In World Bottling Cap v. Crown Packaging Technology, the PTAB relied upon the patent owner’s “compelling evidence of secondary considerations” to uphold the patentability of a bottle cap patent. The patent claimed a seemingly simple invention, a bottle cap made from steel that is thinner and harder compared to that of conventional caps. All elements of the claims were disclosed by the prior art, and the parties agreed that the purported advantage of the invention, the use of less steel per cap (referred to as “lightweighting”), was a known industry trend. In many cases, this would be the end of the road for the challenged claims. However, the PTAB weighed the patent owner’s evidence of secondary considerations against the petitioner’s prima facie case of obviousness and, in a rare instance, found that secondary considerations saved the day for the patent.
The PTAB found there was a strong correlation between the claimed invention and the proffered secondary considerations. It noted that the patent owner’s evidence of nexus (inventor testimony and documents listing specifications for the commercial caps) showed that the claimed invention was the entirety of the commercial product and not just a subcomponent. Accordingly, the PTAB “consider[ed] the evidence of the success and praise of the [commercial] cap as direct evidence of the success and praise of the claimed invention.”
Turning to commercial success, the PTAB found it persuasive that the patent owner’s market share increased by about 7 percent during the time period when the claimed cap phased out its predecessor product. Given the strong nexus between the patent owner’s commercial cap and the claimed invention, the PTAB found that the patent owner’s commercial success was due to the merits of the claimed invention.
The PTAB next considered patent owner’s evidence of industry praise, which showed that the industry considered the benefits of the claimed invention to be significant from a cost and environmental standpoint. The evidence also showed that the industry was motivated to use harder, thinner steel, but that a technical roadblock prevented industry members from doing so. Patent owner’s claimed invention used grooves that overcame the technical roadblock and made the use of harder, thinner steels possible, and the PTAB thought this fact provided an explanation for the industry praise. Once again considering the strong nexus between the patent owner’s commercial cap and the claimed invention, the PTAB found the industry praise to be directed to the merits of the claimed invention.
After dismissing patent owner’s copying argument for lacking “evidence that the other party actually used the claimed invention as a roadmap to create their own product,” the PTAB weighed the patent owner’s other evidence of secondary considerations against the petitioner’s obviousness case, and determined that the claims were patentable.
It is noteworthy that the PTAB referred multiple times to its finding of a “strong nexus” between the commercial cap and the claimed invention to support its finding of patentability. The PTAB also found it persuasive that the patent claims were commensurate in scope with the patent owner’s commercial product. In crafting a secondary considerations case, counsel for patent owners will benefit from offering ample evidence of a nexus, instead of mere empty allegations. Additionally, counsel for patent owners should strive to prove secondary considerations that are driven primarily by the claimed unit, as compared to a larger assembly of components.