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.
The patent at issue in Varian Medical Systems is U.S. Pat. No. 7,471,765 B2 (the “’765 patent”), which generally relates to using a cone-beam CT scanner with a flat-panel imager in conjunction with a radiation therapy system as an image-guided radiotherapy system for increased precision and effectiveness of radiation treatments. The petitioners argued, and the PTAB agreed, that all claim limitations were taught by the combination of prior art references. However, the PTAB also assessed “secondary considerations” in its obviousness inquiry. In doing so, the PTAB found “(1) very strong evidence of industry praise; (2) very strong evidence of long-felt need; (3) moderately strong evidence of commercial success; and (4) moderately strong evidence of copying,” pointing to the nonobvious nature of the ’765 patent and its claims. First, for industry praise, the PTAB found evidence of textbook publications praising the invention, journal publications (“more than 1,000 . . . scientific articles”) citing the invention, and an R&D award from a magazine in 2006. Second, for long-felt need, the PTAB analyzed evidence such as the patent owner’s declaration and deposition testimony, and a journal publication that supported the patent owner’s assertion that the problem the patent purported to solve “need[ed] to be solved, and that it was long-felt at least since ‘the early 1990s.’” Third, for commercial success, the PTAB found evidence that the majority of sales both worldwide and in North America were made with the claimed invention. Lastly, for copying, the PTAB found evidence that a third party created a product that met all claim limitations.
As a result, despite finding that the prior art, and the combinations of those prior art references, were “well known to one of ordinary skill in the art,” the PTAB ruled that the patent owner’s evidence of secondary considerations, which strongly pointed to nonobviousness, outweighed those findings and thus rejected the petitioner’s obviousness challenge.
Varian Medical Systems, Inc. v. William Beaumont Hospital, IPR2016-00162, Paper 69 (May 4, 2017).