Patent Validity, Re-exam, Obviousness and Commercial Success!

In a recent Federal Circuit Opinion, the court reaffirmed the need for the Patent and Trademark Office (PTO) to establish a prima facie case of obviousness and the consideration of commercial success in making the obviousness inquiry.   In re Glatt, reaffirmed involved an appeal to the Federal Circuit from a PTO decision regarding the obviousness of Claim 5 of the Glatt patent.

The PTO found that Glatt’s Jepson claim relating to the use of a shielding wall in a sprayer mechanism was obvious in light of a prior German patent.   The PTO found that a person of ordinary skill in the art could use the prior German patent and combine it with the state of the art at the time that Glatt developed his invention to create the shielding wall that was claimed to have been invented by Glatt.  

Moreover, since the format of Glatt’s claim was that of a Jepson claim, its preamble was admitted to be part of the prior art.  The PTO also held that secondary considerations did not support Glatt’s assertion of non-obviousness, because it did not have evidence of multiple commercial embodiments of claim 5. 

The Federal Circuit reversed and found that the German patent did not teach the reduction of particle agglomeration claimed by Glatt. In fact, the German patent did not have any means of removing the agglomeration of particles that may form at the sprayer nozzle.  In light of this important limitation of the Glatt patent, the Federal Circuit’s de novo review resulted in a finding that the PTO had failed to establish a prima facie case of obviousness of claim 5. 

The Federal Circuit also went to consider secondary considerations of obviousness despite finding that the PTO had failed to establish a prima facie case of obviousness.  The Federal Circuit stated that secondary considerations such as: long felt need, unexpected results and commercial success should be considered.  Stating further, that Glatt had provided significant evidence of commercial success of at least one embodiment of claim 5, thus the commercial success weighed against a non-obviousness finding. 

The Federal Circuit held that the PTO’s factual findings related to commercial embodiments were against the substantial evidence of record.  To properly demonstrate commercial success Glatt need only present evidence relating to one commercial embodiment of claim 5. 

Otherwise, the PTO’s holding would mean that a patentee or inventor could never establish commercial success, where multiple commercial embodiments were claimed.  Moreover, from a practical perspective, it is unlikely to have evidence of commercial success of multiple commercial embodiments of a claimed invention. 

For a detailed opinion see:  In re Glatt.  Understanding claim scope, the interpretation of a Jepson claim, the importance of considering all limitations of a claim in comparing a prior art reference, and the use of secondary considerations, such as, commercial success can be a vital part of a successful business strategy.  Being able to realize the practical impact of these theoretical concepts on a company’s research and development, licensing, royalty sharing, prosecution and litigation strategies will help realize the full value of any inventive efforts.

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