Why not to be conclusory!
| September 6, 2023
Volvo Penta of the Ams. LLC v. Brunswick Corp.
Decided: August 24, 2023
Before Moore, Chief Judge, Lourie and Cunningham, Circuit Judges. Authored by Chief Judge, Lourie.
Summary:
The CAFC vacated a Final Written Decision of the Patent Trial and Appeal Board (PTAB) holding all claims of U.S. Patent 9,630,692 (the “’962 patent”), owned by Volvo Penta, unpatentable as obvious. The court remanded the decision for further evaluation of objective indicia of non-obviousness that the Board had not adequately considered.
- A steerable tractor-type drive for a boat, comprising:
a drive support mountable to a stern of the boat;
a drive housing pivotally attached to the support about a steering axis, the drive housing having a vertical drive shaft connected to drive a propeller shaft, the propeller shaft extending from a forward end of the drive housing;
at least one pulling propeller mounted to the propeller shaft,
wherein the steering axis is offset forward of the vertical drive shaft.
The ’962 patent is directed to a boat drive, designed to provide a “pulling-type” or “forward facing drive” positioned under the stern of the boat. Claim 1 of the ’692 patent, reproduced below, is representative.
In 2015, Volvo Penta launched its commercial embodiment of the ’692 patent, the ‘Forward Drive.’ This product became extremely successful once available, particularly for wakesurfing and other water sports.
In August 2020, Brunswick Corp. (“Brunswick”) launched its own drive that also embodied the ’692 patent, the ‘Bravo Four S.’ The same day that Brunswick launched the Bravo Four S, it petitioned for inter partes review of all claims of the ’692 patent. Relevant to this appeal, Brunswick asserted that the challenged claims would have been obvious based on the references, Kiekhaefer and Brandt. Kiekhaefer is a 1952 patent assigned to Brunswick and directed to an outboard motor that could have either rear-facing or forward-facing propellers. Brandt is a 1989 patent assigned to Volvo Penta and directed to a stern drive with rear-facing propellers.
Volvo Penta position was not that the references combined failed to disclose all the claim elements, but rather that there was a lack of motivation to combine said references. Volvo Penta further proffered evidence of six objective indicia of non-obviousness: copying, industry praise, commercial success, skepticism, failure of others, and long-felt but unsolved need.
Ultimately, the Board had found Volvo Penta’s position unpersuasive asserting that sufficient motivation was found and that Volvo Penta’s objective evidence of secondary considerations was insufficient to outweigh Brunswick’s “strong evidence of obviousness.”
Accordingly, Volvo Penta raises three main arguments on appeal: (1) that the Board’s finding of motivation to combine was not supported by substantial evidence, (2) that the Board erred in its determination that there was no nexus, and (3) that the Board erred in its consideration of Volvo Penta’s objective evidence of secondary considerations of nonobviousness.
The court discussed each one in turn:
- Motivation:
The court began:
The ultimate conclusion of obviousness is a legal determination based on underlying factual findings, including whether or not a relevant artisan would have had a motivation to combine references in the way required to achieve the claimed invention. Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1331 (Fed. Cir. 2019) (citing Wyers v. Master Lock Co., 616 F.3d 1231, 1238–39 (Fed. Cir. 2010)).
Volvo Penta first argued that the Board ignored a number of assertions in its favor, including: (1) that Brunswick, despite having knowledge of Kiekhaefer for decades, never attempted the proposed modification itself; (2) that Brunswick’s proposed modification would have entailed a nearly total and exceedingly complex redesign of the drive system; (3) the complexity of and difficulty in shifting the vertical drive shaft of Kiekhaefer; and (4) that Brunswick itself attempted to make its proposed modification yet failed to create a functional drive. The court disagreed on all points.
The Board acknowledged the testimony of Volvo Penta’s expert that a “complete redesign of Brandt” would be necessary, including “over two dozen modifications,” but ultimately found that not all of the identified changes would have been required to arrive at the claimed invention.
Volvo Penta also argued that the Board’s reliance on Kiekhaefer for motivation to combine was misplaced. The Board had relied on Kiekhaefer teaching that a “tractor-type propeller” is “more efficient and capable of higher speeds.” Volvo Penta argued this is not the metric by which recreational boats are measured.
However, again, the court disagreed stating that while ‘it is likewise not conclusive that speed may not be the primary or only metric by which recreational boats are measured. Substantial evidence supports a finding that speed is at least a consideration.’
The CAFC thus upheld the Board’s finding that motivation to combine was supported by substantial evidence.
II. Nexus
The Court began:
For objective evidence of secondary considerations to be relevant, there must be a nexus between the merits of the claimed invention and the objective evidence. See In re GPAC, 57 F.3d 1573, 1580 (Fed. Cir. 1995). A showing of nexus can be made in two ways: (1) via a presumption of nexus, or (2) via a showing that the evidence is a direct result of the unique characteristics of the claimed invention.
A patent owner is entitled to a presumption of nexus when it shows that the asserted objective evidence is tied to a specific product that “embodies the claimed features, and is coextensive with them.” Brown & Williamson Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000).When a nexus is presumed, “the burden shifts to the party asserting obviousness to present evidence to rebut the presumed nexus.” Id.; see also Yita LLC v. MacNeil IP LLC, 69 F.4th 1356, 1365 (Fed. Cir. 2023). The inclusion of noncritical features does not defeat a finding of a presumption of nexus. See, e.g., PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 734, 747 (Fed. Cir. 2016) (stating that a nexus may exist “even when the product has additional, unclaimed features”)
Initially, for a presumption of nexus, there is a requirement that the product embodies the invention and is coextensive with it. Brown & Williamson, 229 F.3d at 1130. The CAFC noted that neither party disputed that both the Forward Drive and the Bravo Four S embodied the claimed invention. See, e.g., J.A. 1211, 117:10–25, but emphasized that coextensiveness is a separate requirement. Fox Factory, 944 F.3d at 1374.
Volvo Penta, as Brunswick and the Board note, did not provide sufficient argument on coextensiveness. Rather, it submitted a mere sentence that the Forward Drive is a “commercial embodiment” of the ‘692 Patent and “coextensive with the claims”. The Board found this argument “conclusory” and the CAFC agreed. As above, “[t]he patentee bears the burden of showing that a nexus exists.” Fox Factory, 944 F.3d at 1373 (quoting WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999)).
However, the court found that the Boards finding of a lack of nexus, independent of a presumption, not supported by evidence. Specifically, the Board found that Brunswick’s development of the Bravo Four S was “akin to ‘copying,’” and that its “own internal documents indicate that the Forward Drive product guided [Brunswick] to design the Bravo Four S in the first place.” Indeed, the undisputed evidence, as the Board found, shows that boat manufacturers strongly desired Volvo Penta’s Forward Drive and were urging Brunswick to bring a forward drive to market.
The court found that there is therefore a nexus between the unique features of the claimed invention, a tractor-type stern drive, and the evidence of secondary considerations.
III. Objective Indicia
The court began:
Objective evidence of nonobviousness includes: (1) commercial success, (2) copying, (3) industry praise, (4) skepticism, (5) long-felt but unsolved need, and (6) failure of others. See, e.g., Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling U.S., Inc., 699 F.3d 1340, 1349–56 (Fed. Cir. 2012). The weight to be given to evidence of secondary considerations involves factual determinations, which we review only for substantial evidence. In re Couvaras, 70 F.4th 1374, 1380 (Fed. Cir. 2023).
The court found that “the Board’s analysis of [this] objective indicia of non-obviousness, including its assignments of weight to different considerations, was overly vague and ambiguous.”
For example, despite recognizing the importance of Brunswick internal documents demonstrating deliberate copying of the Forward Drive, and “finding copying, the Board only afforded this factor ‘some weight.’” The Federal Circuit held that this “assignment of only ‘some weight’” was insufficient in view of its precedent, which generally explains that “copying [is] strong evidence of non-obviousness,” and the “failure by others to solve the problem and copying may often be the most probative and cogent evidence of non-obviousness.” Panduit Corp. v. Dennison Mfg. Co., 774 F.2d 1082, 1099 (Fed. Cir. 1985), cert. granted, judgment vacated on other grounds, 475 U.S. 809 (1986) (“That Dennison, a large corporation with many engineers on its staff, did not copy any prior art device, but found it necessary to copy the cable tie of the claims in suit, is equally strong evidence of nonobviousness.”).
Regarding commercial success, the Board recognized that the record supported, and Brunswick did not contest, that boat manufacturers “strongly desired Volvo Penta’s Forward Drive and were urging Brunswick to bring a forward drive to market.” Nevertheless, the Board only afforded this factor “some weight.” The court stated that this finding was not supported by substantial evidence.
Regarding industry praise, the Board found that although the exhibits submitted “provide praise for the Forward Drive more generally, including mentioning its forward facing propellers, as claimed in the ’692 patent,” it also found that “many of the statements of alleged praise specifically discuss unclaimed features, such as adjustable trim and exhaust-related features.”
The court noted that the Board assigned industry praise, commercial success, and copying all “some weight” without explaining why it gave these three factors the same weight. The court concluded this was ambiguous, and so the Board had “failed to sufficiently explain and support its conclusions. See, e.g., Pers. Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993 (Fed. Cir. 2017) (remanding in view of the Board’s failure to “sufficiently explain and support [its] conclusions”); In re Nuvasive, Inc., 842 F.3d 1376, 1385 (Fed. Cir. 2016) (same).”
Next, the Court also determined that the Board failed to properly evaluate long-felt but unresolved need. In evaluating the evidence presented by Volvo Penta, the Board dismissed it as merely describing the benefits of the product without indicating a long-felt problem that others had failed to solve. Volvo Penta had cited articles in support of its position, but the Board, without explanation, gave the arguments very little weight. Upon review, the CAFC stated that the articles identified more than mere benefits and “indisputably identifies a long-felt need: safe wakesurfing on stern-drive boats.”
The CAFC touches upon the relevance of the time since the issuance of cited references. The CAFC agreed with the Board that “the mere passage of time from dates of the prior art to the challenged patents” does not indicate nonobviousness “their age can be relevant to long-felt unresolved need.” See Leo Pharm. Prods., 726 F.3d 1346, 1359 (Fed. Cir. 2013) (“The length of the intervening time between the publication dates of the prior art and the claimed invention can also qualify as an objective indicator of nonobviousness.”); cf. Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1338 (Fed. Cir. 2016), overruled on other grounds by Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). The CAFC stated that other factors such as “lack of market demand” can explain why a product was not developed for years, even decades after the prior art. However, when, as here, “evidence demonstrates that there was a market demand for at least” a period of that time (here, the market demand only existed for ten of the fifty years from the prior art reference), the fact that Brunswick itself owned one of the asserted should not be overlooked. That, it is certainly relevant that the asserted patents were long in existence and not obscure, but rather owned by the parties in this case.
Finally, the CAFC held that the Board’s ultimate conclusion that “Brunswick’s “strong evidence of obviousness outweighs Patent Owner’s objective evidence of nonobviousness” lacked a proper explanation for said conclusion.
Thus, ultimately the Court found that the Board failed to properly consider the evidence of objective indicia of nonobviousness and so vacated and remanded for further consideration consistent with the opinion.
Comments:
Motivation to combine a reference does not require a recognition of the primary or only metric by which an invention is measured, so long as it is at least a consideration.
Regarding a presumption of nexus, be reminded that (i) coextensiveness is a separate element and should be addressed as such; and that (ii) “[t]he patentee bears the burden of showing that a nexus exists” and this requires more than conclusory statements. Similarly, the PTO must support a finding of a lack of nexus with evidence not mere conclusory statements.
It also serves as a reminder to be thoughtful and thorough in presenting objective indicia of nonobviousness, not only during IPRs and other forms of litigation, but in prosecution too. Avoid citing arguments in conclusory fashion.
Tags: Motivation > nexus > objective indicia of nonobviousness > obviousness > secondary considerations
EXAMINER’S NEW MOTIVATION TO COMBINE REFERENCES MAY CONSTITUTE “NEW GROUND OF REJECTION,” PREVENTING FINALITY OF THE REJECTION
| December 18, 2013
in re Lutz Biedermann – CAFC Opinion
Decided October 18, 2013
Panel: Linn (Opinion author), Moore and O’Malley
Summary
While the Examiner’s motivation to combine prior art references in his rejection was the efficiency of a square thread, the principal reason the Board affirmed the combination of these references was the use of square threads to avoid splaying. The Federal Circuit held that these are different grounds of rejection, and form the bases or underpinnings of different rejections. Therefore, the Federal Circuit found that because the Board made new findings and adopted different reasons to support a new ground of rejection, it had improperly deprived the applicant of both notice and an opportunity to respond.
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Tags: Due process > Motivation > New Ground of Rejection > Notice and Opportunity to Respond > obviousness
