Chapter §9.06 Graham Factor (4): Secondary Considerations

• Jurisdiction: United States

§9.06 Graham Factor (4): Secondary Considerations

The so-called "secondary" considerations pertinent to a nonobviousness analysis under §103, sometimes also referred to as "objective indicia" of nonobviousness, include evidence that focuses primarily on the impact of the claimed invention in the marketplace rather than its technical merits. Thus, this final Graham factor is based on economic and motivational facts and data that underlie the making and marketing of the invention. Common types of secondary considerations evidence include evidence showing the failure of others to solve the problem addressed by the invention,²⁰⁰ the commercial success of the invention,²⁰¹ the existence of a long felt but unsolved need for the invention,²⁰² the licensing and acquiescence of others to the patent at issue,²⁰³ copying of the invention,²⁰⁴ and industry praise for²⁰⁵ or skepticism about²⁰⁶ the invention.

Such evidence "may often be the most probative and cogent evidence in the record."²⁰⁷ It can be a "powerful, real-world indicator[] of what would have been obvious,"²⁰⁸ or more typically, what would have been nonobvious.

[A] Evidentiary Weight

[1] Diverging Views

Although the Supreme Court in Graham v. John Deere Co. suggested that evidence of secondary considerations "might be utilized" and "may have relevancy,"²⁰⁹ this form of evidence has taken on far greater importance in the era of the Federal Circuit. Today the phrase "secondary considerations" is a misnomer, because such evidence must not be treated as secondary to the evidence underlying the other Graham factors. The Federal Circuit considers secondary considerations evidence "critical . . . in the obviousness analysis."²¹⁰ The appellate court has held that where secondary considerations evidence is present in the record, it must be considered in determining nonobviousness.²¹¹ That such evidence is " 'secondary' in time does not mean that it is secondary in importance.' "²¹² Secondary considerations evidence "may often be the most probative and cogent evidence in the record."²¹³

Although Federal Circuit decisions since the court's creation have emphasized repeatedly the importance of evaluating secondary considerations evidence, the Circuit's October 2016 en banc decision in Apple Inc. v. Samsung Elecs. Co. Ltd. revealed burgeoning disagreement on the issue among members of the appellate court.²¹⁴ Apple v. Samsung was decided in an unusual procedural posture for an en banc case,²¹⁵ with some Circuit judges questioning whether it even merited en banc consideration.²¹⁶ Nevertheless, the October 2016 Apple v. Samsung decision marked the first time that the Circuit had decided an obviousness case as an en banc court since its 1990 decision in In re Dillon.²¹⁷ Hence the court's statements (by both the majority and dissenting judges) deserve close attention. They reveal a significant division of views about the weight to be given secondary considerations evidence, with some dissenting judges advocating a return to (or at least a reconsideration of) the Supreme Court's view that such evidence is not always or necessarily relevant or useful.

Summarizing the facts pertinent to the obviousness issue in Apple v. Samsung,²¹⁸ a jury in the Northern District of California sustained the validity of certain claims of Apple's U.S. Patents Nos. 8,046,721 (the '721 or "slide to unlock" patent) and 8,074,172 (the '172 patent concerning text display for word correction) against Samsung's obviousness challenge. Denying Samsung's request for judgment as a matter of law (JMOL), the federal district court in September 2014 entered judgment in accordance with the jury verdict.²¹⁹

In February 2016, a Federal Circuit three-judge panel reversed the district court, holding in an opinion authored by Circuit Judge Dyk that the inventions claimed in Apple's '721 and '172 patents would have been obvious.²²⁰ More particularly, the '721 patent concerned the Apple iPhone's "slide to unlock" feature, by which a user could slide a moving digital image (which could include an arrow) across the screen of the phone with her finger to unlock the phone.²²¹ The feature was intended to avoid accidental activation of mobile devices like the iPhone. The Circuit panel reasoned that a skilled artisan would have been motivated to combine the teachings of two prior art references to achieve the '721 patent's claimed invention, and that no reasonable jury would have found otherwise.

One of the two references, the "Neonode" device, disclosed continuously sweeping a user's finger across the touchscreen of a mobile phone to unlock it. Unlike Apple's claimed invention, the touchscreen of the Neonode device did not include a moving image but rather text that instructed the user to "Right sweep to unlock."²²² The Neonode device is depicted in a later subsection of this chapter.²²³ The claimed feature missing from Neonode was disclosed in the other prior art reference, referred to as "Plaisant." The Plaisant study that compared six different touchscreen-based toggle switches used to control two-state (on/off) devices having wall-mounted controllers (such as "entertainment, security, and climate control systems."). In one of the six toggles, referred to as the "slider toggle," " 'a sliding/dragging movement is required to change the position of the yellow pointer from one side of the toggle to the other. . . . Users can [] grab the pointer and slide it to the other side.' "²²⁴ The Plaisant reference is depicted in a later subsection of this chapter.²²⁵

Less than eight months later, the en banc Federal Circuit stepped in to reinstate the jury's verdict for patentee Apple. In a majority opinion authored by Circuit Judge Moore, the en banc court in October 2016 vacated the court's February 2016 panel opinion and affirmed the district court's judgement that had, inter alia, sustained the validity of the '721 and '172 patents. The en banc majority concluded that substantial evidence supported the jury's presumed underlying fact findings on each nonobviousness issue.²²⁶

With respect to the '721 ("slide to unlock") patent, the en banc Circuit majority agreed with the jury and district court that motivation was lacking to combine the disclosures of Neonode and Plaisant. The en banc majority stressed that unlike the claimed invention, Plaisant disclosed unlocking methods for wall-mounted touchscreens and was not concerned with the accidental activation problem that the Apple inventors had targeted.²²⁷ Moreover, although the en banc majority did not need to decide the question whether Plaisant taught away from the use of sliding a user's finger across a touchscreen by expressing a preference for other methods, it noted that "even if Plaisant does not teach away, its statements regarding users preferring other forms of switches are relevant to a finding regarding whether a skilled artisan would be motivated to combine the slider toggle in Plaisant with the mobile phone in Neonode."²²⁸ Lastly, the en banc Circuit majority considered the secondary considerations evidence that was before the jury (including copying, industry praise, commercial success, and long-felt need) to be "particularly strong," such that it " 'tip[ped] the scales of patentability' " in Apple's favor.²²⁹

Of the eleven judges participating in the Federal Circuit's October 2016 en banc decision in Apple v. Samsung, one (Judge Hughes) concurred only in the result and three (Chief Judge Prost and Judges Dyk and Reyna) dissented (each writing a dissenting opinion). This degree of division on fundamental aspects of the obviousness inquiry, perhaps the most important requirement for patentability and validity, merits close scrutiny.

Although each of the three judges dissenting from the en banc decision touched on the issue, dissenting Judge Dyk (author of the vacated February 2016 panel opinion) most explicitly criticized the en banc majority in Apple v. Samsung for its treatment of secondary consideration evidence. He strongly advocated a return to the Supreme Court's view that secondary considerations evidence is not always relevant or useful. In Judge Dyk's view, the en banc Apple v. Samsung majority had "err[ed] in elevating secondary considerations of nonobviousness beyond their role as articulated by the Supreme Court. Secondary considerations 'without invention[] will not make patentability.' "²³⁰

According to dissenting Judge Dyk, the Supreme Court had "assigned a limited role to secondary considerations"²³¹ in its two principal recent considerations of the nonobviousness requirement, i.e., the 1966 landmark Graham v. Deere decision²³² and the 2007 KSR v. Teleflex decision.²³³ In Graham, the Court referred to secondary considerations as factors that " 'might be utilized to give light to the circumstances [surrounding the origin of the subject matter sought to be patented].' "²³⁴ Judge Dyk noted that in evaluating the Scoggin insecticide shipper/sprayer patent, the Graham Court concluded that despite the presence of "long-felt need in the industry" and "wide commercial success" of the patentee, those factors " 'd[id] not, in the circumstances [of Graham], tip the scales of patentability.' "²³⁵ The secondary considerations evidence in Graham did not change the result because the Scoggin invention " 'rest[ed] upon exceedingly small and quite non-technical mechanical differences in a device which was old in the art.' "²³⁶ In the 2007 KSR decision, the Supreme Court required inquiry into secondary considerations only " 'where appropriate.' "²³⁷ Judge Dyk observed that although the patentee in KSR introduced evidence of commercial success,²³⁸ the Supreme Court dismissed it because it " 'conclude[d] [patentee] Teleflex ha[d] shown no secondary factors to dislodge the determination that claim 4 is obvious.' "²³⁹

Judge Dyk's dissent from the Apple v. Samsung en banc decision also cited a number of Supreme Court decisions decided before Graham. He asserted that in those...