Analyzing Nexus: Recent Federal Circuit Opinions Where Individual Patent Claim Limitations Are In The Prior Art

• Published date: 03 October 2023
• Subject Matter: Intellectual Property, Patent
• Law Firm: Haug Partners
• Author: Anjali Dhamsania and Andrew Roper

I. INTRODUCTION

This article compares two recent Federal Circuit opinions concerning IPR cases addressing the nexus requirement for objective indicia of non-obviousness. These cases revolve around the patentee's use of a commercial embodiment to establish a presumption of nexus. Notably, in both cases, the individual claim limitations were in the prior art. But a crucial distinction emerged which created opposing results: in one case, the objective indicia was tied to a single claim element that was known in the prior art; in the other case, the objective indicia was effectively tied to the invention as a whole.

II. THE NEXUS REQUIREMENT: BACKGROUND

"Obviousness is a question of law based on underlying facts," where the Supreme Court has long recognized that a patentee can overcome a prima facie showing of obviousness by providing objective indicia of non-obviousness, also known as secondary considerations.¹ Secondary-consideration evidence includes commercial success, long-felt but unsolved need, and industry praise, among others that are designed to objectively demonstrate that an invention is not obvious.² A big challenge in establishing secondary considerations, however, is that it requires the patentee to establish a "legally and factually sufficient connection" or a nexus to the claimed invention.³ In evaluating whether the nexus requirement is satisfied, the objective evidence must be directed to what was not known in the prior art'including patents and publications'which may be an individual claim element or the novel combination of known individual elements.⁴ A presumption of nexus can be found when a commercial product "is the invention disclosed and claimed in the patent."⁵ But, this presumption can be rebutted by showing that the objective evidence resulted from features that were known, individually or as a combination, in the prior art rather than the claimed invention as a whole.⁶ The United States Court of Appeals for the Federal Circuit recently issued two precedential opinions in Yita LLC v. MacNeil IP LLC (Yita)⁷ and Medtronic, Inc. v. Teleflex Innovations S.A.R.L. (Medtronic),⁸ both of which analyze establishing a nexus under this particular presumption.

III. YITA V. MACNEIL IP

Yita LLC challenged two of MacNeil IP LLC's patents (U.S. Patents Nos. 8,382,186 and 8,833,834) as obvious in an inter partes review.⁹ The patents concerned a modified vehicle floor tray.¹⁰ With respect to the '186 patent, the PTAB found that the...