PTAB Convinced by Secondary Considerations to Find Claims Non-Obvious in IPR
On January 19, 2017, the Board issued a final written decision in World Bottling Cap, LLC v Crown Packaging Technology, Inc. (IPR2015-01651) finding the challenged claims were not unpatentably obvious over the references asserted in the IPR because the patent owner had submitted sufficient evidence of secondary considerations to demonstrate non-obviousness. This case represents a rare instance in which the patent owner’s evidence of secondary considerations were sufficient to overcome the petitioner’s case of obviousness.
Patent owner Crown Packaging Technology's claims were directed to a steel bottle cap, where the key claim element was the hardness of the steel. Petitioner World Bottling Cap asserted a first prior art reference that taught the overall process of forming a bottle cap and a second reference teaching the desirability of a steel bottle cap having the hardness of steel recited in the claims. But the patent owner argued that the two references could not be combined because the hard steel of the second prior art reference would not work in the process of the first prior art reference. The Board disagreed with the patent owner and found that the second prior art reference's teachings were sufficient to lead one of ordinary skill in the art to the claimed bottle cap, even if there would have been some associated disadvantages.
The Board then turned to the patent owner's evidence of secondary considerations of non-obviousness. The patent owner had submitted evidence of commercial success, industry praise, and copying by others. The Board first determined that there was a strong nexus between patent owner's evidence and patent owner's claim invention.
As for the specific evidence of non-obviousness, patent owner submitted information of an increase in market share upon introduction of the new bottle cap, despite increasing international competition. The Board credited the patent owner’s evidence, particularly because the petitioner’s rebuttal arguments had no evidentiary support and the patent owner’s evidence had a strong nexus to the claimed invention. Regarding industry praise, the Board found that the industry had long been attempting to make thinner, harder bottle caps, but could not overcome technical limitations.
The Board held that the evidence showed patent owner had developed a new way to use thinner, harder bottle caps that overcame these technical limitations. The Board also found that there was a strong nexus between patent owner's evidence their claimed invention. This case gives more hope to patent owners who want to rely upon secondary considerations to demonstrate that their claims are not obvious over petitioner’s prior art.
