Background
Volvo Penta of the Americas holds U.S. Patent No. 9,630,692, directed to a “tractor-type stern drive” — a propulsion system for recreational boats in which forward-facing propellers pull the vessel through the water rather than pushing from behind. Volvo Penta commercialized this technology as its “Forward Drive” product, which launched in 2015 and became highly popular for water sports like wake-surfing because the forward-facing propellers keep the propeller away from riders in the water behind the boat.
Brunswick Corporation, a major competitor in the marine industry, filed an inter partes review (IPR) challenging the patent as obvious. The PTAB found the claims obvious and rejected Volvo Penta’s evidence of secondary considerations — including commercial success, industry praise, and evidence that Brunswick itself copied the Forward Drive concept — on the grounds that Volvo Penta had not adequately established a nexus between those objective indicia and the unique characteristics of the claimed invention. Volvo Penta appealed.
The Court’s Holding
The Federal Circuit vacated and remanded. The court confirmed the two paths to establishing nexus between objective indicia of nonobviousness and the claimed invention: (1) a presumption of nexus when the commercial product closely embodies the claimed invention, or (2) direct evidence that the secondary considerations are a direct result of the unique characteristics of the claimed invention. While the court agreed the PTAB correctly rejected the presumption (because Volvo’s product had features beyond the patent claims), it found the PTAB had improperly dismissed Volvo Penta’s direct nexus showing.
Critically, the PTAB’s own factual findings established that Brunswick — the IPR petitioner — recognized that boat manufacturers strongly desired Volvo’s Forward Drive and were urgently pushing Brunswick to bring a competing product to market. The court found this evidence was direct proof that the commercial success and industry demand were tied to the unique patented features of the tractor-type stern drive: the competitor’s own conduct acknowledged the nexus. Additionally, evidence of Brunswick’s copying — a form of secondary consideration that courts have long recognized as powerful evidence of nonobviousness — was not adequately weighed. The court remanded for the PTAB to properly consider this evidence in the overall obviousness analysis.
Key Takeaways
- Nexus between secondary considerations and the claimed invention can be established directly through evidence that the commercial success, copying, or industry praise flows from the invention’s unique features — even without a presumption of nexus.
- An IPR petitioner’s own behavior — urgently copying the patent holder’s product — can be treated as an acknowledgment of nexus, since competitors would not rush to copy a feature unless they recognized its unique contribution to commercial success.
- The PTAB may not dismiss secondary considerations evidence by merely requiring that a patent owner identify the “unique characteristics” in abstract terms; the evidence must be evaluated in its totality, including competitor conduct.
- Secondary considerations are not a tiebreaker or afterthought — they must be genuinely weighed against the prima facie case of obviousness, and failure to do so is reversible error.
Why It Matters
Volvo Penta v. Brunswick is an important reminder that secondary considerations — commercial success, copying, industry recognition, and long-felt need — are substantive legal evidence of nonobviousness, not just supplemental arguments. Patent owners defending IPR proceedings should develop robust records of market success and competitor reaction, including internal competitor documents showing awareness of and urgency to copy the patented feature. When a competitor’s own internal communications acknowledge that the patented product is driving market demand, those communications can establish the nexus that courts require to credit secondary considerations.
For IPR petitioners and patent challengers, the decision is a caution against treating secondary considerations dismissively. A petitioner who copies the patented technology and then challenges the patent in IPR may find that its copying becomes the most powerful piece of evidence supporting validity — illustrating the strategic tension in simultaneously litigating infringement and invalidity.