IP: Secondary considerations save patents, earn $15 million

The evidence that Transocean gathered in a Federal Circuit case provides a good roadmap to surviving an obviousness challenge

One of the thornier issues in patent litigation is assessing patent invalidity for obviousness by applying 35 U.S.C. §103. In the landmark case of Graham v. John Deere Co. (1966), the U.S. Supreme Court identified several factual inquiries underlying the legal question of patent invalidity based on obviousness:

  1. The scope and content of the prior art
  2. The differences between the prior art and the asserted claims
  3. The level of ordinary skill in the field of invention
  4. Objective considerations such as commercial success, long-felt but unresolved need and the failure of others

The types of objective evidence in the fourth inquiry described by the Supreme Court are commonly referred to as the “secondary considerations” of non-obviousness. Although evidence directed to these considerations is fairly routinely presented, the extent of the evidence in prior cases has been such that the Federal Circuit recently commented that it has “rarely held that objective evidence is sufficient to overcome a prima facie case of obviousness.” Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc. (Transocean II).

In this admittedly rare case, the Federal Circuit held that the secondary considerations of non-obviousness presented compelling evidence that the patents were not invalid and, consequently, overcame the prima facie evidence of obviousness. The Federal Circuit’s comment is particularly interesting because in Transocean I the court held that the prior art taught every limitation of the claims and provided the motivation to combine the references to arrive at the claimed invention. This type of holding is, of course, the prelude to a finding of invalidity.

However, as noted, on remand the district court permitted the jury to consider whether the prior art disclosed every element of the asserted claims. On this point the Federal Circuit concluded that the district court erred because the Transocean I holding was law of the case. Nonetheless, the Federal Circuit concluded that it was proper for the jury to consider the strength of the prima facie case in light of the secondary considerations. In doing so, the jury needed to consider all of the evidence relating to the four Graham factors when deciding obviousness, not just a sub-set of that evidence.

Contributing Author

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Donald Rupert

Donald W. Rupert is a litigation partner at Marshall, Gerstein & Borun LLP.  For over 35 years, Don has litigated patent and other...

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