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Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/22-1765.OPINION.8-24-2023_2179988.pdf"><em>Volvo Penta of the Americas, LLC v. Brunswick Corp.</em>, No. 2022-1765 (Aug. 24, 2023)</a>, vacating and remanding the Patent Trial and Appeal Board’s determination that a Volvo Penta patent was unpatentable as obvious.

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The patent, U.S. Patent No. 9,630,692, claimed steerable tractor-type stern drives for a boat that incorporated forward-facing propellers. In 2015, Volvo Penta launched its extremely successful commercial embodiment, the Forward Drive. In 2020, Brunswick launched a product that undisputedly embodied the ’692 patent and petitioned for <em>inter partes</em> review. After instituting the IPR, the Board rejected the challenged claims as obvious over a combination of two prior art references. Volvo Penta appealed. When the parties settled after briefing concluded, the USPTO intervened, adopting Brunswick’s arguments to defend the Board’s decision.

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On appeal, Volvo Penta first argued that substantial evidence did not support the Board’s finding of motivation to combine, asserting that the Board ignored several factual assertions. The Federal Circuit disagreed, concluding that the Board considered and properly evaluated those assertions in view of the record and that substantial evidence supported its motivation-to-combine finding.

Volvo Penta next argued that the Board erred in finding a lack of nexus between the claimed inventions and the objective evidence of nonobviousness. The Court agreed with the Board that Volvo Penta failed to establish that a presumption of nexus applied because it only submitted conclusory arguments that the commercial embodiments were coextensive with the claimed invention. But the Court rejected the Board’s finding that Volvo Penta failed to prove nexus. It credited record evidence tying the success of the Forward Drive to the claimed features, such as internal Brunswick documents that discussed the need to develop a similar product.

Volvo Penta last challenged the Board’s analysis of the objective evidence of nonobviousness. The Court agreed with this challenge, rejecting the Board’s analysis as vague and ambiguous. The Court faulted the Board for assigning only “some weight” to strong evidence of copying and commercial success, for failing to explain why it assigned the same weight to weaker evidence of industry praise, and for improperly evaluating evidence of long-felt but unsolved need. Finally, the Court determined that the Board failed to explain its conclusion that Brunswick’s evidence of obviousness outweighed the objective evidence of nonobviousness.

CAFC Rejects PTAB Decision of Unpatentability Due to Flawed Secondary Considerations Analysis

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