Unpacking the Importance of the Claimed Invention from Other Commercial Components

Objective indicia of non-obviousness, such as commercial success and industry praise, can be probative evidence of non-obviousness. In order for the objective evidence of secondary considerations to be afforded substantial weight, however, the patentee must establish a nexus between the evidence and the merits of the claimed invention. A presumption of nexus can be established if the patentee shows that the evidence is tied to a specific product that embodies the claimed invention.

Of course, the challenger can rebut the presumption of nexus by showing that the commercial success or industry praise is due to features other than the claimed invention. But, this rebuttal may not be so straightforward where the claimed invention is a tool of a multi-tool package. In this instance, the inventive component must be weighed, regardless of the popularity/success of other components.

The Federal Circuit recently considered this issue in Oren Techs., LLC v. Proppant Express Investments, No. 2019-1778 (Fed. Cir. July 23, 2021). (here)

As the Federal Circuit explained in Oren, evidence showing that other components contributed to the commercial success or industry praise must be weighed against any evidence showing that the claimed invention also contributes to that success or praise.

In Oren, the patentee presented evidence that its commercialized product, a proppant storage container, mapped to the claim elements of the patent at issue. The PTAB found that this established a presumption of nexus. The challenger then presented evidence that the commercial success was actually due to other equipment leased in a set with the storage container, supported by testimony from the patentee’s own witnesses regarding the importance of the other equipment to the commercial success of the product. Based on this evidence, the PTAB concluded that the commercial success and industry praise were “largely a result of these non-container features.”

However, the patentee also presented revenue numbers, licensing contracts, and statements from the industry that showed that the claimed storage container also contributed to the product’s commercial success. In reaching its conclusion, the PTAB did not consider any of the patentee’s evidence. Rather, the Board simply relied on the existence of some evidence that other components were also responsible for the commercial success.

The Federal Circuit found that the PTAB’s failure to address the patentee’s evidence was legal error and that on remand, the PTAB needed to consider the evidence to “properly decide the issue of obviousness.” While the Federal Circuit did not disagree that the evidence showed that other features were important to the commercial success, it reasoned, “it is not necessary … that the patented invention be solely responsible for the commercial success, in order for [commercial success] to be given weight appropriate to the evidence.”

Scott A. McKeown is an author of the Patents Post Grant