FOX Factory, Inc. v. SRAM, LLC
In determining the presumption of nexus for secondary considerations, a patent claim is not coextensive with a product that includes a “critical” unclaimed feature that materially impacts the product’s functionality.
In determining the presumption of nexus for secondary considerations, a patent claim is not coextensive with a product that includes a “critical” unclaimed feature that materially impacts the product’s functionality.
Claims are obvious if a person of ordinary skill in the art would have been motivated to combine/modify prior art systems with predictable results. Findings of obviousness are a matter of law and thus reviewed de novo.
Inherency may supply a missing claim limitation in an obviousness analysis where the limitation issue is the natural result of the combination of prior art elements.
Inherency may supply a missing claim limitation in an obviousness analysis where the limitation issue is the natural result of the combination of prior art elements.
Invocation of common sense properly accompanied by reasoned analysis and evidentiary support serves a critical role in determining obviousness.
If the prior art teaches two predictable choices and a person of ordinary skill in the art has good reason to pursue the known options within his or her technical grasp, then § 103 will bar the patentability of an obvious variation.
A weak showing of both long-felt but unresolved need and copying cannot overcome a strong showing of obviousness set forth by predictable use of prior art elements according to established functions.
A strong showing of objective indicia of non-obviousness may not overcome a stronger prima facie case of obviousness. Further, clear and convincing evidence is needed for an inequitable conduct charge.
Inherency may be used to supply a missing claim limitation when the missing claim limitation is necessarily disclosed by a reference; however, the PTO may require an applicant to prove that subject matter shown to be in a reference does not possess a characteristic relied upon with respect to functional limitations.
Motivation to combine references will not be extinguished based only on preferred or selected embodiments. To successfully argue that prior art references teach away from combination, there needs to be a showing that a person of ordinary skill in the art would not have been motivated to combine the prior art to reach any of the embodiments within the scope of the challenged claims.