Product copying can carry significant weight in the obviousness analysis.

Objective evidence of nonobviousness for patentability includes: (1) commercial success, (2) copying, (3) industry praise, (4) skepticism, (5) long-felt but unsolved need, and (6) failure of others. See Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling U.S., Inc., 699 F.3d 1340, 1349–56 (Fed. Cir. 2012).

“Objective considerations such as failure by others to solve the problem and copying may often be the most probative and cogent evidence of nonobviousness.” Advanced Display Sys. v. Kent State Univ., 212 F.3d 1272, 1285 (Fed. Cir. 2000) (cleaned up); see also Windsurfing Int'l, Inc. v. AMF, Inc., 782 F.2d 995, 1000 (Fed. Cir. 1986), cert. denied, 477 U.S. 905 (1986) (reasoning that “copying the claimed invention, rather than one in the public domain, is indicative of non-obviousness”).

For objective evidence of secondary considerations, there must be a nexus between the merits of the claimed invention and the objective evidence. See In re GPAC, 57 F.3d 1573, 1580 (Fed. Cir. 1995).

A showing of nexus can be made in two ways: (1) via a presumption of nexus, or (2) via a showing that the evidence is a direct result of the unique characteristics of the claimed invention. Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373–74 (Fed. Cir. 2019); In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996).

A patent owner is entitled to a presumption of nexus when it shows that the asserted objective evidence is tied to a specific product that “embodies the claimed features, and is coextensive with them.” Brown & Williamson Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000). The inclusion of noncritical features does not defeat a finding of a presumption of nexus. See PPC Broadband, Inc. v. Corning Optical Commc'ns RF, LLC, 815 F.3d 734, 747 (Fed. Cir. 2016) (stating that a nexus may exist “even when the product has additional, unclaimed features”).

Otherwise, the patent owner may argue that the evidence of secondary considerations of nonobviousness is the direct result of the unique characteristics of the claimed invention.

The nexus analysis need not be limited to a discussion of only novel features. WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1330 (Fed. Cir. 2016) (stating that “proof of nexus is not limited to only when objective evidence is tied to the supposedly ‘new' feature(s)”)). It is instead important to consider “the invention as a whole,” rather than on a “limitation-by-limitation” basis. Chemours Co. FC, LLC v. Daikin Indus., Ltd., 4 F.4th 1370, 1377 (Fed. Cir. 2021); see also Yita LLC v. MacNeil IP LLC, 69 F.4th 1356, 1364 (Fed. Cir. 2023) (discussing WBIP).

Copying a Competitor's Patents Boat Engine

In Volvo Penta of the Americas, LLC v. Brunswick Corp., No. 22-1765, — F.4th — (Fed. Cir. Aug. 24, 2022), the Federal Circuit found that a “single, conclusory sentence and one-paragraph citation [in any expert declaration was] insufficient to show a presumption of nexus”; but that a nexus could be established by evidence showing that the “steerable tractor-type drive as recited in each of the challenged claims” was shown to drive the success of the patented Forward Drive boat engine.

The patentee Volvo Penta has been selling a boat engine drive where the propellers are forward facing, known as a tractor-type stern drive, which pulls the boat forward in contrast to traditional rear-facing propellers.

The patented drive was a commercial success, and the forward-facing propellers provided potential safety advantages for nearby swimmers.

In 2020, Brunswick launched a competing product and also filed an IPR petition challenging Volvo's U.S. Patent No. 9,630,692.

The PTAB granted the petition and held that the claims would have been obvious notwithstanding objective evidence of commercial success and copying that included internal Brunswick documents discussing the need to match the capabilities of the Forward Drive in developing its competing product.

While the Federal Circuit noted that Volvo Penta's arguments on coextensiveness were brief, they were sufficient to show nexus where evidence of product copying tied the unique features of the claimed invention, a tractor-type stern drive, and the evidence of secondary considerations. The Federal Circuit also criticized the PTAB for ambiguous weighing of the evidence (e.g., giving “some weight”) without sufficient explanation.

The Federal Circuit held that the patent owner had “demonstrated a nexus between the claims and its evidence of secondary considerations.”

Professor Crouch commented that this decision “reinforces the notion that patentees should attempt to include some claims that are largely coexistive with its product line, especially in today's world of likely copying.” He further commented that “[i]t reemphasizes potentially important role that objective evidence plays in the obviousness determination, and shows that the nexus requirement should not be applied overly restrictively.”

The patent attorneys at Thomas P. Howard, LLC enforce patents and defend against infringement in litigation nationwide including in Colorado.