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Transocean v. Maersk

Nov 15, 2012
Harold C. Wegner

"Rare[ ]" Patentee Nonobviousness Victory based Objective (Secondary) Indicia

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Today in Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., __ F.3d __ (Fed. Cir. 2012)(Moore, J.), earlier proceedings, 617 F.3d 1296, 1307 (Fed.Cir.2010)(Moore, J.), the court reversed a trial court judgment as a matter of law that the invention was obvious in a rare case where the result of nonobviousness reached by the appellate was based upon several of the “secondary” indica of nonobviousness.

The court itself recognized that “we have rarely held that objective evidence is sufficient to overcome a prima facie case of obviousness.” (citation omitted; emphasis added). A colleague has said that it might be better to qualify this statement to say that the court has rarely reversed failure to grant JNOV in a situation like this, applying a substantial evidence standard, by finding that the strength of the objective evidence was so strong that no reasonable jury could have found the claims obvious.

A further necessary qualification is that it is important to understand that the reference to "objective" evidence refers to what Graham v. John Deere speaks of as "secondary" evidence. This is in contrast to objective evidence of a difference in properties such as involved in the Papesch line of case law. In re Dillon, 919 F.2d 688 (Fed.Cir.1990)(en banc), following In re Papesch, 315 F.2d 381 (CCPA 1963).

The opinion is available at the Court’s website,

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