Self-serving statements from researchers about their own work does not constitute industry praise for the purposes of establishing secondary evidence of nonobviousness. Here, for example, press releases describing work similar to the claimed invention but made by others as a “breakthrough” and an “innovative idea” was found to be unreliable due to self-interest, and therefore unpersuasive. “While praise in the industry for a patented invention, and specifically praise from a competitor tends to indicate that the invention was not obvious, self-serving statements from researchers about their own work do not have the same reliability.” It may therefore be best to ensure that evidence of industry praise comes from a third party source that is unaffiliated with not only the claimed invention, but also the work being praised.
Background / Facts: The patent on appeal here from reexamination proceedings at the PTO is directed to the production of white light through the “down-conversion” of blue light from light-emitting diodes (“LEDs”). As secondary evidence of non-obviousness, the patentee pointed to two press releases describing similar work from others as a “breakthrough” and an “innovative idea.”
Issue(s): Whether, even though the press releases were directed to the work of others, the praise for the concept still had the requisite nexus to the claimed invention.
Holding(s): No. “While praise in the industry for a patented invention, and specifically praise from a competitor tends to indicate that the invention was not obvious, self-serving statements from researchers about their own work do not have the same reliability. [] The Board thus permissibly concluded that the press releases were unpersuasive.”