Medtronic v. Teleflex: Objective indicia of Nonobviousness

In the Medtronic v. Teleflex case, Medtronic petitioned for inter partes review of Teleflex's patents related to guide extension catheters. Medtronic argued that the combination of various references rendered the claims obvious. The Board instituted the review but ultimately found the claims not unpatentable, granting Teleflex's motion to amend certain claims. While Medtronic presented a "close" prima facie case, Teleflex successfully countered with "strong" evidence of objective indicia of non-obviousness.

Objective Indicia:

Teleflex's defense relied on objective indicia of non-obviousness, which refers to external evidence demonstrating the invention's non-obvious nature. In this case, Teleflex presented compelling evidence of commercial success and copying by competitors, including Medtronic. The Board acknowledged that while each claim element was individually known, Teleflex established a nexus between commercial success and the combination of features as a whole, which was previously unknown. This strategic use of objective indicia played a pivotal role in Teleflex's victory.

Establishing Commercial Success:

Teleflex demonstrated the commercial success of its patented product, highlighting its widespread adoption and market dominance. The Board recognized the significance of Teleflex's product's commercial success and its correlation with the claimed features. By establishing this nexus, Teleflex showcased that the invention's unique combination of features played a vital role in its market triumph.

Proving Copying through Circumstantial Evidence:

In addition to commercial success, Teleflex substantiated its claim of copying by presenting circumstantial evidence. The Board accepted Teleflex's argument that Medtronic had access to Teleflex's patented product and highlighted substantial similarities between Medtronic's and Teleflex's products. While direct evidence of copying (such as photos of patented features or disassembled products) was not required, the Federal Circuit supported the Board's finding based on the abundance of circumstantial evidence.

The Federal Circuit's Affirmation:

Upon appeal, the Federal Circuit upheld the Board's decision. It recognized the Board's sound judgment in establishing a nexus between the combination of features and commercial success. The Federal Circuit also concurred with the Board's assessment that the circumstantial evidence presented by Teleflex sufficiently demonstrated copying, rejecting Medtronic's argument that direct evidence was necessary.

The Medtronic v. Teleflex case serves as a notable example of how strong evidence of objective indicia of non-obviousness can overcome a close prima facie case of obviousness. Teleflex's success in defending its patents through compelling evidence of commercial success and copying highlights the significance of leveraging objective indicia in patent disputes. As the realm of intellectual property continues to evolve, understanding the power of objective indicia can provide valuable insights to inventors and patent holders seeking to protect their innovations.