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Federal Circuit Clarifies That Secondary Considerations Must Be Considered Both Individually And As A Whole In An Obviousness Analysis

On August 24, 2023, the U.S. Court of Appeals for the Federal Circuit, in Volvo Penta of the Ams. LLC v. Brunswick Corp., Case No. 22-1765, vacated a Final Written Decision of the Patent Trial and Appeal Board (PTAB) holding all claims of U.S. Patent 9,630,692 (the “’962 patent”) unpatentable as obvious. The Federal Circuit remanded the decision for further evaluation of objective indicia of non-obviousness that the Board had not adequately considered. In doing so, the Federal Circuit provided some much-needed guidance on the requisite obviousness analysis and consideration of the various indicia.

The ’962 patent is directed to a boat drive, designed to provide a “pulling-type” or “forward facing drive” positioned under the stern of the boat. Volvo Penta’s commercial embodiment of the ’962 patent is called its “Forward Drive” system which “became extremely successful” when launched in 2015, in part, because it is safer for watersports. Brunswick launched its own boat drive system five years later, called the “Bravo Four S” drive.

On the same day that Brunswick launched the Bravo Four S drive, it petitioned the Board for an inter partes review of the ’962 patent asserting that all claims were obvious in view of two references: U.S. Patent 2,616,387 to Kiekhaefer (“Kiekhaefer”) and U.S. Patent 4,840,136 to Brandt (“Brandt”).  In response, Volvo Penta primarily challenged the motivation to combine Kiekhaefer and Brandt, while proffering evidence of six objective indicia of non-obviousness: copying, industry praise, commercial success, skepticism, failure of others, and long-felt but unsolved need.

The Federal Circuit found the PTAB’s finding of a motivation to combine to be supported by substantial evidence, before turning to an evaluation of Volvo Penta’s objective indicia of non-obviousness. The Federal Circuit first determined that Volvo Penta established the required nexus by demonstrating that the “steerable tractor-type drive as recited in each of the challenged claims” was what drove the success of the Forward Drive embodiment, and that that “[t]he inventive combination of propeller arrangement and steering axis location provided certain benefits praised in the industry and not achieved by drives in the prior art.”

Having found a nexus between the Forward Drive and the challenged claims of the ’962 Patent, the Federal Circuit next concluded that “the Board’s analysis of [this] objective indicia of non-obviousness, including its assignments of weight to different considerations, was overly vague and ambiguous.” Slip Op. at 15. For example, despite recognizing the importance of Brunswick internal documents demonstrating deliberate copying of the Forward Drive, and “finding copying, the Board only afforded this factor ‘some weight.’” Id. at 16. The Federal Circuit held that this “assignment of only ‘some weight’” was insufficient in view of its precedent, which generally explains that “copying [is] strong evidence of non-obviousness,” and the “failure by others to solve the problem and copying may often be the most probative and cogent evidence of non-obviousness.”

The Federal Circuit similarly held that Volvo Penta’s evidence of commercial success warranted more than merely “some weight.” For example, the court recounted that Brunswick either admitted or did not contest that “the Forward Drive essentially created a new market for stern drives,” “sales of the ‘Forward Drive have increased significantly since its launch in 2015,’” and “more and more boat builders are offering the Volvo Penta Forward Drive as original equipment, including boats specifically designed to incorporate the Forward Drive.” The Board’s decision to afford that factor “some weight” was not supported by substantial evidence. Slip Op. at 17.

The Federal Circuit also held that the Board failed to properly evaluate long-felt but unresolved need. For example, the court determined that the Board ignored evidence that “[e]ver since the first surfer discovered he could hang 10 behind a boat’s wake, back in the 1950s, people have been trying to figure out a way to do it better … and safer” and that “inboard V-drive manufacturers—their props tucked safely under the hull—enjoyed serving [the wakesurfing] market[,] sterndrive manufacturers couldn’t.” The Federal Circuit held that this evidence “indisputably identifies a long-felt need: safe wakesurfing on stern-drive boats.” The Federal Circuit also pointed to the age of the asserted prior art, Brandt (circa 1989, assigned to Volvo Penta) and Kiekhaefer (circa 1952, assigned to Brunswick), while noting that the fact that “Brunswick itself owned one of the asserted references for almost fifty years yet did not develop the claimed invention should not be overlooked.” Slip Op. at 19.

Finally, the Federal Circuit held that the Board’s ultimate evaluation of the objective indicia as a whole was flawed and not supported by substantial evidence. The court reasoned that evaluating and affording “some weight” to each factor individually was insufficient and faulted the Board’s decision for not “discuss[ing] the summation of the factors at all other than to say, without explanation, that they collectively ‘weigh somewhat in favor of non-obviousness.’ That is not sufficient to sustain its determination.” Id. at 20.

Overall, the Federal Circuit’s opinion provides fresh guidance and makes clear that adjudicators must closely engage with the evidence and provide well-reasoned explanations for the weighing of the objective indicia. It also serves as a reminder for patentees to be thoughtful and thorough in their presentation of objective indicia during IPRs and other forms of litigation, rather than merely reciting them in conclusory fashion. Under the facts of this decision, had Volvo Penta not presented such compelling evidence, there may not have been a basis to hold that the Board’s conclusion lacked substantial evidence support.

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Michael C. Newman represents Mintz clients in intellectual property disputes, with a focus on Section 337 investigations before the US International Trade Commission. His experience spans all phases of litigation. Michael successfully represents patent owners in inter partes review proceedings.
Peter J. Cuomo focuses his practice at Mintz on intellectual property enforcement and defense and counseling clients on issues related to IP rights. He handles all phases of patent litigation, and he has experience with resolving inventorship disputes.

Paul Weinand


Paul Weinand is a registered patent attorney and an Associate at Mintz who focuses on patent litigation before federal district courts, the ITC, and the PTAB. He handles disputes involving a wide range of technologies, including consumer electronics, consumer products, artificial intelligence, and medical devices.