PTAB Precedent Lays Out Method for Weighing Secondary Evidence

April 14, 2020, 9:38 PM

Patent owners seeking to use secondary considerations to prove an invention deserved a patent must establish a connection between patent claims and factors such as commercial success or praise, a Patent and Trademark Office tribunal said in a newly precedential decision.

In the dispute, Lectrosonics Inc. succeeded in convincing the Patent Trial and Appeal Board to declare claims in Zaxcom Inc.'s wireless audio recording system patent invalid. Zaxcom failed to prove that secondary factors, like industry praise and a commercial need for its invention, were connected closely enough to its patent claims for the board to give them substantial weight.

The PTAB’s conclusion in Lectrosonics vs. Zaxcom shows how the tribunal applies the Federal Circuit’s 2019 Fox Factory Inc. v. SRAM LLC decision, which raised the bar for patent owners trying to keep their patent claims valid based on evidence of secondary considerations. Such evidence includes factors like a product’s commercial success or an invention satisfying a long-standing need.

Zaxcom succeeded in convincing the board to allow it to amend its patent by adding substitute claims.

Proving ‘Nexus’

Patent owners will sometimes point to such secondary considerations to argue their invention wasn’t obvious. But there must be a “nexus,” or connection, between the evidence and the patent claims, in order for the evidence to be given substantial weight, the PTAB said.

In the PTAB dispute, Zaxcom argued its patent claims weren’t obvious because they addressed industry failures and a long-felt need. Its product also received industry praise, Zaxcom argued.

But Zaxcom failed to provide analysis that demonstrates its products were or nearly were “coextensive” with the claims Lectrosonics sought to invalidate, the PTAB said. Under the coextensiveness requirement, a product must embody patented features to be entitled to a presumption of nexus.

Secondary considerations like commercial success don’t “mean a whole lot unless there’s some tie between the claimed invention and that success,” Doug Wilson, a patent attorney at Armond Wilson LLP, said.

The board, however, noted that Zaxcom still had a second shot at proving nexus, this time by showing that evidence of secondary considerations directly results from the unique characteristics from a patented invention.

“Ultimately, the fact finder must weigh the secondary considerations evidence presented in the context of whether the claimed invention as a whole would have been obvious to a skilled artisan,” the PTAB wrote.

The PTAB said that Zaxcom failed to prove a connection between the evidence and the inventions claimed in the invention “because the evidence is directed to features that are not required by the claims.”

In convincing the PTAB to allow it to add new claims for its patent, Zaxcom relied on secondary evidence to prove its invention wasn’t obvious.

Zaxcom contended that evidence showed a long-felt need for the wearable wireless device for capturing sound data. The invention addressed that industry need and received praise, it said.

Those considerations weighed “heavily in favor of nonobviousness,” the PTAB said.

To contact the reporter on this story: Ian Lopez in Washington at ilopez@bloomberglaw.com

To contact the editors responsible for this story: Roger Yu at ryu@bloombeglaw.com; Keith Perine at kperine@bloomberglaw.com

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