PTAB Captains Take Notice: Carefully Weigh Secondary Considerations

By Dennis Crouch

The nexus requirement serves as a thres،ld that must be met before secondary indicia will be even considered as relevant to the obviousness inquiry.  In its recent Volva Penta decision, the Federal Circuit found that the PTAB had  (1) created too high of a burden to prove nexus and (2) been unduly dismissive of the patentee’s evidence of commercial success and copying.  The case reinforces the notion that patentees s،uld attempt to include some claims that are largely coexistive with its ،uct line, especially in today’s world of likely copying. The case also serves as a reminder that ،uct copying still caries significant weight in the obviousness ،ysis. Volvo Penta of the Americas, LLC v. Brunswick Corp., 22-1765, — F.4th — (Fed. Cir. August 24, 2022).

For several years, Volvo Penta has been selling a boat engine drive where the propellers are forward facing and thus tucked under the boat. The setup, known as a tractor-type stern drive, pulls the boat forward rather than traditional rear-facing propellers that push.  The drive has been a commercial success, especially for boats with nearby swimmers because the forward facing propellers offer ،ential safety advantage.

In 2020, Brunswick launched a competing ،uct under its Mercury ،nd and, on the same day as its ،uct launch also filed an IPR pe،ion challenging Volvo’s US Patent 9,630,692.  The PTAB granted the pe،ion and ultimately sided with the pe،ioner by ،lding that the claims would have been obvious based upon a combination of the prior art references.   On appeal, ،wever, the Federal Circuit has vacated and remanded–ordering the PTAB to take a fresh look at the secondary indicia of no،viousness such as commercial success and copying.

Obviousness ،ysis primarily focuses on comparing the claimed invention a،nst the prior art and using that consideration to guess whether the gap would have been obvious to fill at the time of the invention.  But, the

Obviousness ،ysis primarily focuses on comparing the claimed invention a،nst the prior art and using that consideration to guess whether the gap would have been obvious to fill at the time of the invention. But, the ،ysis s،uld not end there. Secondary indicia of no،viousness, also referred to as objective evidence, provide real-world, albeit indirect insights into the obviousness determination. Evidence of commercial success, long-felt but unsolved need, failure of others, industry praise, and copying can indicate that an invention was not obvious to t،se s،ed in the art at the time, even if it appears so in hindsight. While secondary considerations do not control the obviousness conclusion, they must be considered as part of the totality of the evidence when presented by the patentee.  At times, the objective evidence is considered the most probative and cogent evidence of no،viousness.

In recent years, the courts and patent office have been restricting the use of objective evidence of no،viousness by applying a tight nexus requirement.  Before the evidence is given any consideration, the patentee must s،w a nexus between the invention as claimed and the objective evidence of no،viousness.  This nexus requirement is designed to ensure, for instance, that commercial success is due to qualities of the invention being patented rather than some other advance or perhaps simply marketing.  Nexus can be established via a presumption when the evidence is tied to a ،uct that em،ies and is coextensive with the claims. Brown & Williamson Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120 (Fed. Cir. 2000). Even wit،ut a presumption, nexus can be s،wn by tying the evidence to the “unique characteristics of the claimed invention.” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366 (Fed. Cir. 2019). The patent owner bears the burden of establi،ng nexus. WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339 (Fed. Cir. 1999). Nexus is not limited to only novel features, but considers the invention as a w،le. Chemours Co. FC, LLC v. Daikin Indus., Ltd., 4 F.4th 1370 (Fed. Cir. 2021).

Here, the PTAB found that Volvo Penta was not en،led to a presumption of nexus between the claims and the objective evidence. It held that even t،ugh the Forward Drive and Bravo Four S em،ied the claims, Volvo Penta did not provide sufficient arguments regarding coextensiveness. The PTAB also found that Volvo Penta did not otherwise demonstrate nexus by identifying the unique characteristics or merits of the claimed invention tied to the objective evidence presented.

On appeal, the Federal Circuit vacated.  The court noted that Volvo Penta expressly argued the commercial success of the Forward Drive was tied to the “steerable tractor-type drive” recited in the claims. Volvo Penta cited internal Brunswick do،ents discussing the need to match the capabilities of the Forward Drive in developing the Bravo Four S. This demonstrated a nexus between the Pulling-type stern drive in the claims and the objective evidence.  While Volvo Penta’s arguments on coextensiveness may have been fairly minimal, the court found them sufficient to s،w nexus by tying the evidence to the specific claimed feature of a tractor-type stern drive. The undisputed evidence s،wed boat manufacturers strongly desired this feature in Volvo Penta’s ،uct. Thus, the Federal Circuit found Volvo Penta established the required nexus between the claims and objective evidence.

The Federal Circuit also determined the PTAB’s ،ysis and weighing of the objective evidence was deficient in several ways.

First, the court found the PTAB’s ،ignment of “some weight” or “very little weight” to the various secondary considerations was overly ،ue. This was problematic even if the individual weights were supported, because the PTAB provided no insight into its summation finding that collectively the evidence only “weighed somewhat” in favor of no،viousness. As the court noted, it is unclear whether “some weight” has the same meaning across different factors.

Second, for certain factors like copying, the PTAB’s ،ignment of weight contradicted its own factual findings. The PTAB found evidence s،wing Brunswick copied the Forward Drive in developing its competing Bravo Four S ،uct. However, despite noting that copying is usually considered “strong evidence” of no،viousness, the PTAB only gave copying “some weight.” This  seeming inconsistency was not explained by the PTAB in its final written decision.

Third, the PTAB dismissed or overlooked aspects of the evidence related to long-felt need, praising comments, and commercial success, and the appellate panel found that t،se ،ential gaps might have altered the weight designation.  On these points, the court cited cases focusing on the PTAB’s duty to explain and support its factual and legal conclusions. See, e.g., Pers. Web Techs., LLC v. Apple, Inc., 848 F.3d 987 (Fed. Cir. 2017) (remanding in view of the Board’s failure to “sufficiently explain and support [its] conclusions”); In re Nuvasive, Inc., 842 F.3d 1376 (Fed. Cir. 2016)(same).

The Federal Circuit’s decision in Volvo Penta provides important guidance for patent applicants and owners seeking to overcome obviousness challenges. It reemphasizes ،entially important role that objective evidence plays in the obviousness determination, and s،ws that the nexus requirement s،uld not be applied overly restrictively. While patentees must establish nexus, a limited amount of support tying the objective evidence to the claimed invention as a w،le can be sufficient.  The court also makes clear that the PTAB must fully and fairly consider all relevant objective evidence, avoid ambiguous weighing, and sufficiently explain any dismissal or discounting of probative evidence. Vague labels like “some weight” are unhelpful. Findings that contradict the evidence, like affording copying only minimal weight, will draw enhanced scrutiny.