An invention that would have been obvious to a person of ordinary skill at the time of the invention is not patentable. To determine obviousness, secondary considerations (also known as objective indicia of obviousness) are part of the factors considered. Courts have considered the following secondary considerations in determining whether something is non-obvious:
- the invention’s commercial success,
- long felt but unresolved needs,
- the failure of others,
- skepticism by experts,
- praise by others,
- teaching away by others,
- recognition of a problem,
- copying of the invention by competitors, and
- other relevant factors.
In order for the secondary considerations to play a role in the determination of non-obviousness, a nexus between the secondary consideration and the invention must be established before the evidence can be considered in the obviousness analysis. If a nexus is shown, then the strength of the secondary considerations evidence itself will be considered.
In April, the PTAB issued guidance in two decisions, one designated as precedential and one designated as informative, which address the nexus issue in secondary considerations:
Case 1: Lectrosonics, Inc. v. Zaxcom, Inc., Case IPR 2018-00129, Paper No. 33 (P.T.A.B. Jan. 24, 2020) (Precedential)
In a final written decision in an IPR, the Patent Trial and Appeal Board found that Patent Owner did not demonstrate a sufficient nexus between asserted objective indicia of non-obviousness and the challenged claims, but the Board found that Patent Owner’s substitute claims did have a sufficient nexus.
The PTAB set out the following legal framework:
- For objective indicia of non-obviousness to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.
- A patentee is entitled to a presumption of nexus “when the patentee shows that the asserted objective evidence is tied to a specific product and that product ‘embodies the claimed features, and is coextensive with them.’”
- “[T]he purpose of the co-extensiveness requirement is to ensure that nexus is only presumed when the product tied to the evidence of secondary considerations ‘is the invention disclosed and claimed.’”
- However, “[a] finding that a presumption of nexus is inappropriate does not end the inquiry into secondary considerations.” “To the contrary, the patent owner is still afforded an opportunity to prove nexus by showing that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’”
The patent in question discloses a system and method “for recording and processing audio having one or more tracks received from one or more wireless devices operating in either an asynchronous or synchronous mode.” Patent Owner submitted Declarations and evidence of awards for its products and product manuals to show long-felt need, failure of others, and industry praise of the patented invention.
The PTAB indicated that the Patent Owner did not provide an analysis demonstrating that its products are coextensive (or nearly coextensive) with the challenged claims, and thus, a presumption of nexus is inappropriate. The PTAB also indicated that the Patent Owner did not demonstrate a nexus exists between the evidence presented and the merits of the claimed invention because the evidence is directed to an unclaimed feature (the evidence submitted by Patent Owner is directed toward feature of fixing dropouts, which is not required by the claims).
However, for the substitute claims, they are construed as being directed to repairing dropouts by receiving local audio data and “replacing” remotely recorded audio data with the received local audio data. The Patent Owners’ submitted testimony and evidence of awards refers to the prevention of dropouts and lost audio, i.e., the “replacing” limitation recited by the proposed substitute claims. Thus, the PTAB determined that the evidence is probative in establishing that the asserted objective evidence is tied to the invention disclosed in the substitute claims. The PTAB ultimately concluded that the secondary considerations evidence weighed heavily in favor of non-obviousness and determined that the substitute claims were therefore nonobvious.
Case 2: Ex parte Whirlpool Corp., Appeal 2013-008232 (P.T.A.B. Oct. 30, 2013) (Informative)
This case was an appeal from an ex parte reexamination concerning a refrigerator with a freezer compartment containing an ice delivery system mounted on the freezer door (IDI refrigerators). The Examiner rejected some of the reexamined claims as obvious in view of the prior art.
The PTAB upheld the Examiner’s prima facie case of obviousness in view of those references, but reversed the Examiner’s finding that the Patent Owner’s objective evidence of non-obviousness did not have a sufficient nexus with the claims and also found that the evidence of secondary considerations is sufficient to demonstrate non-obviousness of claims.
The objective evidence of non-obviousness consisted of 11 declarations submitted to “establish that commercial embodiments of its invention:
- received industry praise;
- were copied by the Requestor;
- have been commercially successful; and
- met a long-felt but unmet need.”
The Examiner’s position was the Patent Owner has not established a nexus between the secondary-considerations evidence and the claims because “at several places” elements of the IDI refrigerator that received industry praise was either not present in the claim or were an element found in prior art.
The PTAB indicated that:
- For objective evidence of secondary considerations to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.”
- “Where the offered secondary consideration actually results from something other than what is both claimed and novel in the claim, there is no nexus to the merits of the claimed invention.”
- However, even if an invention is praised or commercially successful for reasons other than the claimed invention, a nexus may still exist as long as it can be shown that such praise or success is also due in part to the claimed invention.
The PTAB agreed with the Examiner that some of Patent Owner’s secondary considerations evidence refers to features of the IDI refrigerators not found in claims, but states that the praise was also due to the claimed door-mounted ice bin.
The PTAB also found no lack of nexus because a door-mounted ice bin without an ice maker was known in the prior art. The PTAB indicated that the IDI refrigerator’s novel combination included the combination of an ice maker mounted above a door-mounted ice bin.
Contrary to the Examiner’s finding, the PTAB found the evidence of commercial success persuasive because it explained that a refrigerator marketed in North America containing the prior art’s design, rather than the IDI refrigerator’s design, would not have been commercially successful without the combination of an ice maker mounted above the bin.
III. Take home message
Previously, it seemed that while secondary considerations were occasionally mentioned during prosecution, they had never played a big role in the determination of obviousness. However, these two cases indicate that PTAB appears to be more willing to take secondary considerations into consideration for determination of obviousness.
Practitioners should consider secondary consideration arguments in prosecution, and gather up as much evidence as possible (e.g., long-felt need, failure of others, industry praise, copying, etc.) to support such arguments. Most importantly, however, practitioners need to first make sure a nexus between that evidence and the claimed invention is established, otherwise, the strength of the secondary considerations evidence itself will not even be considered.