January/February 2014
IP Litigator
Authored by Jeffrey A. Freeman and Jason E. Stach
The storyteller in every litigator loves telling a judge, jury, and nearly anyone else who will listen about how great a client's invention is. Everything that came before the invention was useless, and the invention's arrival ushered in a new dawn of hope and prosperity for mankind. Litigators spend a lot of time developing this type of story. It puts the invention in context and provides a broader narrative than what the patent alone conveys. It also can help establish that an invention is not obvious, as the Supreme Court long ago explained that the same facts trumpeting the invention may also support nonobviousness. [Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).] These facts, which include the invention's commercial success, satisfying a long felt but unsolved need, and the failure of others where the invention succeeds, often are referred to as "secondary considerations." "Secondary considerations" often come later (or secondary) in time, which is the source of their name. Those who do not know the origin of the name often incorrectly believe "secondary" refers to diminished importance. [See, e.g., Truswall Sys. Corp. v. Hydro-Air Engineering, Inc., 813 F.2d 1207, 1212 (Fed. Cir. 1987) ("That evidence [of purported commercial success] is 'secondary' in time does not mean that it is secondary in importance.").] The Federal Circuit has made clear that this is not so, stating that they "may often be the most probative and cogent evidence in the record." [Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed Cir. 1983).] Despite their importance, attorneys often devote only a small portion of their argument to secondary considerations. Why?
The answer is likely historical. For years, the Federal Circuit paid lip service to the importance of secondary considerations, but those considerations almost never played a significant role—much less a determinative one—in the obviousness analysis. The limited pages in a brief and precious minutes at oral argument were better spent on other topics. But the climate is changing. A growing number of Federal Circuit decisions not only discuss the importance of secondary considerations, they rely on them to find inventions not obvious. Now that the Federal Circuit is talking the talk and walking the walk, it is time to rethink the second-class status of secondary considerations.
Secondary considerations have formally been part of obviousness doctrine for decades, and the Federal Circuit recently discussed their importance in "guard[ing] as a check against hindsight bias." [In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1079 (Fed. Cir. 2012).] The goal is to avoid having a fact finder "develop a hunch that the claimed invention was obvious, and then construct a selective version of the facts that confirms that hunch." Fact finders sometimes fall into this trap, but "objective considerations might serve to resist the temptation to read into the prior art the teachings of the invention in issue." [Id.] For this reason, "fact finders must withhold judgment on an obviousness challenge until it considers all relevant evidence, including that relating to the objective considerations." [Id.] Failing to do so may constitute reversible error. [Id. See also Apple Inc. v. ITC, 725 F.3d 1356, 1365 (Fed. Cir. Aug. 7, 2013).]
In Cyclobenzaprine, the Federal Circuit reversed an obviousness decision, finding long-felt need and the failure of others to be "particularly telling . . . when considered as part of the totality of the evidence." [Id. at 1083.] In the Federal Circuit's opinion, the district court appeared to have "fallen into the understandable but improper trap of constructing a selective version of the facts relating to the objective considerations so as to confirm its hunch that the asserted claims were obvious," instead of considering the prior art and the invention in the context of the secondary considerations.
Later cases also highlight the growing importance of secondary considerations. In Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., [699 F.3d 1340 (Fed. Cir. 2012)] the Federal Circuit again relied on secondary considerations to reverse a district court's finding of obviousness, going so far as to find the case to be "precisely the sort of case where the objective evidence 'establish[es] that an invention appearing to have been obvious in light of the prior art was not.'" [Id. at 1349–1355.] Similarly, in Plantronics, Inc. v. Aliph, Inc., [724 F. 3d 1343 (Fed. Cir. July 31, 2013)] the Federal Circuit reversed a district court's summary judgment of obviousness, finding that "when all of the factual disputes regarding the objective evidence are resolved in favor of Plantronics, we cannot hold that the claims would have been obvious as a matter of law." [Id. at 1353–1357.] In Leo Pharmaceutical Products, Ltd. v. Rea, the Federal Circuit reversed the Patent Trial and Appeal Board's obviousness finding in an inter partes reexamination. [Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346 (Fed. Cir. Aug. 12, 2013).] When viewed "through the lens of the objective indicia, as opposed to the hindsight lens used by the Board," the patent would not have been obvious. [Id. at 1359.]
Even in cases where the Federal Circuit has not reversed based on secondary considerations, it has more strictly scrutinized lower tribunals' analysis of this evidence. In the past year, it remanded several cases back to district courts, the U.S. Patent and Trademark Office, and the International Trade Commission for failing to properly consider secondary considerations. [See Osram Sylvania Inc. v. Am. Induction Technologies Inc., 701 F.3d 698, 708- 09 (Fed. Cir. 2012); Apple Inc. v. ITC, 725 F.3d at 1365-67; Rambus Inc. v. Rea, 731 F.3d 1248, 1256-58 (Fed. Cir. Sept. 24, 2013).] In Apple the Federal Circuit was "troubled by the ITC's obviousness analysis" because it found obviousness before even mentioning secondary considerations. [Apple Inc. at 1365.] This error warranted vacating and remanding its decision. In Rambus, the Federal Circuit again stressed the need to consider all evidence before finding obviousness, explaining that secondary considerations can help to "turn back the clock and place the claims in the context that led to their invention."[Rambus, Inc. at 1256 (citing Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1378 (Fed. Cir. 2012)).]
Although practitioners often analyze the facts underlying secondary considerations, they frequently give them short shrift when arguing against obviousness. With such cursory treatment, it is hard to blame judges for discussing this evidence in passing, often after already reaching an obviousness determination. Understandable or not, this approach is incorrect, and it often begins with practitioners not properly focusing the judge on the correct role of secondary considerations.
In light of recent Federal Circuit decisions, practitioners should consider using the facts supporting secondary considerations as more than just storytelling devices to get on the good side of a judge or jury. Fleshing out secondary considerations as a more central part of a larger argument supporting nonobviousness should increase the likelihood that the judge will focus on this evidence in reaching a decision. In the right case, it may make the difference between winning and losing. Also consider referring to secondary considerations as "objective indicia of nonobviousness" or "objective evidence of nonobviousness." It may help dissuade the judge from minimizing the value of the evidence, and many of the more recent Federal Circuit decisions favor this terminology over the more traditional term "secondary considerations."
Finally, when confronting an adverse obviousness ruling, consider whether the original forum gave sufficient consideration to secondary considerations and did so before reaching the obviousness conclusion. If not, the case may be remanded or, if the considerations are strong enough, reversed.
The Federal Circuit appears intent on elevating secondary considerations beyond their former second-class status, but practitioners must take the first step by creating a complete record below and focusing judges on the proper role secondary considerations play in an obviousness analysis.
Reprinted with permission from the IP Litigator, published by Aspen Law and Business. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
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