Monday, August 12, 2013

Objective ("Secondary") Obviousness Factors in the Federal Circuit

In my article “Secondary” Evidence of Obviousness is Not Secondary, (2012) 28 CIPR 279 (draft version here), I argued that the dictum that the “primary” evidence of obviousness is that expert witnesses, and that “secondary” evidence “must be kept firmly in its place,” is unsound in law and policy. Both types of evidence have strengths and weaknesses and both must be assessed with due regard to their relative advantages. Expert witness evidence is susceptible to the hindsight bias, while it may be difficult to establish a causal link between objective (“secondary”) evidence and obviousness. In its recent decision in Plantronics, Inc v Aiph Inc (Fed Cir 2013), the US Federal Circuit has reaffirmed that failure to consider objective evidence is an error of law (slip op 18-19):

As a safeguard against ‘slipping into use of hindsight and to resist the temptation to read into the prior art the teachings of the invention in issue,’ we have required courts to consider evidence of the objective indicia of nonobviousness prior to making the ultimate determination of whether an invention is obvious. to . . . [A]ll evidence pertaining to the objective indicia of nonobviousness must be considered before reaching an obviousness conclusion. The significance of this fourth Graham factor cannot be overlooked or be relegated to ‘secondary status.’

Update: See also Leo Pharmaceutical Products, Ltd v Rae, 2012-1520 (Fed Cir 2013) in which the Fed Cir emphasized that “Objective indicia of nonobviousness play a critical role in the obviousness analysis. . . . This case illustrates a good reason for considering objective indicia as a critical piece of the obviousness analysis: Objective indicia “can be the most probative evidence of nonobviousness in the record, and enables the court to avert the trap of hindsight.” Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1310 (Fed. Cir. 2010)”

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