Commercial Success — In re Saunders


The Federal Circuit decided In re Saunders last week, an appeal from the BPAI relating to charcoal briquets.  The Federal Circuit issued a Rule 36 decision.

The oral argument is pretty interesting in that it discusses how the PTO treats evidence of commercial success.  One interesting issue was whether the rule recognized in Ormco v. Align, 463 F.3d 1299 (Fed. Cir. 2006) should extend to proceedings in the PTO, even though it was a rule expressed in the context of patent litigation, not ex parte examination.  The opinion in Ormco v. Align states:

Evidence of commercial success, or other secondary considerations, is 1312*1312 only significant if there is a nexus between the claimed invention and the commercial success. As we explained in J.T. Eaton & Co. v. Atlantic Paste & Glue Co., 106 F.3d 1563 (Fed.Cir.1997), “[w]hen a patentee can demonstrate commercial success, usually shown by significant sales in a relevant market, and that the successful product is the invention disclosed and claimed in the patent, it is presumed that the commercial success is due to the patented invention.” Id. at 1571; see also Brown & Williamson, 229 F.3d at 1130 (stating the presumption that commercial success is due to the patented invention applies “if the marketed product embodies the claimed features, and is coextensive with them.”).

You can listen to the panel discuss the issue with the Associate Solicitor for the PTO [here]. 

Unfortunately, the panel used Rule 36 rather than writing either a precedential or non-precedential opinion.  Since KSR v. Teleflex was decided, secondary considerations have gained even more importance in the prosecution of patent applications.  It would be helpful to have an opinion from the court that weighs in on whether the rule recognized in Ormco v. Align should apply to prosecution before the PTO.

You can listen to the entire oral argument [here].

You can read the court’s Rule 36 opinion [here].

You can read the BPAI opinion [here].

As an aside, do you think Judge Moore is pretty adept at reading Green Eggs and Ham: [Listen].

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