The Federal Circuit recently expanded the role of secondary considerations, or objective indicia, of non-obviousness in the obviousness calculus.  In Plantronics, Inc. v. Aliph, Inc., the district court held claims directed to a headset stabilizer invalid as obvious.   No. C09-1714, 2012 U.S. Dist. LEXIS 40172 (N.D. Cal. Mar. 23, 2012).  On appeal, the Federal Circuit reversed, concluding that the district court had improperly found a motivation to combine and had not properly considered objective indicia of non-obviousness in its analysis.  No. 2012-1355, 2013 U.S. App. LEXIS 15615 (Fed. Cir. July 21, 2013).

First, on whether there existed a motivation to combine, the district court found that common sense would have motivated a person of skill to combine the teachings of the prior art.  While acknowledging that common sense may provide a motivation to combine, the Federal Circuit noted that there must be some support underpinning why common sense compels a finding of obviousness.  The Federal Circuit was particularly concerned that the district court had not cited any expert testimony indicating that there was a motivation to combine.

Second, the Federal Circuit held that the district court erred in its failure to give proper consideration to objective indicia of non-obviousness.  Though these factors have previously been labeled “secondary considerations,” the Federal Circuit stated that “[t]he significance of this fourth Graham factor [objective indicia of nonobviousness] cannot be overlooked or relegated to ‘secondary status.’”  The Federal Circuit reinforced that “all evidence pertaining to objective indicia of nonobviousness must be considered before reaching an obviousness conclusion.”  Thus, the so-called “secondary considerations” should be given the same consideration as the first three Graham factors.  Here, where the plaintiff presented evidence of copying and commercial success in response to defendant’s motion for summary judgment, the Federal Circuit held that this evidence raised genuine issues of material about the “common sense” motivation to combine the cited prior art references such that summary judgment was improper.

When arguing a “common sense” motivation to combine, parties should ensure that they have, at minimum, expert testimony explaining why common sense provides the requisite motivation to combine.  Pharmaceutical companies should also remember that objective indicia must be considered by the Court, and to fully develop all evidence and expert testimony on any relevant indicia.