The Board and Secondary Considerations

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Commercial Success

In Riverbed Technology, Inc. v. Silver Peak Systems, Inc., IPR2014-00245, Paper 19 (August 22, 2014) the Board explained;

Commercial success typically is shown with evidence of “significant sales in a relevant market.” Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006) (citation omitted). Furthermore, to establish a proper nexus between a claimed invention and the commercial success of a product, a patent owner must offer “proof that the sales [of the product] were a direct result of the unique characteristics of the claimed invention—as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter.”  In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). In addition, “if the commercial success is due to an unclaimed feature of the device,” or “if the feature that creates the commercial success was known in the prior art, the success is not pertinent.”  Ormco, 463 F.3d at 1312; see also In re Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011) (requiring a determination of “whether the commercial success of the embodying product resulted from the merits of the claimed invention as opposed to the prior art or other extrinsic factors”).

Copying 

In Riverbed Technology, Inc. v. Silver Peak Systems, Inc., IPR2014-00245, Paper 19 (August 22, 2014) the Board explained;

Copying as objective evidence of nonobviousness requires evidence of effort to replicate a specific product. Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010); Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004).

 

 


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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