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Does commercial success affect an invention’s obviousness?

Cantor Colburn Year End 2023 IP Newsletter

Federal patent law prohibits the patenting of inventions that are obvious. While prior art such as earlier patents are often cited as evidence of obviousness, so-called “secondary-consideration” evidence can sometimes support a finding of nonobviousness even in the face of prior art — but not always. A recent ruling by the U.S. Court of Appeals for the Federal Circuit illustrates the role of secondary considerations.

Secondary considerations drive PTAB ruling

MacNeil IP LLC holds a patent related to vehicle floor trays designed to closely conform to the walls of the vehicle footwell, so they stay in place. Yita LLC challenged the patent’s validity on obviousness grounds. On inter partes reviews (IPRs) of the patent, the Patent Trial and Appeal Board (PTAB) held that the patented invention wasn’t obvious.

Although the board found that someone skilled in the relevant field would have been motivated, with a reasonable expectation of success, to combine prior art references in earlier patents to arrive at the invention, it nonetheless rejected Yita’s challenge. It concluded that the secondary-consideration evidence — the invention’s commercial success, that it solved a long-felt but unsolved need and the industry praise it received — was “compelling and indicative of nonobviousness.”

Federal Circuit applies the brakes

Yita appealed, arguing that the PTAB erred in its analysis of the secondary-consideration evidence. The appeals court agreed.

To be relevant to an obviousness inquiry, a secondary consideration must have a legally and factually sufficient connection, or nexus, to the claimed invention. The court has previously ruled that a secondary consideration falls short of this requirement if it exclusively relates to a feature (here, close conformance with a footwell) that was “known in the prior art.” However, the PTAB found that the nexus requirement was satisfied because the close conformance feature wasn’t well known in the prior art. This higher standard, the Federal Circuit said, was legally incorrect.

The court also found that the board erred in its interpretation of case law stating that the claimed inventive combination as a whole provides the nexus for secondary considerations. The court clarified that this statement applies only when the secondary-consideration evidence is related to an inventive combination of known elements — it doesn’t apply when the evidence is related solely to an individual feature that’s in the prior art.

The PTAB properly found that the secondary-consideration evidence here related entirely to the close conformance feature disclosed in the prior art. Therefore, it was irrelevant to the obviousness inquiry.

Put it in reverse

The Federal Circuit concluded that the PTAB’s finding of nexus rested on legal errors. Once those were corrected, the finding wasn’t supported by substantial evidence, so the court determined that the patent claims were obvious and reversed the board.

© 2023


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