Intellectual Property Law Representation

Secondary Evidence Lacks Nexus if It Exclusively Relates to a Known Feature

by | Jun 13, 2023 | Case Updates

On June 6, 2023, the Federal Circuit reversed PTAB’s judgment in IPR2020-01139 re U.S. Patent No. 8,382,186, where the Board found compelling evidence in secondary considerations to overcome an otherwise obvious prior art combination. Yita LLC v. MacNeil IP LLC, Case No. 22-1373 (Fed. Cir. June 6, 2023).

In its final written decision, the Board upheld the patentability of claims 1-7 of the ’186 patent despite finding motivation to combine and expectation of success in combining three prior art references. Yita, 22-1373 at 7. The Board rejected the obviousness challenge because Patent Owner’s “evidence of secondary considerations [was] compelling and indicative of non-obviousness,” and Patent Owner was entitled to a presumption of nexus. Id. at 7-8.

The Federal Circuit held the Board’s finding of nexus “rests of legal errors” for two reasons. Yita, 22-1373 at 12. First, “objective evidence of nonobviousness lacks a nexus if it exclusively relates to a feature that was ‘known in the prior art’—not necessarily well-known.” Id. (emphasis in original). Second, WBIP’s rationale that the claimed combination as a whole serves as a nexus for the objective evidence[1] is applicable “when no single feature (but only the combination) is responsible for the secondary-consideration evidence,” but does not sustain “a secondary consideration that is exclusively related to a single feature that is in the prior art.” Id. at 13.

[1] WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1330 (Fed. Cir. 2016) (“[P]atent owner can show that it is the claimed combination as a whole that serves as a nexus for the objective evidence; proof of nexus is not limited to only when objective evidence is tied to the supposedly ‘new’ feature(s).”).