Claimed Combination "As A Whole" May Support Nexus Between Claimed Invention And Commercial Success Even If Individual Elements Are Found In Prior Art

• Published date: 03 October 2023
• Subject Matter: Intellectual Property, Patent
• Law Firm: Osha Bergman Watanabe & Burton LLP
• Author: Peter C. Schechter

After recently reminding that in order for commercial success of an invention to support non-obviousness, the required nexus cannot rest solely on a claim element that is known in the prior art, the U.S. Court of Appeals for the Federal Circuit has further reminded patent owners and applicants that nexus may be established upon consideration of the claimed combination as a whole, even if individual elements of the claim are found in the prior art.

We recently explained that in Yita LLC v. MacNeil IP LLC, the U.S. Court of Appeals for the Federal Circuit (CAFC) recently reminded patent owners and applicants that in order for commercial success of an invention to support nonobviousness, the required nexus between the claimed invention and its commercial success cannot rest solely on a claim element that is known in the prior art.¹ Now, the CAFC has further reminded in Volvo Penta of the Americas, LLC v. Brunswick Corporation² that the nexus analysis need not be limited to a discussion of only novel features. Instead, it is important in an appropriate case to consider the invention as a whole, rather than on a limitation-by-limitation basis. This may be so even where all of the individual claim limitations are separately found in the prior art.

Volvo Penta owns patents directed to its extremely successful Forward Drive marine propulsion system, a tractor-type drive in which one or more forward, bow-facing propellers produce a propulsive force to pull the boat through the water. In contrast, a drive may alternatively be a pushing-type drive, where the propellers face rearward relative to the boat and generate a propulsive force that pushes the boat through the water. One of the claimed features of the invention is that the steering axis of the drive is offset forward of its vertical drive shaft. As a result of this offset, in combination with the other structural features recited in the claims, the Volvo Penta Forward Drive became especially popular for use in boats designed for wakeboarding and other water sports. In response to the rapid popularity of the Forward Drive propulsion system, Brunswick introduced its Bravo Four S tractor-type drive, which it conceded embodied Volvo Penta's patent.

Brunswick filed a petition for inter partes review (IPR) challenging Volvo Penta's patent on grounds of obviousness under 35 U.S.C. ' 103. As the patent statute says, "a patent for a claimed invention may not be obtained . . . if the differences between the claimed...