Secondary Considerations
Overview
Secondary considerations may be useful for a number of reasons including to help guard against hindsight bias.
[Secondary considerations] may also serve to guard against slipping into use of hindsight, Monroe Auto Equipment Co. v. Heckethorn Mfg. & Sup. Co., 332 F. 2d 406, 412 (1964), and to resist the temptation to read into the prior art the teachings of the invention in issue.
— Graham v. John Deere Co. of Kansas City, 383 US 1, 36 (S. Ct. 1966).
Secondary considerations may provide the best evidence available on obviousness.
[E]vidence of secondary considerations may often be the most probative and cogent evidence in the record. It may often establish that an invention appearing to have been obvious in light of the prior art was not.
— Stratoflex, Inc. v. Aeroquip Corp., 713 F. 2d 1530, 1538 (Fed. Cir. 1983).
Secondary considerations are not always decisive and they may not be enough to rebut other evidence that favors obviousness.
[E]vidence of secondary considerations does not always overcome a strong prima facie showing of obviousness.
— Asyst Technologies, Inc. v. Emtrak, Inc., 544 F. 3d 1310, 1316 (Fed. Cir. 2008).
A court must not disregard evidence of secondary considerations in reaching a conclusion on obviousness.
It is jurisprudentially inappropriate to disregard any relevant evidence on any issue in any case, patent cases included. Thus evidence rising out of the so-called secondary considerations must always when present be considered en route to a determination of obviousness.
— Stratoflex, Inc. v. Aeroquip Corp., 713 F. 2d 1530, 1538 (Fed. Cir. 1983).
Nexus
Secondary considerations are only probative when there is a nexus between the evidence and the merits of the claimed invention.
A nexus is required between the merits of the claimed invention and the evidence offered, if that evidence is to be given substantial weight enroute to conclusion on the obviousness issue. Solder Removal Co. v. USITC, 582 F.2d 628, 637, 65 CCPA 120, 199 USPQ 129, 137 (CCPA 1978) and cases cited therein.
— Stratoflex, Inc. v. Aeroquip Corp., 713 F. 2d 1530, 1539 (Fed. Cir. 1983).
The patentee bears the initial burden of proving a nexus with respect to secondary considerations.
In meeting its burden of proof, the patentee in the first instance bears the burden of coming forward with evidence sufficient to constitute a prima facie case of the requisite nexus.
— Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F. 2d 1387, 1392 (Fed. Cir. 1988).
After a patentee makes their case a challenger may then produce evidence to rebut that argument.
It is thus the task of the challenger to adduce evidence to show that the commercial success was due to extraneous factors other than the patented invention, such as advertising, superior workmanship, etc.
— Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F. 2d 1387, 1393 (Fed. Cir. 1988).
Evidence must be reasonably commensurate with the scope of patent claims.
Evidence of secondary considerations must be reasonably commensurate with the scope of the claims. See In re Tiffin, 58 CCPA 1420, 448 F.2d 791, 792 (1971); In re Hiniker, 150 F.3d 1362, 1369 (Fed.Cir.1998). This does not mean that an applicant is required to test every embodiment within the scope of his or her claims.
— In re Huai-Hung Kao, 639 F. 3d 1057, 1068 (Fed. Cir. 2011).
In some cases a nexus can be inferred. For example, a nexus may be inferred with the commercial success of a product when that product is coextensive with the claimed features.
commercial success or other secondary considerations may presumptively be attributed to the patented invention only where the marketed product embodies the claimed features, and is coextensive with them.
— Muniauction, Inc. v. Thomson Corp., 532 F. 3d 1318, 1328 (Fed. Cir. 2008).
When the thing that is commercially successful is not coextensive with the patented invention — for example, if the patented invention is only a component of a commercially successful machine or process — the patentee must show prima facie a legally sufficient relationship between that which is patented and that which is sold.
— Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F. 2d 1387, 1392 (Fed. Cir. 1988).
A patentee need not rule out all factors other than the claimed invention.
A patentee is not required to prove as part of its prima facie case that the commercial success of the patented invention is not due to factors other than the patented invention.
— Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F. 2d 1387, 1392 (Fed. Cir. 1988).
Examples
The courts have considered a variety of secondary considerations.
Praise in the industry for the claimed invention.
Evidence that the industry praised a claimed invention or a product that embodies the patent claims weighs against an assertion that the same claimed invention would have been obvious.
— Apple Inc. v. Samsung Electronics Co., LTC., (Fed. Cir. 2016).
See also Power-One, Inc. v. Artesyn Technologies, Inc., 599 F. 3d 1343, 1352 (Fed. Cir. 2010).
Copying of the patented invention.
See Wyers v. Master Lock Co., 616 F. 3d 1231 (Fed. Cir. 2010).
Copying requires more than showing infringement but rather evidence of efforts to replicate.
Not every competing product that arguably falls within the scope of a patent is evidence of copying. ... Our case law holds that copying requires evidence of efforts to replicate a specific product.
— Wyers v. Master Lock Co., 616 F. 3d 1231, 1246 (Fed. Cir. 2010).
Copying arguments must be carefully crafted because copying alone may be subject to various interpretations.
[A] showing of copying is only equivocal evidence of nonobviousness in the absence of more compelling objective indicia of other secondary considerations. … The reason is that the alleged copying could have occurred out of a general lack of concern for patent property.
— Ecolochem, Inc. v. Southern California Edison Co., 227 F. 3d 1361, 1380 (Fed. Cir. 2000).
Failure of others to invent a solution to the problem that the invention solves.
In Graham ... the Court noted in the circumstances of [that] case that unsuccessful attempts of others ... could not tip the scales of patentability. Here the scales are tipped, for Caveney alone disclosed his claimed combination, no pertinent prior art patent went uncited, the attempts of Panduit, Dennison and others continued right up to the time Caveney made his inventions, and Dennison's engineers had all the prior art patents before them throughout their years of research effort.
— Panduit Corp. v. Dennison Mfg. Co., 810 F. 2d 1561, Note 22 (Fed. Cir. 1987).
Commercial success of the patented invention.
See Ecolochem, Inc. v. Southern California Edison Co., 227 F. 3d 1361 (Fed. Cir. 2000).
Commercial success claims often face questions regarding the nexus between what is commercially successful and the claimed invention.
Our cases make clear that a nexus must be established between the merits of the claimed invention and evidence of commercial success before that evidence may become relevant to the issue of obviousness.
— Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F. 3d 1317, 1324 (Fed. Cir. 2004).
Commercial success is most easily established when the patented invention itself is a successful product.
We have further held that a presumption arises that the patented invention is commercially successful [w]hen a patentee can demonstrate commercial success, usually shown by significant sales in a relevant market, and that the successful product is the invention disclosed and claimed in the patent.
— Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F. 3d 1317, 1324 (Fed. Cir. 2004).
A long-felt need for the solution that the invention provides.
Evidence of a long-felt but unresolved need can weigh in favor of the nonobviousness of an invention because it is reasonable to infer the need would not have persisted had the solution been obvious.
— Apple Inc. v. Samsung Electronics Co., LTC., (Fed. Cir. 2016).
Long-felt need can be based on evidence from prior art and other sources.
The length of the intervening time between the publication dates of the prior art and the claimed invention can also qualify as an objective indicator of nonobviousness. […] The intervening time between the prior art's teaching of the components and the eventual preparation of a successful composition speaks volumes to the nonobviousness of the '013 patent.
— Leo Pharmaceutical Products, Ltd. v. Rea, 726 F. 3d 1346, 1359 (Fed. Cir. 2013).
Long-felt need should consider the date of the first efforts to solve the identified problem.
With respect to long-felt need respondents incorrectly argue that long-felt need is analyzed only as of the date of the "most pertinent" prior art references. Rather, long-felt need is analyzed as of the date of an articulated identified problem and evidence of efforts to solve that problem.
— Texas Instruments v. US Intern. Trade Com'n, 988 F. 2d 1165, 1178 (Fed. Cir. 1993).
Industry skepticism about the viability of the invention.
Transocean's evidence that people in the industry were skeptical of dual-activity rigs due to fears of "clashing," which occurs when the two drill strings collide with one another. … The jury found that industry skepticism supports nonobviousness. … We thus conclude that the district court erred by rejecting the jury's finding that skepticism supports nonobviousness.
— Transocean Offshore Deepwater v. Maersk Drilling, 699 F. 3d 1340, 1352-1353 (Fed. Cir. 2012).
Licensing activity tied to the claimed invention.
We conclude that Transocean presented sufficient evidence for the jury to find that Transocean's licensing supports nonobviousness. From Transocean's testimony regarding the value of the licenses relative to litigation costs and regarding licenses with companies under no apparent threat of litigation, a reasonable jury could have found that the licenses reflect the value of the claimed invention and are not solely attributable to litigation.
— Transocean Offshore Deepwater v. Maersk Drilling, 699 F. 3d 1340, 1353 (Fed. Cir. 2012).
Licensing evidence should account for the possibility that licensees may consider economic factors other than the value of a technology.
Such [licensing] programs are not infallible guides to patentability. They sometimes succeed because they are mutually beneficial to the licensed group or because of business judgments that it is cheaper to take licenses than to defend.
— EWP Corp. v Reliance Universal Inc., 755 F.2d 898, 907–08 (Fed. Cir. 1985).
Simultaneous invention.
The fact of near-simultaneous invention, though not determinative of statutory obviousness, is strong evidence of what constitutes the level of ordinary skill in the art.
— Ecolochem, Inc. v. Southern California Edison Co., 227 F. 3d 1361, 1379 (Fed. Cir. 2000).