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.
In assessing evidence of obviousness, the PTAB noted that “the differences between the prior art and the claimed invention [were] minimal”—two bottle cap references disclosed every limitation except the harder steel, and a third reference disclosed the harder steel. Furthermore, it found that the third reference suggested using the harder steel in bottle cap applications and that the bottle cap industry generally trended toward increasing material hardness, though this trend had stalled in recent years.
This evidence was not strong enough to resist Patent Owner’s evidence of secondary considerations, particularly regarding commercial success of the bottle cap in Peru. After showing a sufficient nexus between the patent and the product, Patent Owner pointed out that its Peruvian market share had grown from 88.7 percent of the market to 95.5 percent of the market during a period in which it was replacing its old caps with the patented caps. Because the data were taken during a “replacement period,” the data allowed the PTAB to “infer that the increase in market share is because of the merits of the new product.” Thus, the PTAB found the 7 percent increase of market share “persuasive” evidence of non-obviousness. Moreover, because there was no evidence that Peru was not a sufficiently free market, the PTAB rejected Petitioner’s argument that Patent Owner needed to show success in other markets, such as the United States.
The PTAB also considered the secondary consideration of industry praise, specifically finding that the industry praised the harder material because artisans thought steels as hard as those claimed “simply would not work” due to technical problems. Patent Owner overcame the problems by adding grooves to the cap, which allowed for thinner and harder steel and signified “an unexpected and welcome development” in the industry. This unexpected success was also sufficient to explain why the industry trend toward harder steels had stalled for years, weakening the obviousness evidence. Furthermore, the PTAB noted that statements in the first two references that cautioned against using harder steel, while they did not rise to “teaching away,” did dampen the motivation to combine those references with the steel disclosed in the third reference.
Thus, the PTAB found that strong secondary evidence of non-obviousness overcame solid, but imperfect, evidence of obviousness. Although it is rare for patent owners to prevail when relying heavily on secondary considerations, this decision appears to provide a strategy for future patent owners in which they select specific markets to demonstrate commercial success and use secondary considerations to mitigate evidence of obviousness.
World Bottling Cap LLP v. Crown Packaging Technology Inc., Case IPR2015-01651 (PTAB Jan. 19, 2017). [Saindon (opinion), White and Tornquist]