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Secondary Considerations

Posted Monday, April 23, 2012 by Mike Cicero

A few weeks ago I wrote about the most common type of rejection that is faced by patent applicants, the obviousness rejection created by 35 U.S.C. § 103 (Click here to read Obviousness After KSR v. Teleflex). In making an obviousness rejection, an examiner asserts that the differences between the claims and the prior art “are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill” in the applicable technology. 35 U.S.C. §103. This analysis is done using the four-part test set forth in Graham v. John Deere Co. which requires determinations of (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed invention and the prior art; and (4) the objective evidence of non-obviousness. 383 U.S. 1 (1966). After the first three Graham factors are explored and a prima facie case of obviousness is articulated, the party seeking to obtain or uphold a patent must produce objective evidence of non-obviousness under the fourth factor. However, without doing so a patent application may be rejected and a patent being challenged in the courts may be invalidated.

In the case Iron Grip Barbell Co., Inc. v. USA Sports, Inc. the court explored the fourth Graham factor but ultimately held that the patent at issue was invalid due to being obvious. 392 F.3d 1317 (Fed. Cir. 2004). Iron Grip Barbell Co. (Iron Grip) is a manufacturer of weight plates and was the assignee of a patent which claimed, in basic terms, a weight plate for physical fitness with exactly three elongated handle openings for grasping the weight by a single hand to transport it. Iron Grip brought a patent infringement claim against USA Sports for manufacturing a weight plate having three handle openings and USA Sports defended on the basis that the patented claims were obvious and, therefore, the patent was invalid. The first three of the Graham factors together indicated that the patented claims were obvious and, as a result, the court held that “absent substantial evidence of pertinent secondary factors supporting patentability” the claims would be invalid. Id. The court went on to consider whether Iron Grip could demonstrate sufficient secondary evidence of non-obviousness.

The factors that this court cited as relevant to the issue of secondary considerations included commercial success, satisfaction of a long-felt need, and copying by others. Iron Grip was unable to persuade the court through evidence of the secondary considerations that the patent claims were non-obvious.

The evidence of commercial success that Iron Grip offered was that six competitors began to offer weight plates with three grips, and that three of those competitors entered license agreements with respect to the patent in question. “Commercial success is relevant because the law presumes an idea would successfully have been brought to market sooner, in response to market forces, had the idea been obvious to persons skilled in the art.” Merck & Co., Inc. v. Teva Pharmaceuticals USA, Inc., 395 F.3d 1364, 1376 (Fed. Cir. 2005). However, in order for commercial success to be used as evidence of non-obviousness there must be a nexus between the commercial success and the actual technical innovations of the claimed invention. If the product is brought to market by a popular brand and the overall popularity is the source of the commercial success of the claimed product, not the product’s technological advancement, then this would not be viewed as proof of non-obviousness. Here, the court did not view the license agreements as strong evidence that the commercial success because Iron Grip could not show the required nexus. The court held that “without a showing of nexus, the mere existence of … licenses is insufficient to overcome [a strong prima facie case of obviousness].” Iron Grip, . 392 F.3d at 1325. Therefore, this factor did not weigh in favor of Iron Grip.
Although Iron Grip showed that before its patent issued there was no three grip plate on the market, the court found that Iron Grip was unable to “[present any] evidence of a long-felt need for three-grip weight plates or the failure of others.” Id. at 1322. The court reasoned that the passage of time alone cannot be used to support a finding of non-obviousness under this factor. As such, this factor did nothing to bolster Iron Grips contention that the patented claims were non-obvious.

Finally, Iron Grip argued that because USA Sports later began to produce a three grip plate there was evidence of copying by others. Interestingly, the court noted that “every competing product that arguably fails within the scope of a patent is evidence of copying. Otherwise every infringement suit would automatically confirm the non-obviousness of the patent.” Id. at 1325. In this case, the court was not persuaded that any competitors had copied the invention in the relevant sense, and so this factor as well did not cut in the favor of Iron Grip. Therefore, the patent was held invalid as being obvious under §103.

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