Jason Reinecke, Assessing Evidence of Secondary Considerations, 68 Vill. L. Rev. 633 (2023).
Abstract
Although Federal Circuit case law is clear that evidence of secondary considerations is relevant to nonobviousness only if the evidence relates to the claim, the case law is inconsistent as to the degree of relatedness required. In attempting to answer this question, the Federal Circuit has applied multiple tests, which span from requiring merely that the evidence relates to a product that falls within the scope of the claim, to requiring that the evidence be commensurate with the full scope of the claim.
The Federal Circuit should resolve this conflict in the law. But the court should not do so in favor of any of its tests. The Federal Circuit’s tests improperly focus on the relation between the evidence and the claim, which, depending on the test and the circumstances, can cause secondary considerations evidence to be overvalued or undervalued. To better ensure that evidence of secondary considerations is properly assessed, the focus should instead be placed on the degree to which the evidence relates to the subject matter of the claim that the accused infringer argues would have been obvious.
