For several years now, the Federal Circuit has seemingly struggled to articulate the proper role of objective evidence of non-obviousness, often referred to as secondary considerations, in obviousness determinations. In accordance with the Supreme Court’s decision in Graham v. John Deere Co., 383 U.S. 1 (1966), the Federal Circuit requires that legal determinations of obviousness be based on factual inquiries regarding: (1) the scope and content of the prior art; (2) differences between the prior art and the claims at issue; (3) the level of ordinary skill in the pertinent art; and (4) any objective indicia of non-obviousness, such as commercial success, long-felt but unsolved need, failure of others, industry praise, unexpected results, and copying. On one hand, the Federal Circuit has appeared to reject a formal burden-shifting framework under the Graham factors, directing courts to consider all evidence relevant to obviousness or non-obviousness, and to consider it collectively, before reaching a conclusion of obviousness. See, e.g., In re Cyclobenzprine, 676 F.3d 1063, 1077-78 (Fed. Cir. 2012). On the other hand, the Federal Circuit also has held that, in particular cases, a patent owner’s objective evidence failed to overcome a prima facie case of obviousness based on the first three factors. See, e.g., Cubist Pharm., Inc. v. Hospira, Inc., 805 F.3d 1112, 1130 (Fed. Cir. 2015).
On September 7, 2017, in Intercontinental Great Brands LLC v. Kellogg North America Co., a 2-1 panel decision of the Federal Circuit again endorsed the latter approach, affirming a district court’s summary judgment of obviousness. Nos. 2015-2082, 2015-2084, majority slip op. at 1, 14-19 (Fed. Cir. Sept. 7, 2017). Continue reading