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In order to accord substantial weight to secondary considerations in an obviousness analysis, the evidence of secondary considerations must have a nexus' to the claims, i.e., there must be a legally and factually sufficient connection between the evidence and the patented invention. The patentee bears the burden of showing that a nexus exists. To determine whether the patentee has met that burden, the court consider the correspondence between the objective evidence and the claim scope.
Appellant FOX Factory, Inc. ("FOX") appealed the decisions of the Patent Trial and Appeal Board ("Board") in two inter partes reviews ("IPRs") of claims 1-6 and 13-19 ("the challenged claims") of U.S. Patent No. 9,182,027 ("the '027 patent"). The Board found that the prior art references asserted by FOX disclose all the limitations of the '027 patent's independent claims and that a skilled artisan would have been motivated to combine the asserted prior art. The Board nevertheless concluded, based on its analysis of secondary considerations, that FOX had not shown that the challenged claims would have been obvious.
Did the Board err in presuming nexus between the evidence of secondary considerations and the independent claims?
The court vacated and remanded the judgment of the Board because the Board erroneously presumed nexus between the evidence of secondary considerations and the independent claims. On remand, appellee would have the opportunity to prove nexus between the challenged independent claims and the evidence of secondary considerations.