August 2013
Looking Ahead
On August 7, 2013, in Apple Inc. v. International Trade Commission, No. 12-1338 (Fed. Cir. Aug. 7, 2013), the Federal Circuit considered Apple Inc.’s (“Apple”) challenge of the ITC’s determinations of obviousness, anticipation, and noninfringement, ultimately affirming-in-part, reversing-in-part, and vacating-in-part the ITC’s decision. In particular, the Court noted that they were troubled by the ITC’s obviousness analysis, and indicated that all four Graham factors, including objective evidence of secondary considerations, must be considered in the obviousness determination. “The ITC, however, never even mentioned, much less weighed as part of the obviousness analysis, the secondary consideration evidence Apple presented.” Slip op. at 15. Citing numerous examples of industry praise and commercial success regarding the iPhone, the Court found that the ITC’s failure to address these secondary considerations was in error, and the Court vacated the ITC’s determination that certain claims of Apple’s patent would have been obvious.
Judge Reyna concurred-in-part and dissented-in-part, providing insight into his views regarding the purpose and function of objective indicia of nonobviousness. Specifically, Judge Reyna expressed his view that “objective evidence of nonobviousness is objective indicia of innovation.” Reyna
Concurrence-in-Part and Dissent-in-Part at 14. Judge Reyna further opined that “[w]e must not lose sight that a patent, presumed valid, commemorates an inventor’s achievement that entitles her to full and equal consideration of all evidence before a conclusion on the issue of obviousness is reached. Our patent laws are designed to foster optimal incentives for innovation, yet too often the genius of an invention is dismissed by combination of known elements viewed through glasses of hindsight.” Id. Judge Reyna noted, however, that the ITC succumbed to the bias of hindsight as the record included significant objective evidence that Apple’s patent was innovative and therefore nonobvious.
Read the full summary in the next edition of Last Month at the Federal Circuit.
