PTAB Captains Take Discover: Rigorously Weigh Secondary Issues

By Dennis Crouch

The nexus requirement serves as a threshold that have to be met earlier than secondary indicia might be even thought of as related to the obviousness inquiry.  In its current Volva Penta choice, the Federal Circuit discovered that the PTAB had  (1) created too excessive of a burden to show nexus and (2) been unduly dismissive of the patentee’s proof of business success and copying.  The case reinforces the notion that patentees ought to try to incorporate some claims which are largely coexistive with its product line, particularly in immediately’s world of possible copying. The case additionally serves as a reminder that product copying nonetheless caries important weight within the obviousness evaluation. Volvo Penta of the Americas, LLC v. Brunswick Corp., 22-1765, — F.4th — (Fed. Cir. August 24, 2022).

For a number of years, Volvo Penta has been promoting a ship engine drive the place the propellers are ahead going through and thus tucked underneath the boat. The setup, referred to as a tractor-type stern drive, pulls the boat ahead somewhat than conventional rear-facing propellers that push.  The drive has been a business success, particularly for boats with close by swimmers as a result of the ahead going through propellers supply potential security benefit.

In 2020, Brunswick launched a competing product underneath its Mercury model and, on the identical day as its product launch additionally filed an IPR petition difficult Volvo’s US Patent 9,630,692.  The PTAB granted the petition and in the end sided with the petitioner by holding that the claims would have been apparent based mostly upon a mix of the prior artwork references.   On enchantment, nonetheless, the Federal Circuit has vacated and remanded–ordering the PTAB to take a contemporary take a look at the secondary indicia of nonobviousness similar to business success and copying.

Obviousness evaluation primarily focuses on evaluating the claimed invention in opposition to the prior artwork and utilizing that consideration to guess whether or not the hole would have been apparent to fill on the time of the invention.  However, the

Obviousness evaluation primarily focuses on evaluating the claimed invention in opposition to the prior artwork and utilizing that consideration to guess whether or not the hole would have been apparent to fill on the time of the invention. However, the evaluation shouldn’t finish there. Secondary indicia of nonobviousness, additionally known as goal proof, present real-world, albeit oblique insights into the obviousness dedication. Proof of business success, long-felt however unsolved want, failure of others, business reward, and copying can point out that an invention was not apparent to these expert within the artwork on the time, even when it seems so in hindsight. Whereas secondary concerns don’t management the obviousness conclusion, they have to be thought of as a part of the totality of the proof when offered by the patentee.  At instances, the target proof is taken into account the most probative and cogent proof of nonobviousness.

In recent times, the courts and patent workplace have been proscribing using goal proof of nonobviousness by making use of a decent nexus requirement.  Earlier than the proof is given any consideration, the patentee should present a nexus between the invention as claimed and the target proof of nonobviousness.  This nexus requirement is designed to make sure, as an illustration, that business success is because of qualities of the invention being patented somewhat than another advance or maybe merely advertising and marketing.  Nexus will be established through a presumption when the proof is tied to a product that embodies and is coextensive with the claims. Brown & Williamson Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120 (Fed. Cir. 2000). Even and not using a presumption, nexus will be proven by tying the proof to the “distinctive traits of the claimed invention.” Fox Manufacturing facility, Inc. v. SRAM, LLC, 944 F.3d 1366 (Fed. Cir. 2019). The patent proprietor bears the burden of building nexus. WMS Gaming Inc. v. Int’l Sport Tech., 184 F.3d 1339 (Fed. Cir. 1999). Nexus shouldn’t be restricted to solely novel options, however considers the invention as a complete. Chemours Co. FC, LLC v. Daikin Indus., Ltd., 4 F.4th 1370 (Fed. Cir. 2021).

Right here, the PTAB discovered that Volvo Penta was not entitled to a presumption of nexus between the claims and the target proof. It held that though the Ahead Drive and Bravo 4 S embodied the claims, Volvo Penta didn’t present enough arguments relating to coextensiveness. The PTAB additionally discovered that Volvo Penta didn’t in any other case reveal nexus by figuring out the distinctive traits or deserves of the claimed invention tied to the target proof offered.

On enchantment, the Federal Circuit vacated.  The court docket famous that Volvo Penta expressly argued the business success of the Ahead Drive was tied to the “steerable tractor-type drive” recited within the claims. Volvo Penta cited inside Brunswick paperwork discussing the necessity to match the capabilities of the Ahead Drive in growing the Bravo 4 S. This demonstrated a nexus between the Pulling-type stern drive within the claims and the target proof.  Whereas Volvo Penta’s arguments on coextensiveness might have been pretty minimal, the court docket discovered them enough to point out nexus by tying the proof to the precise claimed function of a tractor-type stern drive. The undisputed proof confirmed boat producers strongly desired this function in Volvo Penta’s product. Thus, the Federal Circuit discovered Volvo Penta established the required nexus between the claims and goal proof.

The Federal Circuit additionally decided the PTAB’s evaluation and weighing of the target proof was poor in a number of methods.

First, the court docket discovered the PTAB’s task of “some weight” or “little or no weight” to the varied secondary concerns was overly obscure. This was problematic even when the person weights have been supported, as a result of the PTAB offered no perception into its summation discovering that collectively the proof solely “weighed considerably” in favor of nonobviousness. Because the court docket famous, it’s unclear whether or not “some weight” has the identical that means throughout various factors.

Second, for sure elements like copying, the PTAB’s task of weight contradicted its personal factual findings. The PTAB discovered proof exhibiting Brunswick copied the Ahead Drive in growing its competing Bravo 4 S product. Nevertheless, regardless of noting that copying is often thought of “sturdy proof” of nonobviousness, the PTAB solely gave copying “some weight.” This  seeming inconsistency was not defined by the PTAB in its remaining written choice.

Third, the PTAB dismissed or ignored facets of the proof associated to long-felt want, praising feedback, and business success, and the appellate panel discovered that these potential gaps may need altered the burden designation.  On these factors, the court docket cited circumstances specializing in the PTAB’s obligation to clarify and assist its factual and authorized conclusions. See, e.g., Pers. Net Techs., LLC v. Apple, Inc., 848 F.3d 987 (Fed. Cir. 2017) (remanding in view of the Board’s failure to “sufficiently clarify and assist [its] conclusions”); In re Nuvasive, Inc., 842 F.3d 1376 (Fed. Cir. 2016)(identical).

The Federal Circuit’s choice in Volvo Penta supplies vital steering for patent candidates and house owners in search of to beat obviousness challenges. It reemphasizes probably vital function that goal proof performs within the obviousness dedication, and exhibits that the nexus requirement shouldn’t be utilized overly restrictively. Whereas patentees should set up nexus, a restricted quantity of assist tying the target proof to the claimed invention as a complete will be enough.  The court docket additionally makes clear that the PTAB should absolutely and pretty take into account all related goal proof, keep away from ambiguous weighing, and sufficiently clarify any dismissal or discounting of probative proof. Imprecise labels like “some weight” are unhelpful. Findings that contradict the proof, like affording copying solely minimal weight, will draw enhanced scrutiny.