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Informative Whirlpool Decision Reaffirms Importance of Secondary Considerations

Recently on April 14, 2020, the Patent Trial and Appeal Board (“Board”) designated Ex parte Whirlpool Corp., Appeal 2013-008232 (Oct. 30, 2013) “Informative”.  In Whirlpool, the Board reversed the Examiner’s obviousness rejection of claims 1, 4, 6, and 8 of U.S. Patent No. 6,082,130 (“the ’130 patent”), finding that the Patent Owner, Whirlpool Corporation, established a nexus between its objective evidence of non-obviousness and the claimed invention.  Whirlpool reinforces that an obviousness analysis must adequately consider evidence of secondary considerations in the first instance and reaffirms that a nexus may still exist even where evidence of commercial success or industry praise is not due solely to the claimed invention, so long as such success or praise is due in part to the claimed invention.  Further, Whirlpool clarifies the types of evidence sufficient to overcome an obviousness determination.

The proceeding arose nearly a decade ago, from a third-party request from LG Electronics, Inc. for an ex parte reexamination of claims 1, 2, 4, 6, 8, and 9 the ’130 patent directed to a refrigerator with a freezer compartment containing an ice delivery system mounted to the freezer door.  During the course of the reexamination, the Examiner ultimately confirmed the patentability of reexamined claims 2 and 9 and finally rejected claims 1, 4, 6, and 8.  The Patent Owner appealed the final rejection of claims 1, 4, 6, and 8, and an oral hearing was held on October 2, 2013.

On appeal, the Board affirmed the Examiner’s obviousness rejections for independent claim 1 and claims 4, 6, and 8 depend therefrom.  As to secondary considerations, the Examiner determined that such evidence did not overcome the obviousness of claims 1, 4, 6, and 8.  The Examiner explained that such evidence was not persuasive because (1) it relied on elements not found in the claims (2) the evidence of praise concern prior art elements and (3) the evidence of commercialization was not relevant to patentability.  The Board reversed, finding that Whirlpool established a nexus between the evidence of secondary considerations taken as a whole and the claimed invention, and that such evidence was sufficient to render claims 1, 4, 6, and 8 non-obvious.

The Board acknowledged that some of Whirlpool’s secondary considerations evidence, including praise for the invention found in trade and other publications, concerned features not found in claims 1, 4, 6, and 8, it disagreed with the conclusion that no nexus could therefore be shown.  The Board instead pointed out that under Federal Circuit precedent, a nexus may still exist even where evidence of commercial success or industry praise is not due solely to the claimed invention, so long as such success or praise is due in part to the claimed invention.  The Board concluded that it was undisputed that although the Whirlpool’s “In-Door Ice System” refrigerators were praised for features that were not part of claims 1, 4, 6, and 8, the praise was also due to the claimed door-mounted ice bin.

The Board also rejected the Examiner’s conclusion that praise for, and commercial success caused by, the door-mounted ice bin lacked a nexus to claims 1, 4, 6, and 8 because the door-mounted ice bin was known in the art at the time of the invention.  The Board noted that although secondary considerations must result from what is claimed and what is novel, what was claimed and novel here was the combination of an icemaker mounted above a door-mounted ice storage bin.  Further, the Board relied on evidence indicating that it was unlikely that a refrigerator with a door-mounted ice storage bin but without an icemaker, such as the primary prior art reference, would have been successful in North America.

Finally, the Board disagreed with the Examiner’s determination that a lack of commercialization of a door-mounted ice storage bin and dispenser after the publication date of the prior art reference was irrelevant to patentability.  To the contrary, the Board noted that the Federal Circuit has held that the length of time between the publication dates of the prior art and the claimed invention could qualify as an objective indictor of non-obviousness, and here, the intervening twenty-four years was not an insubstantial amount of time.

The Board’s designation of Whirlpool as Informative reinforces that an obviousness analysis must adequately consider evidence of secondary considerations in the first instance and reaffirms that a nexus may still exist even where evidence of commercial success or industry praise is not due solely to the claimed invention, so long as such success or praise is due in part to the claimed invention. 

©1994-2020 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.National Law Review, Volume X, Number 139

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About this Author

Brad Scheller Patent Litigation Attorney Mintz Law Firm
Member

Brad Scheller is a trial attorney who focuses his patent litigation practice on representing clients in the automotive devices, thermoplastics, electronic components and consumer products industries in federal district court, before the Patent Trial and Appeal Board and at the International Trade Commission. With a background in mechanical engineering and over 14 years of experience practicing law, Brad has successfully represented patent owners in enforcing their rights against infringers and protecting those rights from challenges of invalidity, and has also successfully defended and...

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Courtney Herndon, intellectual property lawyer, Mintz Levin,Patent Litigation International Trade Commission Federal District Court Strategic IP Monetization & Licensing
Associate

Courtney is an Associate in the intellectual property section. Before joining Mintz Levin, Courtney clerked for Associate Justice Geraldine Hines of the Massachusetts Supreme Judicial Court and Associate Justice Vickie L. Henry of the Massachusetts Appeals Court. 

During law school, Courtney served as a judicial intern to Judge William G. Young of the United States District Court, District of Massachusetts, and to Justice Hines (then an Associate Justice of the Massachusetts Appeals Court), conducting legal research, preparing bench memoranda, and drafting and editing judicial opinions. She also conducted legal research for trademark matters as a research assistant at New England Law.

While attending New England Law, Courtney was a three-time recipient of the New England Scholar Award and served as the Editor in Chief of the New England Law Review. At her law school commencement, Courtney was honored with the Trustee Bradbury Gilbert Award for Excellence in Achievement. Prior to this, Courtney received her bachelor's degree from University of Washington.

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