The Fourth Factor: Obviousness in the USA

Arguments for inventive step based on the commercial success of the invention, or that the invention fulfilled a long-felt need, can theoretically be an indicator of inventive step. In Europe, these “secondary indicia” are argued regularly enough but usually to little effect. But when the time comes for the EPO to balance up the question of obviousness, the scales of obviousness are rarely troubled by the presence or absence of such insectile arguments, once the elephant of the problem-solution approach has settled its ponderous backside on one side or the other.
A little-used metaphor for the
inventive step analysis
So it’s interesting to see a completely different take from the Court of Appeals for the Federal Circuit (CAFC) in its recent Transocean II decision (Transocean v Maersk, PDF here). The case concerned a patent for offshore drilling rigs, and the IPKat begins with the - slightly abridged and edited - view of the Court on apparent obviousness over the prior art, repeating a finding it had made in an earlier appeal in the same litigation:
"We concluded that the references “present a prima facie case of obviousness.” Transocean I thus establishes as law of the case that Horn and Lund [the two prior art documents] teach every limitation of the asserted claims and provide a motivation to combine their respective teachings."

In Europe, the same sentiments might be expressed in different language, but once expressed that would be it. Game, set and match against the patentee. Counsel for the patentee, upon hearing a judge describe the prior art and the invention in such terms, would probably only stick around to hear the rest of the judgment out of respect for the Court and to stay in the judge's good books, but not in any expectation of leaving with a patent intact. But back in the CAFC Judge Kimberly Moore was only getting warmed up:
"The establishment of a prima facie case, however, is not a conclusion on the ultimate issue of obviousness. The prima facie inquiry is based on the first three Graham factors—the scope and content of the prior art, the differences between the prior art and the claims, and the level of ordinary skill in the art. A party is also free to introduce evidence relevant to the fourth Graham factor, objective evidence of nonobviousness, which may be sufficient to disprove or rebut a prima facie case of obviousness.
Only in cases of doubt?
Yes says the EPO. No says the CAFC
"As we have repeatedly held, “evidence rising out of the so-called ‘secondary considerations’ must always when present be considered en route to a determination of obviousness. … [E]vidence of secondary considerations may often be the most probative and cogent evidence in the record. It may often establish that an invention appearing to have been obvious in light of the prior art was not.”. This objective evidence must be “considered as part of all the evidence, not just when the decisionmaker remains in doubt after reviewing the art.”" [emphasis added]
It is this last passage that most clearly indicates the difference in approach on either side of the Atlantic. The EPO Case Law book, in contrast, says:
"Secondary indicia of this kind are only of importance in cases of doubt, i.e. when objective evaluation of the prior art teachings has yet to provide a clear picture. Indicia are merely auxiliary considerations in the assessment of inventive step."
It is rare to see a decision at the EPO where doubt is admitted and the secondary indicia are cited as the deciding factor. If the evidence offered is accepted as relevant, the Board will say either that the evidence cannot displace the (negative) inventive step finding, or that it strengthens and confirms the objective (positive) conclusion. But what you will never see in Europe is a decision like Transocean II where a prima facie finding of obviousness is reversed because of the persuasiveness of the secondary evidence.

Circuit Judge Moore, of whom the IPKat
inexplicably used the pronouns "he"
and "his" in the initial release of this post
But back to the US: the CAFC judges know that decisions like this can be seen as manna from heaven for the holders of dubious patents, and almost inevitably result in a deluge of cases argued as though commercial success alone was now the gold standard of patentability. Judge Moore, therefore, used her decision to close down the appealingly open goalmouth she had apparently presented above. (This being a post about a US decision, the metaphor refers to the goals used in “hockey”, meaning ice hockey.) Judge Moore concluded:
"Few cases present such extensive objective evidence of nonobviousness, and thus we have rarely held that objective evidence is sufficient to overcome a prima facie case of obviousness. This, however, is precisely the sort of case where the objective evidence “establishes that an invention appearing to have been obvious in light of the prior art was not.” The jury found that seven distinct objective factors support nonobviousness and, as discussed above, these findings are all supported by substantial evidence."
In other words, "don't think that just because we've upheld this patent we are going to do the same based on just any old flimsy commercial success evidence."
As for the seven types of objective evidence of non-obviousness argued for and recognized by the jury, some may come as a surprise:
  • Commercial success
  • Industry praise
  • Unexpected results
  • Copying by the defendant
  • Industry skepticism
  • Licensing deals not attributable to fear of litigation
  • Long-felt but unsolved need.
The IPKat would be interested to hear from readers who have successfully argued using secondary indicia, where those factors were acknowledged to be the tipping factor for patentability (and not simply further evidence supporting an objective finding that the claims were not obvious). Use the comments box below, or email
The Fourth Factor: Obviousness in the USA The Fourth Factor: Obviousness in the USA Reviewed by David Brophy on Monday, November 19, 2012 Rating: 5


  1. I had not realised that Circuit Judge Moore had undergone a sex change operation.

    We should keep in mind that the entity for which to subject matter was or was not obvious is the PHOSITA, and not a real life being.

    The EPO operates the principle of the unfettered consideration of any and all "evidence", even when running its PSA program. Some of the stuff you could categorize as 2secondary" might influence that run, throwing light on whether prior publication D2 really does provide PHOSITA struggling with the OTP with a hint or suggestion to solve the problem by changing the thing taught in D1 into something within the scope of the claim in suit.

    EPO-PSA is always attacked as being dependent on hindsight. It really does eschew ex post facto analysis though. Any reliance on secondary factors like commercial success only damages the integrity of EPO-PSA as untainted by hindsight. No wonder then, that the EPO is so leary of it.

    Cite it though. It just might make the difference.

  2. You're right Max, no gender reassignment for Judge Moore, as the edited post now acknowledges.

  3. Schlumberger v Electromagnetic Geoservices ([2010] EWCA Civ 819) is a "European" case where secondary evidence overcame a prima facie finding of obviousness, I believe.

    I think one issue is that you're comparing the US courts with the EPO - a court (particularly a common law court) is always going to pay more attention to evidence, of all types. If you compared the decisions of the various European courts with the day to day behaviour of the USPTO, you might well come to the opposite conclusion that secondary evidence can succeed in Europe but ineviyably fails in the USA. (Or you might not, but you see my point.)

  4. The EPO also does not use juries to judge obviousness ...

  5. The term “secondary evidence” was coined by the USSC in Calmar v. Cook Chemical, the companion case to Graham v. John Deere Co., 383 U.S. 1 at 26ff (1966), which was also the first suggestion that such evidence was inherently less worthy than opinion evidence of experts as to obviousness: see John F. Duffy, “The Shape of Things to Come: A Timing Approach to Patentability” (2008) 12 Lewis & Clark L. Rev. 343 at 368ff for the origin of the term. It was first used in the UK in Mölnlycke AB v. Procter & Gamble Ltd. [1994] R.P.C. 49 (C.A.), where the UKCA stated that such evidence is substantively secondary to that of expert witnesses. For a critique of that position, see my article ‘“Secondary” Evidence of Obviousness Is Not Secondary’ available at SSRN:


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