PTAB Upholds Patents Based on Secondary Considerations

Written by David T. Kim and Scott Raevsky

Four recent Final Written Decisions from the PTAB supported patentability on the rare basis of “secondary considerations of nonobviousness” in Varian Medical Systems, Inc. v. William Beaumont Hospital, IPR2016-00162, Paper 69; IPR2016-00166, Paper 69; IPR2016-00170, Paper 69; IPR2016-00171, Paper 81 (P.T.A.B. May 4, 2017).

In all the decisions, the PTAB agreed that all claim limitations were taught by the combined prior art. However, the PTAB found these teachings outweighed by objective indicia of nonobviousness (also called “secondary considerations”). The decisions found that the patent owner submitted “(1) very strong evidence of industry praise; (2) very strong evidence of long-felt need; (3) moderately strong evidence of commercial success; and (4) moderately strong evidence of copying.”

The very strong evidence of industry praise included textbook and journal publications, over 1,000 citations on Google Scholar search, and an R&D 100 award from a magazine.  Evidence of long-felt need included the patent owner’s declaration and deposition testimony. The PTAB found moderately strong evidence of commercial success where a majority of worldwide sales and almost all North American sales were made with the claimed invention. The PTAB found that a paper citing the patent owner’s work was evidence of copying by a third party (not the petitioner), who created a product meeting all the claim limitations.

The PTAB also found the required nexus between patent owner’s evidence and the claims because there was no dispute that all the evidence described a device meeting each independent claim limitation. Accordingly, the PTAB determined that the challenger had not shown by a preponderance of the evidence the unpatentability of any challenged claim.