In EIS GmbH v. Novoluto GmbH, IPR2020-00007, Paper 41 (Sept. 23, 2021), the PTAB discovered the patent proprietor had submitted ample proof of secondary concerns to indicate nonobviousness.
The claimed invention associated to a mechanical machine to be used on a human physique, and a key limitation required that the machine generate “a pattern of negative and positive pressures, modulated with respect to a reference pressure.” The petitioner asserted the challenged claims have been anticipated by a first reference, Taylor, and/or apparent over Taylor together with a second reference, Hovland. The Board interpreted Taylor as describing a machine that was succesful of producing solely detrimental strain and, subsequently, concluded that Taylor didn’t anticipate the claims. Though the Board agreed with the petitioner that Hovland teaches a machine succesful of producing optimistic and detrimental pressures individually, the Board discovered that Hovland didn’t disclose modulating between these results. Thus, the Board discovered the asserted mixture of references didn’t render the challenged claims apparent.
Though the Board discovered that the petitioner failed to indicate the challenged claims have been apparent, it additionally discovered that goal indicia of non-obviousness, within the kind of skepticism, business reward, copying, long-felt however unmet want, and failure of others, supported its conclusion.
Concerning skepticism and business reward, the patent proprietor cited a compilation of evaluations, together with these by shoppers and non-experts, concerning its business merchandise lined by the claims. The Board first decided that the patent proprietor established a nexus between the challenged claims and its business merchandise based mostly on the professional testimony offered. The patent proprietor offered testimony from two consultants. The Board famous that though one professional lacked a technical diploma, she had studied and examined numerous gadgets to conclude that the business machine was coextensive with the challenged claims. The opposite professional, with a background in medical gadgets, concurred with the primary professional’s evaluation. Mixed, the testimony of these two consultants was sufficient for the Board to search out a nexus between the challenged claims and the patent proprietor’s business merchandise.
The Board then thought-about the evaluations of each business consultants and non-expert shoppers and located the patent proprietor had sufficiently demonstrated business skepticism concerning its business merchandise. Offering proof from retailers and magazines, the patent proprietor additionally demonstrated that, regardless of this skepticism, its merchandise obtained a number of awards, together with “most innovative” and “product of the year.” The petitioner didn’t present any argument or proof in rebuttal. Within the Board’s view, each the skepticism and business reward concerns weighed in favor of non-obviousness.
The patent proprietor additionally offered proof of copying of its business gadgets by others. The Board agreed with the patent proprietor that bodily examination of competitor gadgets was not required. As an alternative, the Board credited the testimony of the patent proprietor’s professional, who reviewed competitor product descriptions and in contrast these gadgets with the patent proprietor’s. This proof of copying, coupled with petitioner’s failure to rebut patent proprietor’s arguments, persuaded the Board that this consideration weighed in favor of non-obviousness.
Concerning long-felt however unmet want and failure of others, the patent proprietor offered professional testimony demonstrating that though others within the discipline have been conscious of the advantages of alternating optimistic and detrimental pressures, no prior artwork gadgets might accomplish this objective with out discomfort. Once more, the petitioner didn’t deal with these components or current any proof in rebuttal. Noting that it didn’t require “empirical evidence” of long-felt however unmet want, the Board discovered these components weighed in favor of non-obviousness.
Lastly, patent proprietor submitted proof of business success. Though the Board acknowledged that the merchandise gave the impression to be “stand-out successes,” it famous that the patent proprietor had not offered ample context for its uncooked gross sales information. With out this context, the Board couldn’t discover that the patent proprietor had sufficiently proven its merchandise had achieved business success.
In sum, regardless of discovering that the business success consideration didn’t weigh within the patent proprietor’s favor, the power of the remaining secondary concerns was sufficient, within the Board’s view, to help a conclusion of non-obviousness.