New Precedent/Informative Decisions Demonstrate Nexus Considerations
Yesterday, the Patent Trial & Appeal Board (PTAB) designated one new precedential case, and two informative decisions directed to the application of objective indicia to obviousness determinations. Collectively, the decisions outline the necessary degree of nexus between subject claims and submitted objective indicia.
Lectrosonics, Inc. v. Zaxcom, Inc., Case IPR2018-01129, Paper 33 (PTAB Jan. 24, 2020) (precedential, here)
Considering Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019), this decision determines that the challenged claims are unpatentable because the Patent Owner did not establish a nexus between the claims and objective evidence of non-obviousness. This decision determines, however, that the Patent Owner’s amended claims are patentable because the Patent Owner did establish a nexus to objective evidence of non-obviousness, including long-felt need and industry praise.
Ex parte Whirlpool Corp., Appeal 2013-008232 (Oct. 30, 2013) (informative, here)
This decision on appeal reverses the Examiner’s obviousness rejection, finding that the Patent Owner established a nexus between the claimed invention and its objective evidence of non-obviousness, including industry praise, commercial success, long-felt need, and copying, and that such objective evidence is sufficient to demonstrate non-obviousness of the claimed invention.
Ex parte Thompson, Appeal 2011-011620 (March 21, 2014) (informative, here)
This decision on appeal reverses the Examiner’s obviousness rejection, noting that assessing whether a claimed invention would have been obvious requires considering objective evidence of non-obviousness, and weighing appropriately the prior art-based evidence in conjunction with the objective evidence.
With two of these decision being from 2013-14, these are not new developments. More in the way of reminding the public that Patent Owners can be successful with such evidence.