Claimed Combination "As A Whole" May Support Nexus Between Claimed Invention and Commercial Success Even If Individual Elements Are Found In Prior Art
After recently reminding that in order for commercial success of an invention to support non-obviousness, the required nexus cannot rest solely on a claim element that is known in the prior art, the U.S. Court of Appeals for the Federal Circuit has further reminded patent owners and applicants that nexus may be established upon consideration of the claimed combination as a whole, even if individual elements of the claim are found in the prior art.
We recently explained that in Yita LLC v. MacNeil IP LLC, the U.S. Court of Appeals for the Federal Circuit (CAFC) recently reminded patent owners and applicants that in order for commercial success of an invention to support nonobviousness, the required nexus between the claimed invention and its commercial success cannot rest solely on a claim element that is known in the prior art.[1] Now, the CAFC has further reminded in Volvo Penta of the Americas, LLC v. Brunswick Corporation[2] that the nexus analysis need not be limited to a discussion of only novel features. Instead, it is important in an appropriate case to consider the invention as a whole, rather than on a limitation-by-limitation basis. This may be so even where all of the individual claim limitations are separately found in the prior art.
Volvo Penta owns patents directed to its extremely successful Forward Drive marine propulsion system, a tractor-type drive in which one or more forward, bow-facing propellers produce a propulsive force to pull the boat through the water. In contrast, a drive may alternatively be a pushing-type drive, where the propellers face rearward relative to the boat and generate a propulsive force that pushes the boat through the water. One of the claimed features of the invention is that the steering axis of the drive is offset forward of its vertical drive shaft. As a result of this offset, in combination with the other structural features recited in the claims, the Volvo Penta Forward Drive became especially popular for use in boats designed for wakeboarding and other water sports. In response to the rapid popularity of the Forward Drive propulsion system, Brunswick introduced its Bravo Four S tractor-type drive, which it conceded embodied Volvo Penta’s patent.
Brunswick filed a petition for inter partes review (IPR) challenging Volvo Penta’s patent on grounds of obviousness under 35 U.S.C. § 103. As the patent statute says, “a patent for a claimed invention may not be obtained . . . if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.” Obviousness is a question of law based on underlying facts. Such facts, known as the Graham factors, include the scope and content of the prior art, differences between the prior art and the claims, the level of ordinary skill, and relevant evidence of secondary considerations. Secondary considerations (i.e., objective indicia of non-obviousness) may include evidence of copying, commercial success, long-felt but unsolved need, industry praise, failure of others, unexpected results, and skepticism of experts.
As we previously reported, when a patent owner (or applicant) asserts that commercial success supports nonobviousness, the proponent must establish that there is a nexus, that is, a legally and factually sufficient connection, between the claimed invention and the commercial success of that invention.
In the IPR, the Patent Trial and Appeal Board (PTAB or Board) reviewed Brunswick’s asserted prior art in support of its obviousness challenge and found that each element of the challenged claims was disclosed in two prior art references, a finding that Volvo Penta did not dispute. The Board further determined that a relevant artisan would have been motivated to combine the teachings of the two prior art references with a reasonable expectation of success in order to arrive at the claims of the Volvo Penta patent. The CAFC agreed that the Board’s finding of motivation to combine was supported by substantial evidence, as well.
When it considered Volvo Penta’s evidence of commercial success, however, the PTAB concluded that Volvo Penta had failed to establish the required nexus. In particular, the PTAB criticized Volvo Penta for not actually identifying the “unique characteristics” of the claimed combination or the “merits of the claimed invention” that were tied to the objective evidence, notwithstanding Volvo Penta’s argument and its evidence cited in support that the “steerable tractor-type drive as recited in each of the challenged claims” was shown to drive the success of the Forward Drive propulsion system. At the oral hearing before the CAFC, counsel for the USPTO cited the court’s recent Yita LLC decision and argued that to the extent Volvo Penta identified specific claim elements as unique characteristics of the claimed invention, those elements already existed in the prior art and therefore could not be relied upon to support a finding of nexus. The CAFC found two faults in the USPTO’s argument.
First, in its Final Written Decision the Board did not rely on the admitted existence of each of the claim elements separately in the prior art, so that issue was not properly raised and could not be a basis for affirmance. Second, the CAFC further explained that even if the Board had relied upon that argument, it would be legally flawed. Noting that the Board itself had stated (but then apparently misapplied) the correct legal principle, the CAFC reiterated that “a nexus analysis need not be limited to a discussion of only novel features.” The CAFC then quoted a 2016 decision stating that “proof of nexus is not limited to only when objective evidence is tied to the supposedly ‘new’ feature(s).”[3] The court concluded: “It is instead important to consider ‘the invention as a whole,’ rather than on a ‘limitation-by-limitation’ basis.”
As a result, the Board’s finding of a lack of nexus was rejected and the CAFC held that Volvo Penta demonstrated a nexus between the claims and its objective evidence of nonobviousness, i.e., secondary considerations including copying by Brunswick and commercial success of Volvo Penta’s Forward Drive system. The Board’s Final Written Decision was vacated and the case was remanded for further consideration by the PTAB in view of the CAFC’s opinion.
In light of the different outcomes in the CAFC’s Yita and Volvo Penta decisions, the question fairly asked is whether those outcomes were the result of different facts, or instead due to different legal strategies and arguments raised by the patent owner. In Yita, recall that that the required nexus was argued to be established exclusively by a single claim element, rather than by the “invention as a whole.” Under controlling law, it is not possible to establish nexus that way when that single claim element exclusively relied upon is found in the prior art. However, had the patent owner instead argued that the nexus was related to the invention as a whole, it would not have mattered that any, or even all (as in Volvo Penta’s case), of the claim elements were individually found in prior art references raised by the patent challenger. The importance of careful formulation of one's legal strategy in IPR proceedings is possibly laid bare by this comparative review of the CAFC’s recent Yita and Volvo Penta decisions.
