CAFC Faults PTAB Nexus Presumption
A proper obviousness analysis under Graham v. John Deere analyzes four factors: (1) the scope and content of the prior art; (2) the differences between the prior art and the patent claims; (3) the level of ordinary skill in the art; and (4) secondary considerations or “objective indicia” of non-obviousness. Yet, objective indicia arguments are relatively uncommon in the predictable arts. And even when they are advanced, the argument is rarely effective. This is because establishing a nexus between a patent claim and such amorphous concepts as “commercial success” (the most commonly advanced form of indicia) is a far more complex undertaking than most practitioners appreciate.
A patentee is entitled to a rebuttable presumption of nexus between its asserted objective indicia and a patent claim if the patentee shows that the indicia is tied to a specific product and that the product is the invention disclosed and claimed. Earlier this week, the Federal Circuit analyzed how close a claim needs to be to the purported “invention” to qualify for the presumption of nexus.