Weighty Considerations: Objective Indicia of Non-obviousness

| Alistair J. McIntyreBrandon G. Smith

Volvo Penta of the Americas, LLC, v. Brunswick Corp.

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

Summary: The Board must consider the combined weight of multiple objective indicia of non-obviousness and must provide an explanation for the weight attributed to each objective indicia proven by the patent owner.

Brunswick petitioned for inter partes review of a patent owned by Volvo Penta, asserting that the patent was obvious. Volvo Penta relied on objective indicia of non-obviousness to overcome any prima facie case of obviousness.  It was undisputed that Volvo Penta’s and Brunswick’s products embodied the claimed invention. Volvo Penta’s patent owner response contained one sentence with a cite to a single paragraph of an expert report addressing a presumption of nexus based on alleged co-extensiveness of those products with the claimed invention. The Board found this argument was too conclusory to meet Volvo Penta’s burden. The Board further rejected Volvo Penta’s argument that a nexus exists independent of the presumption, finding that Volvo Penta failed to identify the characteristics of the invention that were tied to the objective evidence. Despite finding a lack of nexus, the Board alternatively considered certain objective indicia. In its final written decision, the Board assigned certain objective indicia “some  weight” and others “very little weight,” but found, overall, that the factors weighed only “somewhat” in favor of non-obviousness. Accordingly, the Board concluded the claims would have been obvious. Volvo Penta appealed.

The Federal Circuit vacated and remanded the Board’s decision. The court affirmed that Volvo Penta was not entitled to a presumption of nexus because its argument to the Board was too conclusory. However, the court found that Volvo Penta proved a nexus independent of the presumption through unrebutted argument and evidence that features of the challenged claims drove commercial success of the product. The Federal Circuit also determined that the Board erred in its alternative analysis of the objective indicia because its assignment of various weights to the objective indica “was overly vague and ambiguous” and not supported by substantial evidence.  The court found that the Board further erred by failing to address the combined weight of the objective indicia.  Because of the Board’s errors regarding objective indicia of non-obviousness, the court vacated and remanded for findings and consideration of the totality of the evidence regarding secondary considerations. 

Editor: Paul Stewart