Addressing the legal standard for an obviousness determination under 35 U.S.C. § 103, the U.S. Court of Appeals for the Federal Circuit made clear that evidence on secondary considerations must be considered before reaching any decision on obviousness.  Mintz v. Dietz & Watson, Inc., Case No. 10-1341 (Fed. Cir., May 30, 2012) (Rader, C. J.).

In Mintz, the Federal Circuit vacated a district court’s summary judgment decision finding a patent invalid as obvious on several grounds, including the district court’s failure to consider evidence of secondary considerations before reaching a summary judgment decision on obviousness.  The Federal Circuit observed that the district court in Mintz “seemed to believe that it need not fully weigh objective indicia evidence” of secondary considerations.  The Federal Circuit reaffirmed that it has consistently counseled otherwise and that the district court’s obligation to consider secondary considerations is not waived “by some procedural requirement that ducks consideration of the evidence.”  Secondary considerations are objective guideposts and “powerful tools for courts faced with the difficult task of avoiding subconscious reliance on hindsight” that must be evaluated before reaching a decision on obviousness.  Secondary considerations provide “built-in protection [that] can help to place a scientific advance in the proper temporal and technical perspective when tested years later for obviousness against charges of making only a minor incremental improvement.”  As the Federal Circuit aptly noted, “[o]bviousness requires a court to walk a tightrope blindfolded (to avoid hindsight)—an enterprise best pursued with the safety net of objective evidence.”  Because the district court committed legal error and obviousness is a factual inquiry, the Federal Circuit did not make the required fact findings on secondary considerations and remanded the case back to the district court. 

Practice Note:  Because a district court must consider evidence of secondary considerations (when present) before reaching a decision on obviousness, it is possible for a patent owner to postpone early motions for summary judgment pursuant to Fed. R. Civ. P. 56(d) so that sufficient evidence on secondary considerations may be gathered (including, for example, evidence from the accused infringer and third parties concerning copying or praise for the patented invention).