PTAB Erred in Evaluating Secondary Considerations and Their Nexus to the Claims: Federal Circuit | Practical Law

PTAB Erred in Evaluating Secondary Considerations and Their Nexus to the Claims: Federal Circuit | Practical Law

In Volvo Penta of the Americas, LLC v. Brunswick Corp., the US Court of Appeals for the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) erred in finding a lack of nexus between the claimed inventions and the patent owner's evidence of secondary considerations, and improperly analyzed those same objective indicia of nonobviousness.

PTAB Erred in Evaluating Secondary Considerations and Their Nexus to the Claims: Federal Circuit

by Practical Law Intellectual Property & Technology
Published on 25 Aug 2023USA (National/Federal)
In Volvo Penta of the Americas, LLC v. Brunswick Corp., the US Court of Appeals for the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) erred in finding a lack of nexus between the claimed inventions and the patent owner's evidence of secondary considerations, and improperly analyzed those same objective indicia of nonobviousness.
On August 24, 2023, in Volvo Penta of the Americas, LLC v. Brunswick Corp., the US Court of Appeals for the Federal Circuit held that:
  • A patent owner that failed to establish its product was coextensive with the asserted patent claims still demonstrated a sufficient nexus between objective indicia of nonobviousness and those claims through unrebutted evidence of market demand for the product's unique features and copying by the alleged infringer.
  • The Patent Trial and Appeal Board (PTAB)'s analysis of the patent owner's evidence on the objective indicia of nonobviousness was "overly vague and ambiguous."
Volvo Penta of the Americas, LLC (Volvo) owns US Patent No. 9,630,692 (the '692 patent), which covers a tractor-type stern drive for a boat. Volvo launched its commercial embodiment of the '692 patent marketed as the Forward Drive in 2015 and experienced significant commercial success. In 2020, Brunswick Corporation (Brunswick) launched its Bravo Four S product embodying the '692 patent and simultaneously petitioned the PTAB for inter partes review (IPR) of the patent.
In the IPR proceedings, the PTAB:
  • Agreed with Brunswick that a person of ordinary skill in the art would be motivated to combine the teachings of the prior art, relying in part on a Volvo employee's testimony.
  • Found a lack of nexus between the merits of the claimed invention and the alleged secondary indicia of nonobviousness because:
    • Volvo was not entitled to a nexus presumption after failing to show coextensiveness between the Forward Drive or the Bravo Four S and the asserted claims; and
    • Volvo's evidence regarding secondary considerations did not otherwise independently show nexus.
  • Concluded that Brunswick's obviousness evidence outweighed Volvo's objective evidence of nonobviousness.
On Volvo's appeal, the Federal Circuit vacated and remanded the PTAB's decision, holding that:
  • Volvo had established a sufficient nexus between its objective evidence of nonobviousness and the inventions because:
    • the unique characteristics of the tractor-type drive recited in the claims drove the success of Volvo's Forward Drive;
    • boat manufacturers highly praised and strongly desired the Forward Drive, and were urging Brunswick to bring a forward drive to market;
    • Brunswick's development of the Bravo Four S was, as the PTAB found, "akin to 'copying,'" and Brunswick's internal documents indicated that the Forward Drive product guided its design in the first place; and
    • nexus is considered based on the invention as a whole, rather than solely on its novel features.
  • The PTAB's decision was unclear in assigning "some weight" to several key factors, including copying, commercial success, and industry praise, and that even if the assignment was correct, the PTAB's failure to explain how it summed the weight given to the factors was insufficient to support its findings.
The Federal Circuit's decision provides important guidance on the use and evaluation of secondary considerations in nonobviousness analysis and on the often disputed issue of the nexus between the claims and that evidence. The PTAB may provide additional guidance when it has a second opportunity to consider the secondary considerations on remand.