In a recent decision that serves as a reminder regarding issues of patent validity and obviousness, including regarding the importance of evidence that a patent may not be obvious, the U.S. Court of Appeals for the Federal Circuit scrutinized the Patent Trial and Appeal Board’s (PTAB or the board) treatment of evidence regarding secondary considerations of non-obviousness, and found that the PTAB should not have invalidated the patent claims at issue, and instead should have given more weight to that evidence.

In Volvo Penta of the Americas v. Brunswick, the Federal Circuit found that the PTAB had (1) applied an unduly high burden for the patent owner to establish a nexus between secondary indicia of non-obviousness and the challenged patent claims, and (2) erred in arbitrarily assigning “some” and “little” “weight” to evidence of commercial success and copying.  22-1765,—F.4th—(Fed. Cir. August 24, 2022).