Rare Victory in Patent Reexamination
Since the amendment of claims is not practical in many instances during patent reexamination (due to intervening rights),
declaration evidence is much more common in patent reexamination as
compared to patent application prosecution. A common form of declaration
evidence introduced in patent reexamination, although only rarely
successful, attempts to identify objective evidence of non-obviousness. MPEP 716.01(a) lists several categories of evidence that may tend to refute an obviousness determination.
-Evidence of criticality or unexpected results
-Evidence of commercial success
-Long-felt but unsolved needs
-Failure of others
-Skepticism of experts
As discussed in past posts, the submission of objective evidence of non-obviousness is often undermined by a chronic failure to persuasively identify a nexus between this evidence and the patented claims. Occasionally, however, evidence of secondary indicia of non-obviousness can be the difference between winning and losing.
Yesterday, in Ex Parte Textron Innovations the
BPAI was persuaded that the certain evidence of secondary
considerations was sufficient to rebut the showing of obviousness, while
other such evidence was not. Textron's U.S. Patent 6,047,530 relates to
gang-type rotary mowers. Crucial in the showing of secondary
considerations pertaining to copying was evidence produced in a previous
litigation of the Textron patent against the Toro company. (D.Del
The Board explained with respect to the secondary indicia relating to copying that:
Here, internal documentation of a major competitor provided crucial
evidence of copying. Of course, absent the benefit of the previous
litigation discovery, such valuable evidence would never have been
available to the Patentee. While this case is illustrative of the
potential game changing value of such evidence in patent reexamination,
it also demonstrative of the practical difficulties
of assembling persuasive evidence in this regard.
View more from Patents Post-Grant.
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