Saturday, February 14, 2009

More on Leapfrog and secondary considerations

From Leapfrog Enterprises, 485 F.3d 1157, 1162 (CAFC 2007):

Finally, we do not agree with Leapfrog that the court failed to give proper consideration to secondary considerations. The district court explicitly stated in its opinion that Leapfrog had provided substantial evidence of commercial success, praise, and long-felt need, but that, given the strength of the prima facie obviousness showing, the evidence on secondary considerations was inadequate to overcome a final conclusion that claim 25 would have been obvious. We have no basis to disagree with the district court's conclusion.

There is no citation to this proposition.

Previously, Lacks, 322 F.3d 1335:

The court found that the combination of three prior art references, all drawn to decorative wheel coverings, provided a prima facie case of obviousness and that Lacks' evidence of secondary considerations failed to rebut that prima facie case.

No cite.

Ruiz, 234 F.3d 654
The district court erred in failing to consider, or at least to discuss, evidence of secondary considerations. Our precedents clearly hold that secondary considerations, when present, must be considered in determining obviousness. See, e.g., Loctite, 781 F.2d at 873, 228 U.S.P.Q. (BNA) at 98 ("HN25 Secondary considerations . . .,when present, must be considered."); Simmons Fastener Corp. v. Ill. Tool Works, Inc., 739 F.2d 1573, 1575, 222 U.S.P.Q. (BNA) 744, 746 (Fed. Cir. 1984) Only after all evidence of nonobviousness has been considered can a conclusion on obviousness be reached."); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 306, 227 U.S.P.Q. (BNA) 657, 662 (Fed. Cir. 1985) Just as it is legal error for a district court to fail to consider relevant evidence going to secondary considerations, it may be legal error for a district court to presuppose that all evidence relating to secondary considerations, when considered with the other Graham indicia relating to the obviousness/nonobviousness issue, cannot be of sufficient probative value to elevate the subject matter of the claimed invention to the level of patentable invention.").
From the district court opinion, we are unable to determine whether the district court considered these factors, and found them insufficient to rebut a strong prima facie case of obviousness, or whether the district court failed to consider them at all in its obviousness calculus. See In re Beattie, 974 F.2d at 1313, 24 U.S.P.Q.2D (BNA) at 1043. Nor can we tell whether the judge made implicit findings after hearing testimony. Accordingly, we urge the district court to make findings as to: 1) whether secondary considerations rebut a prima facie case of obviousness; and 2) if the evidence of secondary considerations is probative, whether there is a nexus between the claimed invention and commercial success. See Simmons, 739 F.2d at 1575, 222 U.S.P.Q. (BNA) at 746 ("HN32 A nexus between the merits of the claimed invention and evidence of secondary considerations is required in order for the evidence to be given substantial weight in an obviousness decision.").


Ecolab, 227 F.3d 1361

Given our earlier reliance on Ecolochem's concession of the prima facie obviousness of claim 20, which is binding as law of the case, we must treat claim 20 separately from the other claims held obvious in the decision appealed herein. We may only conclude that Ecolochem rebutted the prima facie case of obviousness with regard to claim 20 if the evidence of secondary considerations supports such a holding. See id.; In re Piasecki, 745 F.2d 1468, 1471, 223 U.S.P.Q. (BNA) 785, 787 (Fed. Cir. 1984). We therefore review the district court's findings on the evidence of secondary considerations, and, for purposes of completeness, address whether and how this evidence affects the adjudicated invalidity of all other asserted claims.
The idea that a patented invention might appear to be obvious given the excellent vision accorded by hindsight, but might not have been obvious at the time the invention was made, was discussed by the Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 17-18, 15 L. Ed. 2d 545, 86 S. Ct. 684 (1966). In the intervening years since Graham a great deal of attention has been paid to the importance of secondary considerations. We discuss below many of the secondary considerations used by the courts in an effort to compensate for hindsight. The Supreme Court held that "such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy." 383 U.S. at 17-18 (internal citations omitted). While we review the district court's factual findings on the secondary considerations for clear error, we review the ultimate determination of obviousness de novo. See B.F. Goodrich Co. v. Aircraft Braking Sys. Corp., 72 F.3d 1577, 1582, 37 U.S.P.Q.2D (BNA) 1314, 1317-18 (Fed. Cir. 1996). We find clear error in the district court's findings on several of the secondary considerations as discussed below, but upon reviewing the obviousness conclusion de novo, hold that even if corrected, the findings respecting secondary considerations support the district court's holding of obviousness of claim 20 in the instant case. This conclusion has no effect on the obviousness of the inventions of claims 1, 3-13, 15,17, and 18, which we have already held would not have been obvious given the absence of any motivation to combine the teachings of the cited prior art references. Ecolochem has, however, failed to rebut the conceded prima facie case of obviousness with regard to claim 20. We therefore affirm the district court's conclusion that the invention of claim 20 would have been obvious.

[The matter of copying comes up.]

Another indicia of non-obviousness of a product is the acclamations it receives when it is released, and the copying that occurs. The district court found "that [although] Ecolochem's process was warmly received in the water treatment industry and was copied by at least two competitors, that copying did not result from the novelty of Ecolochem's invention and is of little weight in assessing obviousness." Ecolochem, slip op. at 77.

Ecolochem argues persuasively that its device was copied because it was significantly less expensive than vacuum degasifiers, the only alternative in the field. Furthermore, testimony from Edison indicates that Ecolochem's process was better than its competitors'. The district court gives little credit to Ecolochem's arguments, finding only that the process was not novel. It is a factual determination as to what the exact reason for the copying was, but here we hold that it was clear error on the district court's part to discount the copying because the court believed that the process was not novel. Therefore, this factor cuts against a conclusion of obviousness.
We note, however, that a showing of copying is only equivocal evidence of non-obviousness in the absence of more compelling objective indicia of other secondary considerations. See In re GPAC, 57 F.3d 1573, 1580, 35 U.S.P.Q.2D (BNA) 1116, 1122 (Fed. Cir. 1995) ("HN20 'More than the mere fact of copying by an accused infringer is needed to make that action significant to a determination of the obviousness issue.'") (quoting Cable Elec. Prods. v. Genmark, Inc., 770 F.2d 1015, 1028, 226 U.S.P.Q. (BNA) 881, 889 (Fed. Cir. 1985)). The reason is that the alleged copying "could have occurred out of a general lack of concern for patent property." See Cable Elec. Prods., 770 F.2d at 1028, 226 U.S.P.Q. (BNA) at 889. Consequently, even though the district court clearly erred in stating that the copying was not connected to the patented aspects of the invention, its error does not carry great weight in our evaluation of the obviousness of the invention of claim 20 in light of all the secondary considerations, combined with the other evidence and findings on the prior art.


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