Horizon Global Americas Inc. v. Northern Stamping Co.

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
HORIZON GLOBAL AMERICAS INC.,
Appellant
v.
NORTHERN STAMPING CO.,
Appellee
______________________
2023-1767
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2021-
01411.
______________________
Decided: January 13, 2025
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STEPHANIE M. HATZIKYRIAKOU, Baker & Hostetler LLP,
Philadelphia, PA, for appellant. Also represented by
BRENDAN E. CLARK, CHRISTINA J. MOSER, Cleveland, OH.
DENNIS J. ABDELNOUR, Honigman LLP, Chicago, IL,
argued for appellee. Also represented by DAVID ROULO,
RON SKLAR.
______________________
Case: 23-1767 Document: 47 Page: 1 Filed: 01/13/2025

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HORIZON GLOBAL AMERICAS INC. v. NORTHERN STAMPING CO. 2
Before LOURIE and HUGHES, Circuit Judges, and GILSTRAP,
Chief District Judge.1
LOURIE, Circuit Judge.
Horizon Global Americas Inc. (“Horizon”) appeals from
a final written decision of the United States Patent and
Trademark Office Patent Trial and Appeal Board (“the
Board”) holding claims 16–20 of U.S. Patent 10,589,585
(“the ’585 patent”) unpatentable as obvious and denying
Horizon’s contingent motion to amend. N. Stamping Co.,
v. Horizon Glob. Ams. Inc., No. IPR2021-04411, (P.T.A.B.
Feb. 9, 2023) (“Decision”), J.A. 1–49. For the reasons
provided below, we affirm.
BACKGROUND
The ’585 patent is directed to a hitch mounting system
that connects a towed vehicle (e.g., a trailer) to the bed of a
towing vehicle (e.g., a pickup truck). In general, there are
two main types of in-bed hitch mounting systems: (1) a
“gooseneck” hitch, where the towing vehicle offers a ball
and the towed vehicle has a tubular coupler that attaches
to the ball, and (2) a “fifth wheel” hitch, where the towing
vehicle offers a receiver plate and the towed vehicle has a
kingpin (i.e., a large pin) that attaches to the plate.
While prior systems could accommodate both
gooseneck and fifth wheel hitches, an adapter was required
to convert between the two. The ’585 patent proposes a
structure that can accommodate both types of hitches
without an adapter. Representative claim 16 recites:
A hitch mounting system comprising:
1 Honorable Rodney Gilstrap, Chief District Judge,
United States District Court for the Eastern District of
Texas, sitting by designation.
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HORIZON GLOBAL AMERICAS INC. v. NORTHERN STAMPING CO. 3
a pair of tubular members each having a cross-
sectional shape a substantial portion of which is
defined by an enclosed peripheral wall with a
generally hollow section;
a mid rail attached to each of and between said pair
of tubular members spacing said pair of tubular
members apart, said mid rail having a socket
capable of accepting a gooseneck hitch ball; and
a pair of receiving members attached with each of
said pair of tubular members, said receiving
members configured to engage a leg of a fifth wheel
hitch.
Id. at col. 8, ll. 8–20. Claims 17–20 are dependent
claims that have not been argued separately, so all
claims stand or fall with the arguments and decision
interpreting claim 16.
Northern Stamping Co. (“Northern Stamping”)
petitioned for inter parties review, arguing that claims 16–
20 of the ’585 patent would have been obvious over U.S.
Patents 6,969,090 (“Works”), 7,121,153 (“Lindenman”), and
6,467,791 (“Fandrich”). Works discloses a gooseneck hitch
system and Lindenman discloses a fifth wheel hitch
system. Decision, J.A. 10–12. Fandrich discloses a fifth
wheel hitch system with tubular cross members and was
asserted as a “backup” to Works’ disclosure of tubular cross
members. Id. at 24. In response, Horizon argued that the
asserted references did not render claim 16 obvious, and
alternatively filed a contingent motion to amend, proposing
substitute claims 21 and 22 which require, in relevant part,
a “mid rail . . . permanently attached to . . . [a] pair of
tubular [cross] members as a one piece assembly.” Id. at
39. In response to the motion to amend, Northern
Stamping argued that the substitute claims were obvious
over U.S. Patent 7,828,317 (“Withers”) and Fandrich.
Withers is directed to a hitch system capable of
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HORIZON GLOBAL AMERICAS INC. v. NORTHERN STAMPING CO. 4
accommodating gooseneck and fifth wheel hitches without
an adapter. Id. at 20.
The Board determined that claims 16–20 had been
shown to be unpatentable. The Board denied Horizon’s
contingent motion to amend, determining that substitute
claims 21 and 22 were also shown to be unpatentable.
Horizon timely appealed. We have jurisdiction under 28
U.S.C. § 1295(a)(4)(A).
DISCUSSION
Obviousness is a question of law based on underlying
facts. Schwendimann v. Neenah, Inc., 82 F.4th 1371, 1380
(Fed. Cir. 2023). We review the Board’s legal conclusion of
obviousness de novo and its findings of fact for substantial
evidence. HTC Corp. v. Cellular Commc’ns Equip., LLC,
877 F.3d 1361, 1369 (Fed. Cir. 2017).
I
The Board found that there was a motivation to
combine Works’ gooseneck hitch system and Lindenman’s
fifth wheel hitch system, rendering claim 16 obvious. The
Board also rejected Horizon’s argument relying on
secondary considerations of non-obviousness. On appeal,
Horizon argues that the Board’s motivation-to-combine
finding was infected by legal errors and not supported by
substantial evidence and that the Board’s secondary
considerations finding was also not supported by
substantial evidence. We address each in turn.
A
Horizon first asserts that the Board’s motivation-to-
combine analysis was legally flawed because the Board
“inappropriately criticized” Horizon’s evidence. Horizon
Br. 30. Therefore, according to Horizon, the Board did not
consider the references from the perspective of a person of
ordinary skill in the art, but rather “substituted its own
reading of the reference[s].” Id. at 29. We disagree. It is
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HORIZON GLOBAL AMERICAS INC. v. NORTHERN STAMPING CO. 5
the Board’s fundamental role to weigh—i.e., criticize—the
evidence and resolve factual disputes. See Roku, Inc. v.
Universal Elecs., Inc., 63 F.4th 1319, 1325 (Fed. Cir. 2023).
Horizon’s second legal challenge is that the Board’s
analysis improperly focused on the “general underlying
idea” of the ’585 patent—“a hitch that could accommodate
both gooseneck and fifth wheel.” Horizon Br. 39. We again
disagree. The Board explained why a person of ordinary
skill in the art would have been motivated to combine the
asserted references, which Horizon does not dispute
disclose each of the challenged limitations, to arrive at the
structure recited in claim 16. Decision, J.A. 18–23.
The last legal challenge Horizon brings is that the
Board reduced Northern Stamping’s burden of proof for
obviousness to a reasonable likelihood of success when the
correct standard was a preponderance of the evidence. We
are unpersuaded. The Board analyzed the evidence before
it, stated the correct standard, and applied it, concluding
that “[Northern Stamping] has shown by a preponderance
of the evidence that the subject matter of claim 16 would
have been obvious.” Id. at 35.
B
Horizon contends that the Board’s motivation-to-
combine finding was not supported by substantial evidence
because although Works does not claim a fifth-wheel hitch
system, only a gooseneck hitch system, it can already
accommodate a fifth wheel hitch system by using an
adapter, and therefore the combination of Works and
Lindenman to meet the limitations of the ’585 patent would
have been redundant. The Board already rejected this
argument, explaining that while Works discloses the
ability to accommodate a “fifth wheel,” Works is not
referencing a fifth wheel hitch system, but rather a hitch
system in general. Decision, J.A. 14. That finding is
consistent with what Works discloses. Works at col. 1, ll.
26–41 (“to allow the trailing vehicle to be connected to a
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HORIZON GLOBAL AMERICAS INC. v. NORTHERN STAMPING CO. 6
fifth wheel type hitch, a ‘gooseneck’ type extension is
utilized”) (emphasis added).
Furthermore, the Board found that even if Works could
accommodate a fifth wheel hitch, a person of ordinary skill
in the art would have been motivated to combine Works
and Lindenman to eliminate the need for an adapter.
Decision, J.A. 14–15. That finding was supported by
substantial evidence because, as explained by the ’585
patent itself, using an adapter to “convert a towing vehicle
to from accommodating a fifth wheel hitch to a gooseneck
hitch or vice versa is time and labor intensive and
inefficient.” ’585 patent col. 1, ll. 32–34.
C
As for Horizon’s secondary considerations argument,
Horizon relied on the commercial success of its hitch
system that had purportedly been incorporated into Ford
(the car company) trucks. But, because Horizon did not
demonstrate that Ford’s hitch system had any connection
to the ’585 patent, the Board found that Horizon had not
established nexus. Decision, J.A. 31–32. That finding was
reasonable. The only evidence Horizon relied on to
demonstrate that the hitch system sold by Ford embodied
the ’585 patent were drawings depicting how the ’585
patent’s hitch system could potentially be incorporated into
Ford’s trucks; there was no evidence demonstrating that
Ford trucks actually did incorporate the ’585 patent. Id.
II
The Board last found that a person of ordinary skill in
the art would have been motivated to combine Fandrich
and Withers, rendering proposed substitute claims 21 and
22 obvious, and therefore denied Horizon’s motion to
amend.
As noted, substitute claims 21 and 22 added a
limitation which requires a “mid rail . . . permanently
attached to . . . [the] pair of tubular [cross] members as a
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HORIZON GLOBAL AMERICAS INC. v. NORTHERN STAMPING CO. 7
one piece assembly.” Horizon’s sole challenge as to
proposed claims 21 and 22 is that substantial evidence does
not support the Board’s finding that a person of ordinary
skill in the art would have been motivated to combine
Wither’s cross members with Fandrich’s tubular shape.
Once again, we disagree. Northern Stamping’s expert
testified that Fandrich’s tubular shape and its advantages
in this context were well known such that its incorporation
with Withers’ cross members would have been obvious to
try. J.A. 4493–94. The Board’s finding was accordingly
supported by substantial evidence.
CONCLUSION
We have considered Horizon’s remaining arguments
and find them unpersuasive. For the foregoing reasons, we
affirm the decision of the Board.
AFFIRMED
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