There have been many attempts by Patent Owners to rebut a prima facie case of obviousness by pointing to secondary considerations of non-obviousness. To date, such efforts have been unsuccessful. Like the largely unsuccessful motion to amend practice, the best practitioners can hope for is to learn from the shortcomings of other attempts and hope to eventually hit upon the magic formula that leads to a successful presentation of such secondary considerations. In that light we discuss the Final Written Decision in Kyocera Corp. and Motorola Mobility, Inc. v. Softview, LLC, IPR2013-00007 and IPR2013-00256, involving US Pat. No. 7,461,353, wherein the Board addressed several types of failed secondary considerations arguments. The ‘353 patent relates to a scalable display of internet content.

Patent Owner made several arguments involving objective indicia of non-obviousness, all of which were rejected as not being linked to the claimed subject matter: First, Patent Owner argued that the praise it received from competitors was evidence of non-obviousness.  The Board disagreed, finding that the praise Patent Owner received from a competitor was not in praise of the ‘353 claimed subject matter or product, but rather in praise of a company-vision speech by Patent Owner’s CEO.  Therefore, there was no nexus between the secondary consideration and the claimed subject matter. Order at 31.

Second, Patent Owner argued that the commercial success of products (iPhone and Android devices) incorporating the claimed subject matter of the ‘353 patent is evidence of non-obviousness.  However, Patent Owner was unable to prove that commercial success of the iPhone and Android devices which incorporated the claimed matter of the ‘353 patent was a result of the presence of the ‘353 invention in devices (a requirement for a valid commercial success non-obviousness argument).  In fact, expert testimony supported the idea that numerous factors contribute to the commercial success of iPhone and Android devices, not just one factor such as the ‘353 claimed subject matter. Therefore, the Board again found no nexus between the secondary consideration and the claimed subject matter. Id. at 32.

With Patent Owner’s arguments for secondary indicia of non-obviousness failing on lack of nexus to the claimed subject matter, the Board found all challenged claims of the ‘353 patent to be unpatentable.