Federal Circuit IP

Volvo Penta of the Americas, LLC v. Brunswick Corporation

By John Schmitz Published October 23, 2023

CAFC Opinion No. 2022-1765, Decided August 24, 2023

(Moore, Lourie, Cunningham)


Overview: Objective indicia of non-obviousness is important part of obviousness determination, and nexus requirement should not be overly restrictively.

Facts/Procedural Posture:

  • Volvo Penta marketed a successful line of boat engine drives where the propellers are forward facing and thus tucked under the boat.
  • Brunswick launched a competing product under its Mercury brand and, on the same day as its product launch also filed an IPR petition challenging Volvo’s US Patent 9,630,692.
  • PTAB granted the petition and ultimately sided with the petitioner by holding that the claims would have been obvious based upon a combination of the prior art references.
  • Volvo Penta appealed.

Issue on Appeal: Did PTAB error in its application of secondary indicia of nonobviousness?

Holding: Yes, the Federal Circuit determined the PTAB’s analysis and weighing of the objective evidence was deficient.

Fed. Cir. Analysis:

  • The PTAB’s assignment of weight to the secondary considerations was overly vauge.
  • Despite copying normally being considered “strong evidence” of nonobviousness, the PTAB, without explanation, chose to only give the evidence of copying “some weight.”
  • The PTAB overlooked aspects of the evidence related to long-felt need, praising comments, and commercial success.


  • Patentees should attempt to include some claims that are largely coexistive with its product line.
  • Product copying still caries significant weight in the obviousness analysis.