Patents Post-Grant: Secondary Considerations Rebut Obviousness Finding

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 2010).

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.

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