Obviousness challenges are popular post-grant challenges before the Patent Trial and Appeal Board (PTAB). Generally, under 35 U.S.C. § 103 (“§ 103”), the courts make legal and factual inquiries into (1) the scope and content of the prior art, (2) the differences between the claimed invention and the prior art, and (3) the level of ordinary skill in the pertinent art (the “Graham factors”). In addition, secondary considerations may be used to create an inference of nonobviousness to help overcome challenges under § 103. Secondary considerations include copying of the invention by third parties and commercial success. A string of recent decisions before the PTAB, such as the recent PTAB inter partes review decision in Varian Medical Systems, Inc. v. William Beaumont Hospital, have bolstered the usefulness and importance of secondary considerations in obviousness analyses.
In a final written decision, the Patent Trial and Appeal Board (PTAB) found that claims 1-20 of U.S. Patent No. 8,550,271 (the “’271 patent”) were not unpatentable because “compelling evidence of secondary considerations of non-obviousness” outweighed the evidence of obviousness. World Bottling Cap LLC (“Petitioner”) filed inter partes review petitions of Crown Packaging Technology Inc.’s (“Patent Owner”) ’271 patent, which covers a bottle cap requiring less material than caps in the prior art by using a harder steel that allows for a thinner cap.
On August 31, 2016, the Federal Circuit issued a non-precedential opinion reversing a judgment by the Patent Trial and Appeal Board (PTAB) finding the challenged claims of Natural Alternatives, LLC’s (“Natural”) U.S. Patent No. 6,080,330 (the “330 Patent”) invalid as obvious.
Clearlamp, LLC filed a patent infringement action against LKQ Corporation (LKQ), who, in turn, counterclaimed seeking declaratory judgments of noninfringement and invalidity. During the pendency of this case, the parties participated in an inter partes review (IPR), during which the Patent Trial and Appeal Board found that several claims of the patent-at-issue were unpatentable as obvious in view of three prior art references. In the instant opinion, the Court grants LKQ’s motion for summary judgment on invalidity and denies the parties’ remaining motions on validity and noninfringement. The key issue addressed by the Court in deciding these summary judgment motions was whether LKQ was estopped under 35 U.S.C. § 315(e)(2) from combining the datasheet of a prior art product, which was not raised during the IPR proceeding, with the three prior art references used to invalidate other patent claims.
Judge Gilstrap of the Eastern District of Texas denied defendant Genband US LLC’s motion for summary judgment that plaintiff Metaswitch Networks Ltd.’s patent, relating to the control of communication sessions in a telecommunications network, was invalid. Metaswitch argued that the prior art patent application is fundamentally different from the asserted patent and does not disclose even a single limitation of the asserted claim 8. In general, Metaswitch’s arguments related to the asserted patent and prior art reference having different network topologies.