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Semantics in Weighing of the Graham Factors

by: Chris Mulkey, COO/Head of Research

In a recent article posted on Patently-O (What is the Role of the Objective Indicia of Nonobviousness), I couldn’t help but take note at numerous website comments regarding the perceived illogic of the Federal Circuit’s decision in ZUP, LLC, v.  Nash Manufacturing, Inc., relating to the primary issue at the appellate level, and specifically, Judge Newman’s baffling dissent (baffling only because I otherwise find him to be an excellent jurist).

In a nutshell, the defendant seemed to unscrupulously copy the design of the plaintiff’s wakeboard, a board with numerous integrated handles to allow for various gripping orientations, then commercialize the product.

The case awaits approval/denial of writ of certiorari at SCOTUS, and the primary issue presented is, verbatim:

Whether evidence of “secondary considerations” (e.g., a long-felt, but unresolved, need for the patented invention) is less important, functioning at a diminished capacity from time to time to rebut prima facie evidence of obviousness.

Dispelling the first part of the presented issue lies in the term itself: “secondary considerations”. In the context of the obviousness guidelines from our caselaw, yes, secondary does indeed mean less important.

But does this differ in the context of a rebuttal as the writ above suggests? Does presentation of secondary considerations specifically in a rebuttal alter the weighing of the Graham factors?

No and no.

The origin and timing of the presentation of secondary considerations are irrelevant to the obviousness analysis (as they adjudicated here in ZUP). And I’ll further disagree with Judge Newman’s dissent, in which he argues it is improper to require secondary considerations presented in a rebuttal to outweigh the primary considerations, rather than merely factoring in the secondary considerations as a necessary part of the overall obviousness analysis.

The flaw in logic of Newman’s dissent, I believe, stems from mere semantics, namely, the assumption that the terms “weigh”, “outweigh”, and “overcome” are anything but synonymous in the context of this case. While all of the Graham factors should be weighed, together, he mistakenly assumes that because evidence of the secondary considerations were only presented in rebuttal, that the majority weighed these as a distinct factor requiring the plaintiff to overcome a shifted burden of proof. But this is precisely what occurs in the process of weighing any factors. Some factors outweigh others, and the overall balance carries the day.

I doubt Judge Newman would disagree that in order to overcome prima facie evidence of obviousness based on the prior art alone, that secondary considerations must inherently outweigh the primary Graham factors. Why does it matter if these come from a rebuttal? In the context of this case, it would be crucial that, as the evidence leaning toward obviousness is mounting, the plaintiff then resorts to secondary considerations to tip the scales back toward the presumption of validity, and all evidence should be evaluated for the overall determination of obviousness. Judge Newman’s implication is that the case was decided before rebuttal occurred, an implication I doubt he intended to make regarding his co-jurists.

Point #1:

It matters not at what procedural point evidence of secondary considerations are presented. They are merely a part of the overall determination. Here, an evaluation of the primary Graham factors strongly indicated obviousness. ZUP, upon accurately sensing the unfavorable outcome of his case, logically turned to the only remaining argument against obviousness. The decision not to present evidence of secondary considerations initially is, in this case and as it should be, irrelevant to the overall outcome.

Point #2:

Secondary considerations can only be used in two ways in an obviousness determination: (1) to bolster the argument of obviousness, or (2) to bolster the argument of non-obviousness.

Since this case deals with (a) the use of secondary considerations to bolster the argument of non-obviousness, and (b) the already strong evidence of obviousness based on the primary Graham factors, what other purpose would the secondary considerations have BUT TO OUTWEIGH THE PRIMARY FACTORS? Judge Newman incorrectly takes issue with this, arguing that this improperly shifted the burden of proof to the plaintiff. The defendant had met the higher burden already. The rebuttal was merely the attempt to swing the pendulum back. The overall burden of proof, however, was never placed on the plaintiff. ZUP would have been free to offer no rebuttal at all, and the outcome would remain unchanged.

I don’t believe certiorari will be granted here; I fail to see an issue at all.