Reexamination Control No. 90/005,742
Patent 5,253,341
1 Licenses taken under the patent in suit may constitute evidence of
2 nonobviousness; however, only little weight can be attributed to such
3 evidence if the patentee does not demonstrate “a nexus between the merits
4 of the invention and the licenses of record.” Stratoflex [Inc. v. Aeroquip
5 Corp.], 713 F.2d [1530,] 1539, 218 USPQ [871,] 879 [(Fed. Cir. 1983)];
6 see Demaco [Corp. v. F. Von Langsdorff Licensing Ltd.], 851 F.2d
7 [1387,] 1392, 7 USPQ2d [1222,] 1226 [(Fed. Cir. 1988)].
8
9 The GPAC court held that "[b]ecause, in affidavits reciting the licensing history of the ‘111
10 patent, GPAC did not establish which claim(s) of the patent the licensing program incorporates,
11 GPAC has not shown that licensing of Natale's invention arose out of recognition and acceptance
12 of the subject matter claimed in the ‘111 patent." GPAC, 57 F.3d at 1580, 35 USPQ2d at 1122.
13 Furthermore,
14 affirmative evidence of nexus [is required] where the evidence of
15 commercial success presented is a license, because it is often “cheaper to
16 take licenses than to defend infringement suits.” EWP Corp. v. Reliance
17 Universal Inc., 755 F.2d 898, 908 [225 USPQ 20, 26] (Fed. Cir. 1985).
18 . . . Without a showing of nexus, “the mere existence of . . . licenses is
19 insufficient to overcome the conclusion of obviousness” when there is a
20 strong prima facie case of obviousness. SIBIA Neurosciences, Inc. v.
21 Cadus Pharm. Corp., 225 F.3d 1349, 1358 [55 USPQ2d 1927, 1933] (Fed.
22 Cir. 2000).
23
24 Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1324, 73 USPQ2d 1225, 1230 (Fed.
25 Cir. 2004).
26 The Brown declaration falls short of demonstrating the required nexus in several
27 respects.
28 First, it fails to establish that the licensing agreements are specifically directed to the subject
29 matter recited in any of the claims currently rejected for obviousness. All of the independent
30 claims of the '341 patent (i.e., claims 1-3 and 7) were cancelled by appellant in response to the
- 26 -
Page: Previous 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33 Next
Last modified: November 3, 2007