• Federal Circuit Decision Revisits Objective Indicia of Non-obviousness in Invalidity Analysis
  • April 8, 2011 | Authors: Mark A. Williamson; Stephen Yam
  • Law Firm: Fitzpatrick, Cella, Harper & Scinto - Washington Office
  • Courts have continuously applied the four-factor test under Graham v. John Deere Co. to analyze obviousness under 35 U.S.C. § 103. The final Graham step focuses on objective indicia of nonobviousness, often referred to as "secondary considerations." These secondary considerations include evidence of commercial success, copying, long-felt but unsolved need, failure of others, and unexpected results. The Federal Circuit has long established that support for secondary considerations requires a nexus between the evidence of the secondary considerations and the merits of the patented invention. According to Tokai, even with the existence of a nexus, weak evidence of secondary considerations remains insufficient in overcoming relatively strong evidence of prima facie obviousness.