"Secondary Considerations"

"Secondary considerations have formally been part of obviousness doctrine for decades, and the Federal Circuit recently discussed their importance in 'guard[ing] as a check against hindsight bias.' [., 676 F.3d 1063, 1079 (Fed. Cir. 2012).] The goal is to avoid having a fact finder 'develop a hunch that the claimed invention was obvious, and then construct a selective version of the facts that confirms that hunch.' Fact finders sometimes fall into this trap, but 'objective considerations might serve to resist the temptation to read into the prior art the teachings of the invention in issue.' [.] For this reason, 'fact finders must withhold judgment on an obviousness challenge until it considers all relevant evidence, including that relating to the objective considerations.' [.] Failing to do so may constitute reversible error. [. , 725 F.3d 1356, 1365 (Fed. Cir. Aug. 7, 2013).]"

Secondary considerations are also considered during the prosecution of U.S. patent applications as discussed in the Manual of Patent Examining Procedure (MPEP), Section 2141:

"Objective evidence relevant to the issue of obviousness must be evaluated by Office personnel. at 17-18, 148 USPQ at 467. Such evidence, sometimes referred to as “secondary considerations,” may include evidence of commercial success, long-felt but unsolved needs, failure of others, and unexpected results. The evidence may be included in the specification as filed, accompany the application on filing, or be provided in a timely manner at some other point during the prosecution. The weight to be given any objective evidence is made on a case-by-case basis. The mere fact that an applicant has presented evidence does not mean that the evidence is dispositive of the issue of obviousness.

The question of obviousness must be resolved on the basis of the factual inquiries set forth above. While each case is different and must be decided on its own facts, the factors, including secondary considerations when present, are the controlling inquiries in any obviousness analysis." 

(Emphasis added).

In the successful appeal of U.S. Patent Application 10/266,795, which resulted in issuance of U.S. Patent 8,540,575, the Applicant pointed to a video game feature recognized as the "Best Innovation" of 2008 at the Electronic Entertainment Expo (or "E3") as embodied by the invention claimed therein.  According to the Applicant, "In July of 2008, almost six years after the Applicant’s [sic] filed this application for a patent, EA Sports announced a new feature for their NBA sports video game called Dynamic DNA at the video game industry’s predominant video game convention, the Electronic Entertainment Expo (or 'E3').  As described in the NBA Live 09 Review attached to Applicant’s October 12, 2009 response as Exhibit C, 'Dynamic DNA is the biggest new feature offered in NBA Live 09.  Using the NBA Live 365 persistent online element, this great new feature allows players to have access to constantly updating stats for all of the players and teams in the game that reflect their performance in the real-world and applies it to the game.'  (Emphasis added).

...EA Sports announced on July 11, 2008 that 'NBA Live 09 has rewritten the rules and fundamentally shifted the way you look at sports simulation games.  Dynamic DNA emulates – with absolute precision – an NBA player in every sense of the word.'

....  Subsequently, Take Two announced their competing feature to Dynamic DNA, which they call 'Living Rosters,' and which implements Applicants claimed invention as well.

....  Thus, those of ordinary skill in the art, including those who make sports video games and those who use sports video games both praise the claimed invention as implemented in Dynamic DNA as new and innovative.  It logically follows, that the USPTO’s position that such features set forth by the Applicant’s claimed invention are old, obvious, or not innovative is in direct contrast to the position of those of ordinary skill in the video game industry who identify such features as new, ground breaking, fundamentally different, revolutionary, and innovative.  Therefore, the Applicant cites to the tribute and praise of those of ordinary skill in the sports video game industry as secondary evidence of patentability of the claimed invention.

....  Both EA Sports and Take Two have implemented the Applicant’s claimed invention in their video games.  And, the industry, as well as EA Sports, has speculated as to which company came up with the idea first.  However, it is clear that the Applicant’s filed this patent application more than five years before EA Sports announced the Dynamic DNA feature and over five years before Take Two announced the Living Roster feature."

(Emphasis in original).