Click here to view image.
In recent inter partes review (“IPR”) decisions, the Patent Trial and Appeal Board (“PTAB”) has consistently held that patent owners have failed to provide sufficient evidence of secondary considerations in support of patent validity. Cardiocom, LLC v. Robert Bosch Healthcare Systems, Inc. (IPR2013-00431, paper No. 67, January 15, 2015) continues this trend. In Cardiocom, the PTAB considered and rejected all five of the patent owner’s secondary considerations arguments, ultimately invalidating the patent at issue.
The Patent at Issue
The patent at issue is U.S. 7,921,186 (“the ‘186 patent”), which relates to remote patient monitoring systems. During the IPR proceedings, Robert Bosch Healthcare System (“Patent Owner”) contended, among other things, that secondary considerations supported the validity of the ‘186 patent. Paper No. 67, p. 30. In support of these contentions, the Patent Owner relied on the testimony of Dr. David, who provided an analysis of the “Health Buddy” remote health monitoring system, a device released in 1999 by the Patent Owner’s predecessor company which allegedly embodied the invention claimed by the ‘186 patent. Paper No. 67 at pg. 31. Dr. David focused on five different types of secondary considerations related to the Health Buddy: commercial success, long-felt need, industry praise, teaching away by others, and copying.
With respect to commercial success, the PTAB held that the Patent Owner and Dr. David failed to provide any analysis of how the “Health Buddy” allegedly embodied the challenged claims, or any analysis of why it was the unique characteristics of the claimed apparatus or method that drove sales. Paper No. 67 at pg. 32. To establish a proper nexus between a claimed invention and the commercial success of a product, a patent owner must offer “proof that the sales [of the allegedly successful product] were a direct result of the unique characteristics of the claimed invention – as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter”. In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996).
With respect to long-felt need, the PTAB held that, even assuming that the Health Buddy represented an improvement over prior art remote patient monitoring systems, such an assumption does not mean automatically that there was a recognized long-felt, but unmet, need in the art. Paper No. 67 at pg. 36. The PTAB noted that the evidence cited by Patent Owner and Dr. David pertained only to the Health Buddy itself and did not show recognition of a particular need prior to the Health Buddy. Id.
With respect to industry praise, the PTAB held that the Patent Owner and Dr. David failed to establish a sufficient nexus between industry praise and the claimed apparatus or method. Paper No. 67 at pg. 37. As with commercial success, evidence of industry praise is only relevant when it is directed to the merits of the invention claimed. In this case, Dr. David merely cited to numerous materials praising the Health Buddy in general, rather than praise due to specific features that are present in the claims. Id.
Teaching Away By Others
With respect to teaching away by others, the PTAB held that the Patent Owner’s argument that other systems with technically different features from the Health Buddy were available when the Health Buddy was released to be insufficient to establish teaching away by others. Paper No. 67 at pg. 37. The PTAB noted that the mere existence of alternatives in the marketplace does not constitute a secondary consideration of nonobviousness. Importantly, the PTAB also emphasized that the technically different features distinguishing the Health Buddy from other systems were immaterial because the claimed invention does not require the technically different features, noting that what matters when considering secondary considerations of nonobviousness is what is actually claimed. Paper No. 67 at pgs. 37-38.
Finally, with respect to copying, the PTAB held that neither Dr. David nor the Patent Owner provided any analysis or explanation of how other companies allegedly copied the Health Buddy system. Paper No. 67 at pg. 38. The Court noted that “[C]opying requires evidence of efforts to replicate a specific product”. Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010).
As Cardiocom and other recent IPR decisions illustrate, the PTAB is establishing a very high threshold for patent owners to meet in order to successfully prove that secondary considerations support a patent’s validity. Patent Owner experts need to specifically explain how the claimed features – and not just a product allegedly embodying the claimed features – relate to the secondary considerations arguments.