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.
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Unrebutted Secondary Indicia Considered in Assessing Becton-Dickinson Factors

The submission of so-called “objective indicia of non-obviousness” at the PTAB is rarely effective, especially in the predictable arts (i.e., mechanical/electrical).  This is because the most common form of such evidence, “commercial success” is often difficult to tie to any particular claim feature (unlike drug formulations, for example).  That said, as a Graham Factor that is assessed in an obviousness determination, the failure to address previously established indicia could prove fatal to your petition. 
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