Recent PTAB Decision Highlights Importance of Secondary Considerations in Obviousness Challenges

Jun 2, 2017

Reading Time : 1 min

By: Rubén H. Muñoz, Lance Han, law clerk (not admitted to practice)

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).

Share This Insight

Previous Entries

IP Newsflash

October 1, 2025

In a recent final written decision, the PTAB determined that a reference patent was not prior art, despite the petitioner’s post‑filing attempt to correct its petition. While the petitioner argued that it intended to rely on the patent application’s earlier date of publication, both the corrected petition and the expert declaration continued to reference the issued patent rather than the published application.

...

Read More

IP Newsflash

September 30, 2025

The USPTO Director recently granted a petitioner’s request for rehearing of the decision discretionarily denying institution of inter partes review, ultimately vacating the original decision, and referring the petition to the board for an institution decision.

...

Read More

IP Newsflash

September 25, 2025

In considering claims to a method of reducing cardiovascular events, the Federal Circuit held that the term a “clinically proven effective” amount did not render the claims patentable over the prior art. Specifically, the Federal Circuit held that the “clinically proven effective” amount, whether limiting or not, could not be used to distinguish the prior art because the claims also specified the exact amount of the drugs to be administered in the method. The Federal Circuit also rejected patentee’s evidence of unexpected results because that evidence was tied solely to the “clinically proven effective” limitation.

...

Read More

IP Newsflash

September 24, 2025

The Federal Circuit reversed a district court’s denial of judgment as a matter of law on non-infringement, thereby setting aside a $106 million jury verdict, after holding that prosecution history estoppel barred the patentee from asserting infringement under the doctrine of equivalents.

...

Read More

IP Newsflash

September 17, 2025

A magistrate judge in the District of Delaware issued a Report and Recommendation, that found the sole asserted claim was a “single means” claim and therefore invalid for lack of enablement. In reaching that conclusion, the magistrate judge rejected the patentee’s argument that the preamble of the claim disclosed a second element that satisfied the combination requirement of Section 112, paragraph 6 because the preamble simply recited a descriptor of the very apparatus that was the subject of the means-plus-function limitation in the body of the claim. The district court judge presiding over this case has scheduled a hearing to review the magistrate’s ruling.

...

Read More

IP Newsflash

September 9, 2025

The Federal Circuit has affirmed the PTAB’s determination that a patent challenger did not show the challenged claims were unpatentable for obviousness. The Federal Circuit concluded that substantial evidence, which included expert testimony, showed there was no motivation to combine the references.

...

Read More

IP Newsflash

August 29, 2025

In a recent order addressing four IPR proceedings, the PTAB exercised its inherent authority under 37 C.F.R. § 42.5(a) to sua sponte authorize post-hearing discovery on a potentially dispositive privity issue. The order followed a Director review decision that vacated and remanded earlier IPRs involving the same parties, patent family, and privity issue. 

...

Read More

IP Newsflash

August 29, 2025

The Patent Trial and Appeal Board denied institution of an inter partes review petition in part because it determined that a patent reference was not prior art under the common ownership exception of pre-AIA 35 U.S.C. § 103(c)(1).

...

Read More

© 2025 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.