patent
 not unpatentable, and we affirm the Board’s judgment in
 the ’1142 IPR holding claims 1–12 of the ’834 patent not
 unpatentable.
      No costs.
   REVERSED IN PART AND AFFIRMED IN PART