Thursday, November 15, 2012


As to secondary considerations:

As we have repeatedly held, “evidence rising out of the so-called ‘secondary considerations’ must always when present be considered en route to a determination of obviousness.” Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983). Objective evidence of nonob- viousness is an important component of the obviousness
inquiry because “evidence of secondary considerations may often be the most probative and cogent evidence in the record. It may often establish that an invention appearing to have been obvious in light of the prior art was not.” Id. This objective evidence must be “considered as part of all the evidence, not just when the decision- maker remains in doubt after reviewing the art.” Id. at 1538-39. Thus, in order to determine obviousness, the decisionmaker must be able to consider all four Graham factors. Although we held in Transocean I that Maersk presented a prima facie case of obviousness, it was not error to allow the jury to consider the strength of that prima facie case in making the ultimate determination of obviousness. When the ultimate question of obviousness is put to the jury, the jury must be able to review all of the evidence of obviousness. Id. Hence it was not error for the court to allow the jury to weigh the strength of the prima facie case together with the objective evidence in order to reach a conclusion on the ultimate question of obviousness.

In this case:

In granting Maersk’s motion for JMOL of obviousness, however, the district court concluded that the record evidence fails to support these findings. J.A. 5- 7. We disagree. As detailed below, Transocean presented substantial evidence from which a reasonable jury could find that each of the seven objective factors supports the nonobviousness of Transocean’s claims.

As to evidence from Europe:

As an initial matter, the district court erred by considering proceedings before the European Patent Office in its commercial success analysis. Transocean needed to show both commercial success and that a nexus exists between that success and the merits of the claimed inven- tion. See Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1324 (Fed. Cir. 2004). It is irrelevant to the commercial success analysis, however, that a foreign patent office rejected Transocean’s patent application on the dual-activity technology. The district court’s analysis seems to have been clouded by its view that the asserted claims would have been obvious over the prior art. This is precisely the sort of hindsight bias that evaluation of objective evidence is intended to avoid. See, e.g., Graham, 383 U.S. at 36.

Bottom line:

In view of the foregoing, we reverse the district court’s grant of JMOL of invalidity and noninfringement, and its grant of JMOL that Transocean is not entitled to dam- ages. We also reverse its conditional grant of a new trial.



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