[co-author: Megan Mahoney]
In a recent inter partes review proceeding, the Patent Trial and Appeal Board relied on compelling evidence of secondary considerations to hold all challenged claims not unpatentable under 35 U.S.C. § 103. Specifically, the PTAB found the patent owner’s evidence of industry praise and acceptance sufficiently persuasive to conclusively decide the obviousness issue.
The patent at issue discloses a brush-like hair straightener that uses protruding heating elements and spacers to quickly straighten hair without burning the user’s scalp. The petitioner challenged all claims as obvious over several combinations of prior art. In response, the patent owner proffered objective evidence of nonobviousness, including evidence of long-felt but unmet need, failure of others, skepticism, industry praise and acceptance, copying, and commercial success.
As an initial matter, the PTAB agreed with the petitioner that a person of ordinary skill in the art would have modified one prior art reference and combined it with the teachings of a second prior art reference to create the claimed invention. However, after evaluating the secondary considerations, the PTAB concluded that the evidence of industry praise and acceptance, on its own, was sufficiently compelling to render all claims nonobvious.
For secondary considerations, the patent owner pointed to one of its products—the DAFNI brush—as evidence of nonobviousness. The patent owner argued that the DAFNI brush is entitled to a presumption of nexus with the claimed invention because it meets all limitations of the claimed invention, and is therefore coextensive with the invention. Further, the patent owner argued that industry praise and acceptance of the DAFNI brush is a direct result of the unique characteristics of the claimed invention, namely the plurality of elongate heating elements and elongate insulating spacers that allow users to quickly straighten hair without burning the skin. As support for these assertions, the patent owner submitted several articles from popular magazines in which the DAFNI brush was praised for its ability to quickly and effectively straighten hair while protecting a user’s scalp, testimony that the enhanced speed and safety are due to the claim elements, numerous accolades and recognition from popular home and beauty magazines, and use of the DAFNI brush by professional hairstylists, celebrities, and prominent beauty influencers.
The petitioner responded that the DAFNI brush could not be coextensive with the independent claim because the product contained additional unclaimed features. The petitioner further argued that the industry praise and acceptance did not result from the claimed features, but instead is attributable to the unclaimed features, prior art features, aesthetics, marketing, and brand name. However, the petitioner did not provide evidence to support the argument that the DAFNI brush’s success was due to unclaimed features or other extraneous factors.
Ultimately, the PTAB determined that the patent owner had demonstrated a nexus between the DAFNI brush and the claimed invention by showing that the evidence of secondary considerations directly resulted from the unique characteristics of the claimed invention. The PTAB therefore found the patent owner’s considerable and largely unrebutted evidence of industry praise and acceptance to be compelling evidence of nonobviousness. As such, the PTAB concluded that given the compelling evidence of secondary considerations, the tenuous prior art combinations were not sufficient to render any of the challenged claims obvious.
Practice Tip: When supporting or challenging obviousness grounds, it is important not to neglect evidence of secondary considerations. In particular, where the claimed invention includes a popular consumer product, industry praise and acceptance that directly results from the claimed features may be sufficient to overcome an obviousness challenge. Any party attempting to address secondary considerations, however, must point to actual evidence and avoid unsupported assertions.
Ontel Prods. Corp. v. Guy A. Shaked Invs. Ltd., IPR2021-00052, Paper 38 (PTAB Apr. 18, 2022)
