Appeal 2007-0128
Reexamination Control 90/006,208
Patent 5,573,648
v. Atwood=s Alleged Commercial Success Lacks Nexus to
Claimed Invention
Atwood has submitted a Declaration of Corry Cochran (Paper 14), the
controller for the Salt Lake City operations of Atwood Industries. Atwood alleges
that Cochran=s declaration provides evidence of commercial success and is an
indicator of the nonobviousness of its claimed invention. (Appeal Br., p. 58).
For commercial success to be relevant on the issue of obviousness there
must be a nexus between the sales of the product and the merits of the claimed
invention. Nexus may be inferred when Athe patentee shows both that there is
commercial success, and that the thing (product or method) that is commercially
successful is the invention disclosed and claimed in the patent.@ Demaco Corp. v.
F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392, 7 USPQ2d 1222, 1226
(Fed. Cir. 1988). Yet, Aif the commercial success is due to an unclaimed feature of
the device, the commercial success is irrelevant.@ Ormco Corp. v. Align
Technology Inc., 463 F.3d 1299, 1312, 79 USPQ2d 1931, 1941 (Fed. Cir. 2006)
Cochran=s declaration states that he is responsible for preparing, reviewing
and analyzing Atwood=s financial statements, cost accounting and general
accounting. (Cochran Dec., & 1). Cochran testifies that:
The >648 Patent and the >054 Patent are the subject of a royalty-
bearing license agreement. My duties outlined in paragraph 1 above
include receiving and monitoring periodic royalty reports and periodic
royalty payments under such license agreement. Such periodic
royalty reports include a statement of the volume of carbon monoxide
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