Secondary considerations of non-obviousness are a vital part of the obviousness inquiry and must be given due consideration.
Background / Facts: The patents on appeal here from an adverse decision at the ITC relate to smartphone touchscreens. In particular, one patent discloses how to make the touchscreen transparent by constructing its electrodes with indium tin oxide, a transparent material. The other patent discloses a method to determine if displaced charge at the nodes corresponds to a finger touching the screen by having the touch panel software “mathematically fit an ellipse” around the nodes at which the measuring circuits have detected a touch. The references cited as prior art are acknowledged as being similar in several respects, and indeed they expressly recommend as “Conclusions and Directions for Future Work,” for example, using combinations of different technologies that could be integrated with “most of today’s flat panel displays” and could be said to be equivalent to the claimed inventions. Apple attempted to counter a prima facie case of obviousness with evidence showing industry praise, copying, and high commercial success of the patented technology in its iPhone devices. This evidence was largely brushed aside by the ITC.
Issue(s): Whether the ITC erred by failing to analyze the proffered secondary consideration evidence of non-obviousness.
Holding(s): Yes. “We are troubled by the ITC’s obviousness analysis. We have repeatedly held that evidence relating to all four Graham factors – including objective evidence of secondary considerations – must be considered before determining whether the claimed invention would have been obvious to one of skill in the art at the time of invention. … The ITC failed to follow this precedent. Prior to even mentioning the secondary considerations, the ALJ concluded that ‘the evidence clearly and convincingly shows that the … patent is obvious in light of [two prior art references].’ … That error warrants vacating the ITC’s decision. … Apple presented compelling secondary considerations evidence that may have rebutted even a strong showing under the first three Graham factors, and the ITC failed to grapple with it.”