Federal Circuit Rejects PTAB’s Analysis of Secondary Considerations of Nonobviousness

In Volvo Penta of the Americas, LLC v. Brunswick Corporation, No. 22-1765 (Fed. Cir. Aug. 24, 2023), the Federal Circuit vacated and remanded PTAB’s holding that all claims of U.S. Patent 9,630,692 are unpatentable as obvious.

In 2015, Volvo Penta launched the Forward Drive, which embodied the ’692 patent directed to a tractor-type stern drive for a boat. Brunswick later launched its own drive embodying the ’692 patent and filed an IPR against the ’692 patent the same day. The Board found all claims unpatentable as obvious. Volvo Penta appealed to the Federal Circuit but settled its dispute with Brunswick prior to oral argument. The USPTO intervened.

The Federal Circuit held that the Board’s motivation to combine was supported by substantial evidence, but the Board failed to correctly address secondary considerations of nonobviousness. First, the Federal Circuit found the Board erred in ignoring the Patent Owner’s evidence of nexus showing that the secondary considerations flowed directly from the unique characteristics of the claimed invention. Second, the Federal Circuit determined that the Board’s analysis of the objective evidence factors was “overly vague and ambiguous” and unsupported by substantial evidence. Evidence of copying was only given “some weight” even though copying is typically treated as strong evidence of nonobviousness. Also, the Board assigned multiple factors “some weight,” without sufficiently explaining why they were given the same weight. Finally, the Board did not explain why the aggregate weight of the objective evidence factors was insufficient to overcome the evidence of obviousness. Thus, the Federal Circuit vacated and remanded the Board’s determination.