Failure of Others

Failure of others (also called failure of skilled workers) is a secondary consideration — a category of objective, real-world evidence — that can rebut a prima facie case of obviousness under 35 U.S.C. § 103: DEFINITION: evidence that skilled workers or competing companies in the relevant field tried and failed to solve the same problem that the claimed invention solves before the inventor succeeded; LEGAL BASIS: Graham v. John Deere Co. (S.Ct. 1966): established that secondary considerations — including long-felt need, failure of others, and commercial success — must be considered in the overall obviousness determination; the Court held that secondary considerations 'may have relevancy as indicia of obviousness or non-obviousness'; RATIONALE: if the problem was obvious to solve, skilled practitioners would have solved it; if many skilled people tried and failed over an extended period, this is strong evidence that the solution was not obvious; the fact that the inventor eventually succeeded should not be dismissed — others' failures suggest the invention required inventive step; RELATIONSHIP TO LONG-FELT NEED: failure of others and long-felt need are closely related but distinct; long-felt need = the problem existed and was recognized without a solution; failure of others = people actually attempted to find a solution but could not; both together are powerful secondary consideration evidence.

Failure of others requires concrete, specific evidence of actual attempts to solve the problem: REQUIRED ELEMENTS: (1) IDENTIFICATION OF THE PROBLEM: the same problem or need that the claimed invention solves must be clearly identified; the evidence of failed attempts must address that same problem; (2) SKILLED WORKERS WHO TRIED: the people who failed must be skilled in the art — not random members of the public; failed attempts by patent professionals, research teams at major corporations, academic researchers, or government labs are most persuasive; (3) ACTUAL FAILED ATTEMPTS: specific, documented attempts to solve the problem; published papers reporting negative results; abandoned research programs; patent applications that failed to achieve the goal; products that were tried and didn't work; (4) FAILURE DURING THE SAME TIME PERIOD: the attempts should occur over the period prior to the invention, showing the problem persisted without a solution during the time the inventor was working on it; FORMS OF EVIDENCE: (a) PRIOR ART PAPERS: scientific publications showing researchers approaching but failing to solve the problem; (b) ABANDONED PATENTS: prior art patent applications that attempted similar solutions but were abandoned or narrowed; (c) COMMERCIAL FAILURES: products brought to market that attempted to solve the same problem but failed commercially because they didn't work; (d) EXPERT TESTIMONY: technical experts who worked in the field can testify about the general knowledge that the problem was unsolved and efforts to solve it were unsuccessful; (e) DECLARATIONS: 37 C.F.R. § 1.132 declarations from field experts or the inventor describing the landscape of failed efforts.

Like all secondary considerations, failure of others must have a nexus to the claimed invention: NEXUS DEFINED: the failed attempts must be directed to solving the same technical problem that the claimed invention solves, and the inventors' success must be attributable to the specific claimed features — not to something else; NEXUS ISSUES: (1) DIFFERENT PROBLEM: if others failed to solve Problem X, but the claimed invention actually solves Problem Y (and Problem X was incidental), the nexus is weak; the claimed invention must solve the same problem others attempted; (2) BROAD CLAIM / NARROW EVIDENCE: if the claim is broad (genus) but the evidence of failure relates only to a narrow aspect of the claim, the nexus is partial; (3) UNCLAIMED FEATURES: if others failed because they lacked a feature that the inventor also used but did NOT claim, the failure cannot be attributed to the claimed invention; the nexus must connect the CLAIMED features to the inventive success; ESTABLISHING NEXUS: the patent owner should demonstrate that: (a) the problem is specifically the one defined by the claim; (b) others' approaches failed because they lacked the specific claimed solution; (c) the inventor's success is attributable specifically to the claimed features; PRIMA FACIE PRESUMPTION: when a patent owner can show the claimed invention embodies the novel contribution, there is a presumption of nexus; the burden then shifts to the challenger to rebut.

Failure of others is one of the more powerful secondary considerations, but its weight depends on the quality of the evidence: STRENGTH OF THE EVIDENCE: (1) LONG-STANDING FAILURE: if many researchers failed for years, this is stronger evidence than a short failure period; (2) NUMBER OF FAILURES: the more people and organizations that tried and failed, the stronger the evidence; one failed attempt is weak; industry-wide failure over multiple years is strong; (3) CALIBER OF EFFORTS: failed attempts by leading researchers at top institutions or large companies are more persuasive than obscure failed attempts; (4) PROXIMITY OF THE FAILED APPROACH: the failed approaches should be close to the claimed invention — if they were fundamentally different approaches, the failure doesn't tell us much about the non-obviousness of the specific claimed approach; HOW COURTS WEIGH: courts must CONSIDER all secondary consideration evidence before making an obviousness determination; failure of others alone can rebut a prima facie case of obviousness if the evidence is strong; courts often combine failure of others with long-felt need and commercial success for a cumulative secondary considerations showing; USPTO EXAMINATION: in prosecution, failure of others evidence submitted via declarations can persuade examiners to withdraw obviousness rejections; PTAB IPR: the PTAB evaluates secondary considerations on the full record; patent owners submit declarations and documentation; the PTAB has occasionally found secondary consideration evidence sufficient to overcome obviousness arguments, especially when combined with other secondary considerations.

Failure of others, long-felt need, and commercial success are three distinct secondary considerations, though they often overlap: LONG-FELT NEED: evidence that the PROBLEM existed and was RECOGNIZED in the field for a long time before the invention; does not require showing anyone tried to solve it — only that the need was known; strongest when the need was explicitly identified in prior art as an unsolved problem; FAILURE OF OTHERS: evidence that people ATTEMPTED to solve the problem but FAILED; supplements long-felt need by showing the problem was hard, not merely unaddressed; does not require showing that the need was recognized in writing — but actual attempts must be documented; COMMERCIAL SUCCESS: evidence that the patented invention has been commercially successful and the success is attributable to the claimed features; strongest when competitors have copied or licensed the invention; COMBINING ALL THREE: the most powerful secondary considerations case presents: (1) long-felt need (problem recognized for years); (2) failure of others (many tried and failed); (3) commercial success (the claimed invention solved the problem and the market recognized it); COMPARISON TO UNEXPECTED RESULTS: unexpected results is yet another secondary consideration — evidence that the claimed invention produces surprising results that even skilled practitioners wouldn't have predicted; unexpected results focuses on the RESULT of the invention; failure of others focuses on the DIFFICULTY of finding the solution; COMPARING STRENGTH: courts generally find that secondary consideration evidence is CUMULATIVE — the more secondary considerations established, the harder they are to dismiss as insufficient.