The Software IP Report

PTAB Rejects Secondary Considerations for Patentability

Even though there was no dispute that a commercially successful product encompassed challenged patent claims, the USPTO’s Patent Trial and Appeal Board held that a patent owner failed to show secondary considerations of non-obviousness.  Arctic Cat, Inc. v. Polaris Industries, Inc., Case IPR2015-01781; Patent 8,827,028 B2 (PTAB Jan. 30 2017).  The Patent Owner, the PTAB explained, failed to meet its burden of adequately explaining its arguments and evidence.  Further, the supposedly beneficial feature of a low center of gravity was not recited in the claim, nor was it a prerequisite of the claimed structure.

The ’028 patent includes 101 claims directed to all terrain vehicles.  The patent owner sued the petitioner in federal court, whereupon the petitioner had successfully sought institution of this Inter Partes Review (IPR) of certain claims.  The PTAB noted that a “significant difference” between this IPR and a prior IPR on a related patent was that “Patent Owner presents secondary considerations in this proceeding.”  Thus, in the course of finding all challenged claims unpatentable over various combinations of prior art under 35 U.S.C § 103, the PTAB considered the patent owner’s argument that secondary considerations supported patentability.

Specifically, the patent owner argued that industry praise for, and commercial success of, its RZR® 800 vehicle supported patentability.  There was no dispute “that the RZR® 800 encompasses the challenged claims.”  This was enough for the patent owner to meet its burden to “establish[] a presumption of nexus between the proffered objective evidence of secondary considerations and the challenged claims.”  Moreover, the “Patent Owner need not prove that the objective evidence is tied to a specific claim element; rather, the proper inquiry is whether the claimed invention as a whole would have been obvious.”  Nonetheless, the PTAB agreed with the petitioner that the RZR® 800  features alleged to have contributed to its success, “lower center of gravity, stability, and maneuverability, are not elements that are recited in the claims.”

The PTAB began its analysis noting “that this is a fact-specific inquiry and there is no hard-and-fast rule for taking into account the degree of connection between secondary considerations and the claimed subject matter.”  Here, an expert had concluded “that a low center of gravity flows directly from, and is a result of, the claimed arrangement.”  Unfortunately for the patent owner, the expert did “not explain cogently how the claimed arrangement provides that low center of gravity.”  Moreover, claims of commercial success did not stand up to close scrutiny:

In its first three years on the market, the RZR® 800 rose to a 29 percent market share (2007–2009), while Polaris vehicles other than the RZR® 800 rose to a 32 percent market share (2008–2010). In other words, Polaris vehicles other than the RZR® 800 enjoyed equal to or slightly greater commercial success during the first three years of production than the RZR® 800. All of this undercuts severely the weight to be accorded Polaris’s evidence of commercial success.

In general, arguments relating to commercial success could not show that specific features in the claims drove the alleged commercial success. And industry “praise for the low center of gravity is not attributable to a claimed feature.”

Lessons for Practice

The Federal Circuit has previously taken the PTAB to task for failing to properly consider evidence of secondary considerations.  And the PTAB in at least one recent case relied on secondary considerations in agreeing that claims challenged in an IPR were non-obvious.  Nonetheless, as the present case demonstrates, successfully presenting evidence and arguments that secondary considerations present objective evidence of patentability is a difficult task.  The only lesson here, then, is to make sure your objective evidence supporting patentability is directly tied to a claimed feature.  Here, it turned out that the demonstrated commercial success was not even specifically tied to the claimed product, and the undeniable industry praise was not clearly to a claimed feature.

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