Federal Circuit Clarifies Standard for Determining Nexus Between Claims and Secondary ConsiderationsDecember 20, 2019

On December 18, 2019, in Fox Factory, Inc. v. SRAM, LLC, the Federal Circuit (the “Court”) vacated and remanded the Patent Appeal Board’s (the “Board”) obviousness determination. Fox challenged SRAM’s patent for bicycle chain rings in an inter partes review. The Court found that the Board applied the wrong standard for determining whether or not challenged patent claims are entitled to a presumption of a nexus between the claims  and evidence of secondary considerations.

A patent claim is invalid if considered obvious such that “the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.” 35 USC. § 103. In assessing this, the Board is to consider whether a person with ordinary skill in the art would have been “motivated to combine the prior art to achieve the claimed invention and whether there would have been a reasonable expectation of success in doing so.” In re Warsaw Orthopedic., Inc., 832 F.3d 1327, 1333 (Fed. Cir. 2016).

To rebut a claim of obviousness, a patent owner may introduce evidence of secondary considerations such as a long felt but unsolved need in the art, the failure of others to solve the problem addressed by the invention, or the commercial success of the patented invention. Evidence of commercial success is only allowed if the patent owner can show a sufficient causal relationship, or nexus, between the commercial success of a product and the features recited in the claims. For “if the commercial success is due to an unclaimed feature of the device” or “if the feature that creates the commercial success was known in the prior art, the success is not pertinent.” Ormco Corp. v. Align Tech., 463 F.3d 1299, 1312 (Fed. Cir. 2006).

The Court has held that a patentee is entitled to a rebuttable presumption of a nexus between the evidence of secondary considerations and the patent claim if the patentee shows that the asserted evidence is tied to a specific product and that the product “is the invention disclosed and claimed.” Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). The patentee needs to show that the claimed features are not just a component of the commercially successful product, but that the product embodies, or is coextensive with, the claimed features. Whether a product is coextensive with the claims at issue, and therefore whether a presumption of nexus is appropriate, is a question of fact.

In Fox Factory, Inc. v. SRAM, the Court found that the claimed features at issue were not coextensive with SRAM’s X-Sync chain rings in part because the chain rings include features covered by another patent. The Court noted that there is rarely perfect coextensiveness, but the product tied to the claimed invention must be the claimed invention, and unclaimed features should be insignificant. The fact that SRAM sought separate patents for the features combined into one product is indicative that the unclaimed features are more than insignificant.

The Court rejected the position the Board had taken that the coextensiveness requirement is met so long as the patent claim broadly covers the product irrespective of any unclaimed feature. The Court rejected that standard, stating that it would allow coextensiveness to rest on minor variations in claim drafting. On remand, SRAM will not be able to rely on the presumption of a nexus because of the lack of coextensiveness, but may still be able to use secondary considerations if they prove “the evidence of secondary considerations is attributable to the claimed combination” of features “as opposed to, for example, prior art features in isolation or unclaimed features.”

Julie Spieker is a patent attorney in the Biotechnology & Chemical and Mechanical & Electrical Patent Practice Groups at McKee, Voorhees & Sease, PLC. For additional information please visit www.ipmvs.com or contact Julie directly at julie.spieker@ipmvs.com.