Reexamination Control No. 90/005,742
Patent 5,253,341
1 Objective evidence of nonobviousness includes evidence of commercial success, such as
2 licensing agreements. In re GPAC Inc., 57 F.3d 1573, 1580, 35 USPQ2d 1116, 1122 (Fed. Cir.
3 1995).
4 As evidence that the claimed invention has been extensively licensed, appellant offers the
5 May 22, 2001, declaration by Anthony Brown, President of TechSearch, L.L.C., at that time the
6 owner of the '341 patent. Mr. Brown testified:
7 2. During the past twenty four (24) months, the '341 patent has
8 been licensed on a fully paid-up basis to fifty four (54) companies having
9 combined annual sales in excess of one hundred fifty billion
10 ($150,000,000,000).
11 3. Licenses have even been negotiated and granted during this
12 reexamination proceeding, which indicates to me a high level of
13 recognition of the value and importance of the patented invention.
14 4. Although the precise terms of the licenses are confidential, at
15 the requests of the licensees, the licenses covered all the claims of the '341
16 patent (that is, claims 1-16 as originally issued) and were entered into as a
17 result of the licensees' recognition that all claims – including dependent
18 claims – covered the activities of the licensees. This nexus is apparent
19 from the fact that the fifty four (54) licensees come from a wide range of
20 industries (from airlines to financial services), with the only common
21 feature being the licensees' use of the patented technology.
22 5. In my view, many thousands of web sites use the invention as
23 defined in the amended and newly submitted claims, which also shows the
24 commercial success of the invention claimed. This success has been
25 further established by the fact that more than $1.875 million in royalties
26 and/or settlements have been paid to TechSearch for the rights it has
27 granted under all claims of the '341 patent.
28
29 Brown Decl. at 1-2, paras. 2-5.
30 A party relying on licensing activities as evidence of unobviousness must demonstrate a
31 nexus between those activities and the subject matter of the rejected claims. See GPAC, 57 F.3d
32 at 1580, 35 USPQ2d at 1122:
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