EVIDENCE OF SECONDARY CONSIDERATIONS DOES NOT ALWAYS OVERCOME A STRONG PRIMA FACIE SHOWING OF OBVIOUSNESS

Asyst Technologies, Inc., v. Emtrak, Inc., [2007-1554] (October 10, 2008) [BRYSON, Michel, Newman] The Federal Circuit affirmed the district courts JMOL that the claims were invalid for obviousness.
DISCUSSION: The Federal Circuit agreed that multiplexers were well known in the art at the time of the patent, and that a person of skill in the art would be familiar with multiplexers and how to use them. Thus the Federal Circuit agreed that replacing a the bus of the prior art with a multiplexer is little more than “the simple substitution of one known element for another.” The patentee asserted that there was objective evidence of non-obviousness. The Federal Circuit noted that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support. Thus, even though commercial embodiments of the invention may have enjoyed commercial success, the patentee’s failure to link that commercial success to the features of its invention that were not disclosed in the prior art undermines the probative force of the evidence pertaining to the success of the invention. The Federal Circuit said that the same flaw attends the patentee’s reliance on the evidence of long-felt need for the invention and the evidence of industry praise. While the evidence showed that the overall system drew praise as a solution to a felt need, there was no evidence that the success of the commercial embodiment was attributable to the differences between the claimed invention and the prior art. Moreover, the Federal Circuit observed that evidence of secondary considerations does not always overcome a strong prima facie showing of obviousness.