Objective Evidence in Determining Obviousness

Before Moore, Lourie, and Dyk. Appeal from the Patent Trial and Appeal Board.

Summary: A close prima facie case of obviousness can be overcome by strong evidence of objective indicia of non-obviousness.

Medtronic petitioned for inter partes review of Teleflex’s patents relating to guide extension catheters arguing obviousness over various combinations of references. The Board instituted and found the claims not unpatentable, granting Teleflex’s contingent motion to amend certain claims. The Board found Medtronic presented a “close” prima facie case regarding the references and motivations to combine. However, it also found that Teleflex overcame this showing with “strong” evidence of objective indicia of non-obviousness. The Board found that Teleflex proved that its product that embodied the claims was commercially successful and was copied by competitors, including Medtronic. The Board acknowledged that Medtronic demonstrated that every element of the claims was individually known but concluded that Teleflex proved there was a nexus between the commercial success and the claims because the evidence was tied to a combination of the features as a whole, and the combination was not previously known. The Board held that Teleflex sufficiently established copying through circumstantial evidence, including that Medtronic had access to Teleflex’s patented product and that there were substantial similarities between Medtronic’s and Teleflex’s products.

The Federal Circuit affirmed the Board’s decision on appeal. The Federal Circuit held the Board did not err in finding a nexus based on the combination of features and that there was more than sufficient circumstantial evidence to support the Board’s finding of copying. The Federal Circuit also rejected Medtronic’s contention that direct evidence of copying (i.e., photos of patented features or disassembled products) was required.

Editor: Paul Stewart