Federal Circuit IP
Volvo Penta of the Americas, LLC v. Brunswick Corporation
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.
- 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.