In Intri-Plex Techs., Inc. v. Saint-Gobain Performance Plastics Rencol Ltd., the PTAB found that the patented invention was not obvious based on the secondary considerations of commercial success and copying, even though it found that the prior art disclosed all of the limitations and that there was motivation to combine the teachings. IPR2014-00309, Paper 83 (Mar. 23, 2014).
The patent was directed primarily at improving disc hard drives, and of particular interest was the design of a tolerance ring. Specifically, the alleged patentable improvement was the provision of a funnel shaped guide portion at the axial end of the tolerance ring (called a “flared” tolerance ring).
The Board evaluated the first three Graham factors of obviousness—scope and content of the prior art, differences between the prior art and the claimed invention, and the level of ordinary skill in the art—and found that these were in favor of a finding of obviousness. The Board then emphasized that in general, secondary considerations of non-obviousness should be evaluated as “part of the whole obviousness analysis, not just an afterthought.”
In this case, the Board evaluated secondary considerations of commercial success and copying. First, the commercial success of flared tolerance rings “weigh[ed] heavily in favor of non-obviousness of the invention.” The Patent Owner produced evidence that adding a flared guide portion caused sales of flared tolerance rings to supplant sales of non-flared tolerance rings and even of other, competing technologies, achieving a dominant position in the relevant market in about six years after introduction.
Second, evidence that the Petitioner copied the Patent Owner’s flared tolerance rings “weigh[ed] in favor” of non-obviousness. As the Board noted, “A party may prove copying by showing that an accused copier had access to the patented product combined with substantial similarity to the patented product.” In this case, the Petitioner’s customers had access to the Patent Owner’s product, and the flared tolerance rings made by the Petitioner were a result of its customers asking the Petitioner to be a “second source” to the Patent Owner.
The Board agreed with the Petitioner that the Admitted Prior Art (disclosures in the patent itself) and another patent reference disclosed all of the claim limitations. The Board also found that there was motivation to combine the teachings of the prior art to arrive at the patented invention. However, the Board concluded that the evidence of secondary considerations was “particularly strong, and outweigh[ed] the other three factors . . . . Indeed we determine that commercial success alone sufficiently outweighs the other three factors, and that our finding of copying merely strengthens further our finding that secondary considerations weight in favor of [the Patent Owner].”
As this final written decision shows, patent owners facing an obviousness challenge should not overlook possible evidence of secondary considerations, as just one of these considerations (such as commercial success) can overcome the other Graham factors and defeat an obviousness challenge.