Intellectual Property > IP Newsflash > Insufficient Showing of Secondary Considerations Fails to Rebut Obviousness Case
03 Mar '16

The Patent Trial and Appeal Board (PTAB) found all of the claims of the patent-at-issue invalid, notwithstanding the patent owner’s (Owner) showing of secondary considerations of nonobviousness. As an initial matter, PTAB found each limitation of the claims in the prior art. Owner then attempted to rebut Petitioner’s prima facie obviousness case by presenting evidence of secondary considerations of nonobviousness based on: (1) copying, (2) commercial success, and (3) industrial praise. PTAB addressed each argument, holding overall that Petitioner’s “strong evidence of obviousness” outweighed Owner’s secondary considerations of nonobviousness.

First, Owner alleged copying based on Petitioner possessing Owner’s patented product and on unsuccessful license negotiations with Petitioner. In response, PTAB found that Petitioner’s product (for which Petitioner received its own patent) used a different configuration than Owner’s patented product. Further, PTAB found that Petitioner could not have had access to Owner’s “patent product” for the purpose of copying because Petitioner’s allegedly copied product was sold before the Owner’s patent issued.

Second, Owner argued that Owner’s success in the marketplace was due to the patented features of its product. PTAB was not persuaded by Owner’s mere showing that Owner was able to grow quickly in its marketplace. In holding that Owner failed to establish “a nexus between its commercial product and any novel features” of its patented product, PTAB found that the features purported to promote the Owner’s commercial success “were present in the prior art.” Further, PTAB held that even if Owner had established a nexus, Owner had “not provided evidence of the market share held by its product to back up its claim of commercial success.”

Third and finally, Owner presented evidence of industry praise wherein its patented product won an award and was mentioned in two trade journals. PTAB held that Owner’s evidence of industry success was insufficient, finding that there was no indication that the award was given on the merits of the patented features of Owner’s product. Further, PTAB found that “two brief mentions in” trade journals do not “constitute industry praise.”

Chums, Inc., and Croakies, Inc., v. Cablz, Inc., IPR2014-01240.
[Kalan (opinion), Cocks, Plenzler]