Posts Tagged: "secondary evivdence of unobviousness"

CAFC Vacates PTAB Obviousness Decision, Nonobviousness Nexus Established by Patent Owner

The Federal Circuit recently issued a non-precedential decision in LiquidPower Specialty Products v. Baker Hughes, vacating and remanding a final written decision from the Patent Trial and Appeal Board (PTAB), which had invalidated claims of a LiquidPower patent in an inter partes review (IPR) proceeding. In a nutshell, the Federal Circuit found there to be substantial evidence supporting PTAB determinations relating to specifically what the prior art taught, and what the prior art motivated those of skill in the art to do vis-a-vis motivation to combine. However, the panel, made up of Chief Judge Sharon Prost and Circuit Judges Todd Hughes and Kimberly Moore, determined that substantial evidence did not support the PTAB’s finding that the patent owner failed to establish a nexus between the claimed invention and objective evidence of nonobviousness, or secondary considerations as they are sometimes called. The case is now remanded to the PTAB for proper consideration of the objective evidence of nonobviousness presented by the patent owner.

Gene Quinn & Steve Brachmann

October 24, 2018

Validity of bottle cap patent upheld in IPR thanks to market success in Peru

The patent owner made a successful argument regarding secondary considerations, specifically relating to the success of the bottle cap in the country of Peru, which led in large part to PTAB upholding the validity of the ‘271 patent. A 7 percent increase in market share in that country during a five-year period after the new cap product was released to the Peruvian market led PTAB to find that the market share increase was attributable to the merits of the new product. The petitioner had argued that the use of Peruvian economic data was dismissable evidence but PTAB found that the evidence to support the petitioner’s view was lacking.

Steve Brachmann

January 24, 2017

KSR Fears Realized: CAFC Off the Obviousness Deep End

Yesterday the United States Court of Appeals for the Federal Circuit, in a split decision with Judge Lourie writing and Judge Bryson joining, took a step forward in the evolution of the law of obviousness that confirms my worst fears about obviousness in this post-KSR era. It has been argued by many that even after KSR it is not an appropriate rejection, or reason to invalidate an issued claim, that it would be “common sense” to modify elements within the prior art in a wholly new way and then combine the “common sense” modifications. I did agree that was true, at least until yesterday.

Gene Quinn

February 1, 2011

US Patent Office Issues Update to KSR Examination Guidelines

The United States Patent and Trademark Office has provided an update to its Examination Guidelines concerning the law of obviousness under 35 U.S.C. 103 in light of precedential decisions from the United States Court of Appeals for the Federal Circuit issued since the 2007 decision by the United States Supreme Court in KSR Int’l Co. v. Teleflex Inc. The Updated Guidelines were published today in the Federal Register, and in response to the requests of many stakeholders the USPTO has included additional examples to help elucidate the ever-evolving law of obviousness. These guidelines are intended primarily to be used by Office personnel in conjunction with the guidance in the Manual of Patent Examining Procedure. The effective date of the these new Guidelines is September 1, 2010, but members of the public are invited to provide comments on the 2010 KSR Guidelines Update. The Office is especially interested in receiving suggestions of recent decisional law in the field of obviousness that would have particular value as teaching tools.

Gene Quinn

September 1, 2010