In 2015, Volvo Penta launches a stern-drive, steerable, forward-facing marine engine. In these motors, the propeller faces the bow, as seen from Figure 1.[i] The product was based on a patented design, covered by Hasl, et al. (Pat. No. 9,630,692). The design of Pat. ‘692 covered the drive
section, which was noted differs from inboard front-drive designs, such as Volvo Penta’s IPS™ drive, that is specific to outboard engines, as seen in Figure 2. The design was quickly adopted in
wakesurfing and water sports boats, as it increases the distance from the propeller and persons in the water.[ii] In 2020, Brunswick launched a competing drive, as seen in Figure 3, and filed a petition with the USPTO the same day, challenging the validity of Pat. ‘692, for obviousness and
anticipation.[iii] The court focused on the obviousness arguments, including Volvo Penta’s claims of nonobvious secondary factors.[iv]
One of the substantive requirements to obtain a patent, 35 U.S.C. §103, states
if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The U.S. Supreme Court has provided some factors that are pertinent in determining obviousness versus non-obviousness, namely,
(1) determining the scope and content of the references in the field (prior art);
(2) differences between the references and the claims;
(3) the level of skill in the field (ordinary skill in the art);
(4) considering any secondary considerations, like commercial success of the invention (that relates to the inventive aspect of the product), unsolved need in the field, and failure of others.[v]
After quickly dispelling the anticipation, the Court addressed the obviousness concerns, notably, that the inboard, stern drive of the Brandt patent (U.S. Pat4,840,136) could be redesigned to use the outboard motor disclosed in Kiekhaefer (U.S. Pat. 2,616,387).
Volvo Penta made various attacks on the showing of obviousness, which were all unsuccessful.[vi] However, the Court analyzed the secondary considerations of nonobviousness, noting as a preliminary matter that a link, or nexus, must be made between the secondary considerations and the claimed invention. This nexus can be shown by “[(1)] a presumption of nexus, or (2) via a showing that the evidence is a direct result of the unique characteristics of the claimed invention.”[vii] The Court will presume a nexus exists if the evidence of secondary considerations is “tied to a specific product that ‘embodies the claimed features, and is coextensive with them.’”[viii] However, the commercial product can include noncritical features, and still support the nexus.[ix] Without the presumption of a nexus, a patent owner can “prove nexus by showing that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’”[x] Further, the nexus does not need to consist solely of the unique characteristics, but should consider the invention as a whole when determining whether a nexus exists between the claimed features and the commercial product.[xi] However, any showing by the patent owner must include more than a paragraph citation to an expert declaration and conclusory sentence.[xii]
Volvo Penta advanced arguments that the steerable drive of Pat. ‘692 drove the success of the Volvo Penta Forward Drive. In support, Volvo Penta presented documents from Brunswick that stated Brunswick needed a comparable forward-facing sterndrive that possessed “capabilities that match the Volvo Penta Forward Drive,” and noted the forward-facing drive was extremely useful in wake-surfing.[xiii] Additionally, the documents showed “[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.”[xiv] Other Brunswick internal documents showed that the company used Volvo Penta’s Forward Drive to design its competing Bravo Four S drive, which the court found similar to copying, and concluded a nexus existed between the unique features of Volvo Penta’s patented design and the secondary considerations.[xv] The Court also noted a publication in the maritime industry discussing the problems that existed in wake surfing prior to Volvo Penta’s drive, and the benefits afforded by the new design.[xvi]
The Court then found there was a nexus between the secondary considerations of nonobviousness and the patented design. It noted that copying is not dispositive in the nonobvious determination, but provides “strong evidence” of such, as does failure of others to solve the problem addressed by the patented invention.[xvii] Furthermore, while the age of a reference does not suggest nonbviousness, the date of a reference can be important in determining the weight assigned to a long-felt, unresolved need in the field.[xviii] In this instance, the evidence showed market demand for at least a decade. Brunswick owned one of the patents cited against Pat. ‘692, suggesting the technology was not obscure, and the Court concluded the evidence of nonobviousness needed to be given appropriate weight, and considered in a whole, i.e. additive weight afforded to the various evidence of nonobviousness.[xix]
Documentary evidence can be important, if not critical, to the patenting of an invention. Ideally, the support for nonobviousness is added into the patent application, allowing the examiner- or board or court- to readily identify the indicia showing patentability. However, documents obtained after the patenting of an invention can be likewise critical to defending a patent, as shown in this case. Documents obtained from competitors, such as during discovery, or articles in journals or other publications in the field, can be useful in showing the nonobviousness of the invention.
[i] Volvo Penta of the Americas, LLC v. Brunswick Corp., No. 2022-1765, slip opinion at 3-4 (Fed. Cir., Aug. 24, 2023).
[ii] Volvo Penta, No. 2022-1765, at 4 (Fed. Cir., Aug. 24, 2023).
[iii] Volvo Penta, No. 2022-1765, at 4 (Fed. Cir., Aug. 24, 2023).
[iv] Volvo Penta, No. 2022-1765, at 4-5 (Fed. Cir., Aug. 24, 2023).
[v] Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459 (1966).
[vi] Volvo Penta, No. 2022-1765, at 7-10 (Fed. Cir., Aug. 24, 2023).
[vii] Volvo Penta, No. 2022-1765, at 10(Fed. Cir., Aug. 24, 2023).
[viii] Volvo Penta, No. 2022-1765, at 10-11(Fed. Cir., Aug. 24, 2023) (citing Brown & Williamson Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000)).
[ix] Volvo Penta, No. 2022-1765, at 11 (Fed. Cir., Aug. 24, 2023) (citing PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 734, 747 (Fed. Cir. 2016)).
[x] Volvo Penta, No. 2022-1765, at 11 (Fed. Cir., Aug. 24, 2023) (citing Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373–74 (Fed. Cir. 2019)).
[xi] Volvo Penta, No. 2022-1765, at 14 (Fed. Cir., Aug. 24, 2023) (citing WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1330 (Fed. Cir. 2016); Chemours Co. FC, LLC v. Daikin Indus., Ltd., 4 F.4th 1370, 1377 (Fed. Cir. 2021)).
[xii] Volvo Penta, No. 2022-1765, at 12 (Fed. Cir., Aug. 24, 2023).
[xiii] Volvo Penta, No. 2022-1765, at 13 (Fed. Cir., Aug. 24, 2023).
[xiv] Volvo Penta, No. 2022-1765, at 13 (Fed. Cir., Aug. 24, 2023).
[xv] Volvo Penta, No. 2022-1765, at 14 (Fed. Cir., Aug. 24, 2023).
[xvi] Volvo Penta, No. 2022-1765, at 18 (Fed. Cir., Aug. 24, 2023).
[xvii] Volvo Penta, No. 2022-1765, at 16 (Fed. Cir., Aug. 24, 2023) (citing Panduit Corp. v. Dennison Mfg. Co., 774 F.2d 1082, 1099 (Fed. Cir. 1985); Advanced Display Sys. v. Kent State Univ., 212 F.3d 1272, 1285 (Fed. Cir. 2000); Windsurfing Int’l, Inc. v. AMF, Inc., 782 F.2d 995, 1000 (Fed. Cir. 1986)).
[xviii] Volvo Penta, No. 2022-1765, at 19 (Fed. Cir., Aug. 24, 2023) (citing Leo Pharm. Prods., 726 F.3d 1346, 1359 (Fed. Cir. 2013); Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1338 (Fed. Cir. 2016)).
[xix] Volvo Penta, No. 2022-1765, at 19 (Fed. Cir., Aug. 24, 2023).
