When the PTAB Weighs Evidence of Secondary Considerations, Volume Matters
As discussed in a prior blog post here, the United States Patent and Trademark Office (“USPTO”) Patent Trial and Appeal Board (“PTAB”) designated a recent decision on secondary considerations as precedential. At the same time, the PTAB designated two older decisions as informative. While the precedential decision of Lectrosonics focused largely on the nexus requirement in the context of an IPR, the two informative decisions were issued in other contexts and provide examples of how much objective evidence may be needed to show secondary considerations.
The first informative decision, Ex parte Whirlpool Corp., resulted from an appeal of an ex parte reexamination. The Whirlpool patent was directed to a refrigerator with an ice delivery system mounted on the freezer door. Specifically, the patent claimed an ice maker mounted inside the freezer above an ice storage bin mounted on the freezer door.
In the reexamination, the Examiner rejected the claims based on a combination of two references. In response, the patent owner argued secondary considerations, submitting 11 declarations in an attempt to establish that commercial embodiments of the invention experienced commercial success, received industry praise, were copied, and met a long-felt need. The Examiner was not persuaded by this evidence, but found the features relating to success were not claimed and concluded that the patent owner failed to establish a nexus between the evidence and the claims.
On appeal, the PTAB agreed with the Examiner that the references taught all of the elements of the claims. It reached a different conclusion, however, on secondary considerations. The PTAB first reviewed the declarations and agreed with the Examiner that they were focused largely on features that did not appear in the claims. However, it did not end its analysis there. Relying solely on a single declaration and three exhibits cited therein, the Board found that some of the industry praise and commercial success was also due to features claimed in the patent. It found this evidence sufficient to show that the commercial success and industry praise resulted from features that were both claimed and novel. Thus, it found that the patent owner met the nexus requirement.
The second informative decision, Ex Parte Thompson, issued from an appeal of an original examination. The Thompson patent was directed to an electronic locking system for a cable box to prevent theft in multi-dwelling units, such as apartment buildings.
The Examiner rejected the claims based on a combination of four different references. The applicant did not dispute the teachings of the references or their combinability, but instead chose to rebut the obviousness rejection based on secondary considerations of long-felt need and the failure of others. In support of this argument, the applicant submitted four declarations from executives of three different cable companies. The Examiner was not persuaded that the evidence was sufficient to show that a long-felt need still existed at the time of the invention. The applicant appealed the rejection.
The PTAB first found a nexus existed between the commercial product and the claimed invention, because claim 1 recited at least some elements that were reasonably commensurate with those used in the cable distribution boxes discussed in the declarations. After this rather perfunctory analysis, the Board spent the bulk of its opinion discussing whether the evidence was sufficient to prove long-felt need. It noted that the evidence must show: (1) the need was a persistent one recognized by ordinarily skilled artisans, (2) the need had not been satisfied before the claimed invention, and (3) the claimed invention actually satisfies the need.
When reviewing the declarations put forth by the applicant, the PTAB found weaknesses with each one. One declarant was vague in stating how long the need had existed. Two declarants did not say whether the need had been satisfied by others before the invention. The four declarants combined could only attest to the performance of 56 cable boxes over limited periods of time of six months to a year, compared to their experience with thousands of other boxes over a period of many years.
While the PTAB acknowledged that the declarations had weaknesses that tended to reduce their probative value, it could not say whether those weaknesses outweighed the countervailing evidence of non-obviousness. Thus, the Board reversed the Examiner.
In both these cases, the appellant submitted an abundance of evidence to support its argument of secondary considerations. Much of that evidence was insufficient standing alone. In Whirlpool, the Board only pointed to one declaration out of 11 as providing evidence of a nexus. But that one declaration was sufficient to overcome any shortcomings of the other ten. In Thompson, the Board openly acknowledged the shortcomings and weaknesses of the individual declarations. Taken together, however, the PTAB found the evidence as a whole was sufficient to overcome the individual weaknesses.
Patent owners and patent applicants can learn from these decisions. Secondary considerations like long-felt need and industry praise can be difficult to encapsulate in a single declaration. But multiple declarations can provide a mosaic that tells a much stronger story, with each declaration covering for weaknesses or filling in gaps in the others.
 Lectrosonics, Inc. v. Zaxcom, Inc., Case IPR2018-01129, Paper 33 (PTAB Jan. 24, 2020) (designated April 14, 2020 as Precedential).
 Appeal 2013-008232 (Oct. 30, 2013) (designated April 14, 2020 as Informative).
 Appeal 2011-011620 (Mar. 21, 2014) (designated April 14, 2020 as Informative).