Objective Indicia: Nexus Analysis May Require Evaluation Of Claims As A "Unique Combination"

• Published date: 13 August 2021
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Patent, Trials & Appeals & Compensation
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Mr Jeffrey Freeman and Stacy Lewis

Holding

In Chemours Company FC, LLC v. Daikin Industries, Ltd., Nos. 20-1289, -1290 (Fed. Cir. July 22, 2021), a CAFC panel held that the PTAB ("Board") erred when it found no nexus existed between the claimed invention and evidence of alleged commercial success because the Board only considered the claim features separately and failed to consider that it was the "unique combination" of the claimed features that accounted for the commercial success.

Background

To accord substantial weight to evidence of objective indicia of nonobviousness, such as commercial success, the evidence must have a "nexus" to the claimed invention. Id. at *12. Put another way, once it is shown that there is a legally and factually sufficient connection between the evidence and the patented invention, it may be presumed that the commercial success of the product is attributed to the patented invention. Id. at *13. This presumption, however, is rebuttable, and a patent challenger may respond by presenting evidence that shows the proffered evidence was due to extraneous factors other than the patented invention. Such evidence may include, for example, demonstrating the commercial success is due to unclaimed feature(s) or feature(s) known in the prior art.¹

In Chemours, the Board evaluated whether commercial success evidence proffered by Chemours exhibited the required nexus to the claimed invention. Relying on Daikin's rebuttal that a nexus was lacking because each of the features of the claimed invention could be found in the prior art, the Board concluded that a nexus did not exist. In particular, the Board found that all the features of the claimed invention could be found in a single prior art reference except one, which remaining feature was disclosed in other prior art of record. Id. at *12.

Federal Circuit Decision

The CAFC unanimously reversed, finding that, "[c]ontrary to the Board's decision, the separate disclosure of individual limitations, where the invention is a unique combination of three interdependent properties, does not negate a nexus." Id. The CAFC further reasoned that "[c]oncluding otherwise would mean that nexus could never exist where the claimed invention is a unique combination of known elements from the prior art." Id. at *12-13. The CAFC also noted that "market share data, though potentially useful, is not required to show commercial success." Id. at *13.

Take Aways

Patentees should consider relying on the Chemours decision when presenting objective...