Saturday, November 17, 2012

Argument turned against appellant in Ex parte 7,287,119

Within Ex parte 7,287,119 [NVIDIA CORPORATION v. Rambus, in re-exam 95/001,189 ] :

Appellant states that while the Patent Owner must show some causal relation between an invention and commercial success (citing Merck & Co., Inc. v. Teva Pharmaceuticals USA, Inc., 395 F.3d 1364, 1376 (Fed. Cir. 2005)), the Patent Owner, according to Appellant, need not demonstrate that “the claimed invention must be the sole cause of the commercial success” (App. Br. 33). Even assuming this allegation to be true, Appellant has not established the required nexus between the claimed invention and any alleged commercial success (or licensing). We agree with Appellant’s implication that Appellant failed to demonstrate that the claimed invention was the “sole” cause of any potential commercial success (or licensing). More importantly, however, without an adequate showing of a nexus between the claimed invention and any alleged commercial success (or licensing), Appellant has failed to adequately demonstrate that “the claimed invention” was a cause of the commercial success (assuming that commercial success even occurred) or that the claimed invention was in any way related to any commercial success (or licensing) that might (or might not) have occurred. Therefore, we are not persuaded by Appellant’s arguments pertaining to secondary considerations as they relate to the Examiner’s obviousness rejections.


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