Following the Supreme Court’s rollback of the teaching-suggestion-motivation litmus test for obviousness, many believed secondary considerations of nonobviousness would receive more attention in the Graham obviousness analysis. After living with KSR v. Teleflex for nearly two years, we’re beginning to see opinions from the Court of Appeals for the Federal Circuit that discuss secondary considerations in light of KSR. The opinions are beginning to reveal an unexpected twist, though – secondary considerations might be beginning to wither.
Consider the court’s recent opinion in Sundance v. DeMonte Fabricating. After characterizing the claimed invention as “the work of the skillful mechanic, not that of the inventor,” the court flatly rejected the district court’s consideration of secondary considerations of nonobviousness. “Secondary considerations of nonobviousness—considered here by the district court—simply cannot overcome this strong prima facie case of obviousness.”
Admittedly, the technology involved in Sundance is relatively simple and the prior art quite clear. Nevertheless, a categorical exclusion of the possibility that secondary considerations could overcome a showing of obviousness seems like dangerous precedent. Indeed, it even seems to contradict KSR, which uses language that clearly recognizes the possibility represented by secondary considerations (“If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.” (emphasis added))
Is it possible this willingness to close the door provided by secondary considerations extends beyond simple technologies and close prior art? Another recent case might provide insight. Less than a month after deciding Sundance, the court reiterated – in dicta – the principle that ignoring secondary considerations might be warranted in certain “strong” cases of obviousness. In Friskit v. RealNetworks, the court rejected the argument that the lower court improperly ignored evidence of secondary considerations. According to the court, “’secondary consideration evidence’ such as commercial success, copying, and long-felt need does not necessarily overcome a strong showing of obviousness….” Ultimately, the court did turn to the ’secondary consideration evidence,’ only to dismiss it in a single sentence: “In any event, Friskit’s secondary consideration evidence does not provide persuasive support for the nonobviousness of “programmatic” and “direct” control.”
The court even seems willing to attack specific secondary considerations of nonobviousness. In Tokyo Keiso v. SMC Corporation, the court again pointed to a “strong showing of obviousness” as support for affirming a district court’s summary judgment of obviousness. In Tokyo Keiso, the patentee argued that a ‘long-felt need’ for the claimed invention demonstrated the nonobviousness of the invention. The district court had rejected this argument with novel reasoning – the relevant business involved a “niche market” and, as such, a delay in improvements to the prior art was “not surprising.” While not explicitly addressing this rationale for rejecting the secondary considerations argument, the court implicitly endorsed it, indicating that “the California district court did not err in finding no genuine issue of material fact supportive of [the patentee's] case.”
KSR has, without question, ushered in a new era for obviousness law. With these recent cases from the Federal Circuit, it’s becoming clear that the revolution might extend to the scope and applicability of secondary considerations of nonobviousness.
Related posts:
- Boston Scientific v. Cordis: post-KSR obviousness without the Graham analysis
- Our pro-patent neighbors to the North deliver a victory for big Pharma
- While the Supreme Court considers KSR v. Teleflex, one hand of the Federal Circuit polishes the TSM test and the other tarnishes it
- CAFC: Hey reformers…obviousness law is just fine, thank you
- KSR v. Teleflex – The Supreme Court reveals its frustration with the motivation/suggestion test…and contempt for the Federal Circuit