This is likely now the seminal case on objective evidence of nonobviousness. The court went out of its way to note that “[f]ew cases present such extensive objective evidence of nonobviousness, and thus we have rarely held that objective evidence is sufficient to overcome a prima facie case of obviousness. … This, however, is precisely the sort of case where the objective evidence ‘establish[es] that an invention appearing to have been obvious in light of the prior art was not.’” Because of the fact specific nature of each type of evidence and the rarity with which this issue actually comes up, I think it is sufficient to merely point out this case as offering the best roadmap yet for crafting effective evidence of nonobviousness, and note that it should be consulted if the occasion arises.
Background / Facts: The patents-in-suit were directed to an improved apparatus for conducting offshore drilling by using a derrick with both a main and an auxiliary advancing station, each of which can separately assemble drill strings and lower components to the seafloor. In a prior appeal addressing summary judgment of obviousness (Transocean I), it was established that, as law of the case, the cited prior art references made out a prima facie case of obviousness. Summary judgment was vacated, however, because the district failed to consider Transocean’s objective evidence of nonobviousness. On remand (the case out of which the present appeal arises), the jury made express findings that Transocean had presented a strong basis for rebutting the prima facie case of obviousness, but the district court nevertheless granted a motion for JMOL that the record evidence failed to support the jury’s findings.
Issue(s): Whether the evidence presented of industry praise, commercial success, industry skepticism, and copying was sufficient to overcome the prima facie case of obviousness.
Holding(s): Yes. Transocean presented an impressive amount of evidence relating to no fewer than seven types of objective evidence of nonobviousness: commercial success, industry praise, unexpected results, copying, industry skepticism, licensing, and long-felt but unsolved need. The CAFC walked through each of these indicia in detail, commenting on the evidence and how it overwhelmingly supported Transocean’s case for nonobviousness. At each turn, the CAFC sided with the jury and chastised the district court for being closed minded and biased. “The district court’s analysis seems to have been clouded by its view that the asserted claims would have been obvious over the prior art. This is precisely the sort of hindsight bias that evaluation of objective evidence is intended to avoid.”