Evidence of Commercial Success and the Prior Art

| Nathan D. Reeves


Before Taranto, Chen, and Stoll.  Appeal from the Patent Trial and Appeal Board.

Summary: Evidence of commercial success that relates entirely to an individual claim element that was disclosed in the prior art cannot support a finding of non-obviousness.

Yita LLC challenged the claims of two U.S. patents assigned to MacNeil IP LCC before the Patent Trial and Appeal Board in two inter partes reviews (IPRs).  In the first IPR, the Board determined that a relevant artisan would have been motivated to combine the teachings of the prior art references and had a reasonable expectation of success in doing so.  However, the Board found MacNeil’s evidence of secondary considerations, which was linked to a particular claim limitation, compelling and indicative of non-obviousness, thus holding the claims not unpatentable for obviousness.  Yita appealed.

On appeal, the Federal Circuit reversed the Board’s decision regarding the first IPR.  The Federal Circuit held that the Board offered legally incorrect reasoning for rejecting Yita’s obviousness challenge based on MacNeil’s secondary-consideration evidence.  The Federal Circuit recognized that secondary-consideration evidence “may be linked to an individual element” of the claimed invention or “to the inventive combination of known elements” in the prior art.  However, MacNeil’s evidence of commercial success related entirely to an individual element, which was found to be disclosed in the prior art.  Consequently, the Federal Circuit held that the evidence of success was not pertinent and did not undermine the obviousness of the claimed invention.  

Regarding the second IPR, the Federal Circuit affirmed the Board’s decision not to consider an argument raised for the first time by Yita in a footnote in its Petitioner’s Reply.

Editor: Paul Stewart