In Arctic Cat, Inc. v. Polaris Industries, Inc. (IPR2015-01789), the Board again examined secondary considerations of non-obviousness but found them to be unpersuasive because “the claims capture features largely well-known in the art” and the commercial embodiments “[include] important unclaimed features.” In stark contrast to the simple bottle cap in World Bottling Cap v. Crown Packaging Technology, the alleged commercial embodiments of the claimed invention in this case are complex vehicles – the Polaris RZR XP 900 and XP 1000. As secondary considerations of non-obviousness, the Patent Owner asserted both commercial success and industry praise of these Polaris vehicles.
To show nexus, the Patent Owner provided claim charts mapping all the features of certain claims to the Polaris vehicles. Further, the Patent Owner cited to “significant sales” of the Polaris vehicles as commercial success, and provided several advertising brochures and literature touting various benefits of these vehicles. The Patent Owner relied on, for example, the Polaris vehicles’ “rear suspension,” as claimed in the patent, as being a part of their success.
In response, the Petitioner pointed out that (i) Patent Owner previously, in another IPR involving the same parties, asserted that different features claimed in other patents drove demand for the Polaris vehicles, and (ii) the advertising brochures of the Polaris vehicles tout a panoply of unclaimed features. The Petitioner did not dispute that the claims covered the Polaris vehicles. Similarly, the Board explained when broad claims capture a single or multiple commercial embodiments, nexus is presumed. The breadth of the claims in this case, however, spell their own doom.
Noting the breadth of the claims, the Board found that “the broadly recited claims capture features well-known in the art, and they do not recite or require several features that Patent Owner’s cited literature touts as important.” For example, the Board noted power, wheel travel, minimal wheel scrub, and many other features of the Polaris vehicles touted by the literature – these features were not covered by the patent claims at issue. The Board ultimately afforded little weight to the Patent Owner’s evidence of commercial sales and industry praise because the “literature shows that a combination of many unclaimed features instigated the literature praise by contributing to the performance of the whole package that makes up its commercial vehicles.” (Emphasis added.)
Complex devices are often the product of multiple innovations and features. Of course, a single device may be covered by any number of patents having claims directed variously to a single component, any combination of components, or the device as a whole. Each innovation may bring different benefits to its end user. So, even with a presumption of nexus, are secondary considerations of non-obviousness practical for complex devices? Maybe, but consider narrowly tailoring the evidence of secondary consideration to the claims, or, if needed, retreating to a narrower dependent claim.