Earlier in April, the PTAB designated as precedential or informative five decisions relating to what evidence can show that an asserted reference is a printed publication. On April 14, 2020, the PTAB provided more guidance to practitioners by designating three additional decisions as precedential or informative. All three discussed how the Board weighs objective indicia of non-obviousness.
Lectrosonics, Inc. v. Zaxcom, Inc., Case IPR2018-01129, Paper 33 (Jan. 24, 2020) (precedential)
In an inter partes review, the patent owner defended that objective indicia of nonobviousness, including long-felt need, failure of others, and industry praise supported finding the claims not unpatentable. The Board, however, found that the patent owner did not provide an analysis that showed its products were coextensive, or nearly coextensive, with the challenged claims. Accordingly, the Board found no presumption of a nexus between those products and the indicia of nonobviousness.
Because it found no presumption, the Board then considered whether the patented combination as a whole, rather than just the allegedly novel features, might serve as a nexus for the secondary considerations. Even with this redirected inquiry, however, the patent owner was unsuccessful. The Board found that patent owner's proffered secondary considerations evidence was directed to features that were not required by any claim. Thus, the Board found that the patent owner had not successfully demonstrated a nexus between the evidence of non-obviousness it presented and the merits of its claimed invention.
However, the Board granted the patent owner's contingent motion to amend based on secondary considerations, specifically long-felt need and industry praise. Although the patent owner similarly received no presumption of a nexus because it did not provide a coextensivity analysis, the Board found that the patent owner successfully showed that the secondary considerations of long-felt need and industry praise were directed towards the limitations of the claims as amended.
Ex parte Whirlpool Corp., Appeal 2013-008232 (Oct. 30, 2013) (informative)
On appeal from an examiner's rejection in an ex parte reexamination, the patent owner argued both that the examiner had not established a prima facie case of obviousness and that objective secondary considerations existed to support a finding of nonobviousness.
The Board did not agree with the former argument, and instead found that a prima facie obviousness case was established, because the examiner found prior art that when combined included each claimed limitation. The patent owner argued that the prior art taught away from the claimed combination, but the Board found an artisan exercising independent judgment would have been able to adapt the examiner's references to arrive at the claimed invention. And the Board found that just because the reference did not explicitly describe how to make an invention did not, by itself, mean that an artisan would have to engage in undue experimentation, as the patentee argued.
The Board then considered the patent owner's objective evidence of nonobviousness, which included eleven declarations with attached exhibits. Expert witness testimony and a Consumer Reports article both praised the commercial embodiment of the patented feature. An employee of the patentee, who was at the time the commercial embodiment was released was employed at a competitor, testified that his employer at the time began making a similar product in response to the patentee's. Internal documents from the requestor indicated that the requestor itself had put effort into creating a "copycat" product and had identified the challenged patent as "problematic." And sales and market data, showing the patentee's product far outpacing all competitors' products, indicated commercial success.
Although the Board agreed with the examiner that some of patent owner's nonobviousness evidence related to unpatented features, it nonetheless found a nexus existed because the praise also related to the patented features. Strong evidence of commercial success also weighed in the patentee's favor. The Board thus reversed the examiner's rejection.
Ex parte Thompson, Appeal 2011-011620 (Mar. 21, 2014) (informative)
A patent applicant appealed from an examiner's rejection, arguing only that the examiner had not properly weighed its evidence of secondary considerations of nonobviousness, specifically long-felt need and failure of others.
In response to the patentee's secondary considerations, the examiner concluded that the claimed invention was nevertheless obvious because it improved on a known solution, and thus that there would be no long-felt need to satisfy. The Board found "this reasoning somewhat problematic," emphasizing that objective evidence of secondary considerations is independent evidence of nonobviousness; can be particularly probative; and, most importantly, must be considered if presented.
The Board then considered the applicant's evidence of long-felt need, applying a three-pronged test: (1) whether the need was persistent and recognized by ordinarily skilled artisans; (2) whether the need had been satisfied by another before the invention by the applicant; and (3) whether the invention satisfied the need. The Board found the first prong satisfied by expert declarations submitted by the applicant indicating that the problem had existed for at least 25 years before the application was submitted. The second prong was satisfied by expert testimony that the problem continued to persist at the time of the application and that no product on the market at that time addressed the issue. Finally, the third prong was satisfied by expert testimony that the claimed features eliminated the issue in at least some embodiments.
The Board noted that the limited deployment of products practicing the claimed features weighed somewhat against the applicant, but nonetheless found that on balance, the applicant's evidence supported nonobviousness. The Board thus found the examiner erred in rejecting the claims.
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