Secondary Considerations Carry The Day

Jones Day

We have previously reported (on February 1, on March 1, and on March 30) how patent owners have seen a mixed bag of results in trying to convince PTAB panels that secondary considerations of non-obviousness were sufficient to outweigh a prima facie case of obviousness. Recently, patent owner William Beaumont Hospital successfully relied on secondary considerations in four IPRs. Although the PTAB found that the prior art disclosed the claim limitations in all four IPRs, they determined that Patent Owner’s evidence of secondary considerations overcame the prior art.  (IPR2016-00162, Paper 69; IPR2016-00166, Paper 69; IPR2016-00170, Paper 69; IPR2016-00171, Paper 81 (PTAB May 4, 2017).  The PTAB gave careful consideration to Patent Owner’s evidence, devoting 36 pages of analysis in the IPR2016-00170 Final Written Decision, for example.

Patent Owner asserted four types of secondary considerations: (1) industry praise, (2) long-felt need, (3) commercial success, and (4) copying.  The Board thoroughly reviewed Patent Owner’s evidence, and assigned a strength to each category.  Regarding industry praise, the Board considered several publications and an award Patent Owner received and concluded that the evidence was “very strong.”  Similarly, the Board found that Patent Owner’s evidence of long-felt need to be “very strong.”  Such evidence included an article and an expert declaration.  As to commercial success, the Board was not as impressed, finding Patent Owner’s evidence to be “moderately strong.” 

The Board found that most, but not all, of the identified sales used the claimed invention.  Finally, with regard to copying, the Board held that the evidence was “moderately strong,” including a paper by a third-party citing Patent Owner’s concept.

The Board also carefully analyzed Patent Owner’s evidence of nexus, and Petitioner’s criticisms thereof.  In each instance, the Board found that Patent Owner had shown the required nexus, particularly because there was overwhelming evidence that the devices at issue met all of the relevant claim limitations.


Not surprisingly, reliance on secondary considerations continues to be a hit or miss proposition for patent owners, depending on the particular facts of each case.  Not every patent owner will have the amount of evidence presented in these trials.  But the Board’s detailed analysis in these decisions provides a nice roadmap for patent owners to use when deciding whether to offer evidence of secondary considerations and the required nexus.  Regarding when to present such evidence, it is worth noting that the Patent Owner here did not mention secondary considerations in its preliminary responses, choosing instead to hold it back for the full patent owner responses.

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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