Secondary Indicia

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Unpacking the Importance of the Claimed Invention from Other Commercial Components

Objective indicia of non-obviousness, such as commercial success and industry praise, can be probative evidence of non-obviousness. In order for the objective evidence of secondary considerations to be afforded substantial weight, however, the patentee must establish a nexus between the evidence and the merits of the claimed invention.  A presumption of nexus can be established if the patentee shows that the evidence is tied to a specific product that embodies the claimed invention.

Of course, the challenger can rebut the presumption of nexus by showing that the commercial success or industry praise is due to features other than the claimed invention. But, this rebuttal may not be so straightforward where the claimed invention is a tool of a multi-tool package.  In this instance, the inventive component must be weighed, regardless of the popularity/success of other components. 
Continue Reading PTAB Faulted on Objective Indicia Analysis

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.
Continue Reading PTAB Highlights Successful Application of Objective Indicia

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.
Continue Reading Critical Aspects of Invention Need to Be Claimed for Secondary Indicia to Stick

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. 
Continue Reading PTAB Denies Petition Overlooking Objective Indicia of Non-Obviousness