The Graham v. John Deere framework
Obviousness under 35 U.S.C. § 103 is evaluated under the four-factor test from Graham v. John Deere Co. (S.Ct. 1966): (1) the scope and content of the prior art; (2) the differences between the prior art and the claimed invention; (3) the level of ordinary skill in the pertinent art; and (4) secondary considerations — objective indicia of nonobviousness. Graham held that secondary considerations 'may have relevancy' and must be considered when evaluating obviousness. The Supreme Court in KSR International Co. v. Teleflex Inc. (2007) reaffirmed the Graham framework and the role of secondary considerations, noting that a fact-finder must consider all objective evidence, including commercial success, failure of others, and unexpected results. Secondary considerations serve as 'real-world' checks on the otherwise hypothetical analysis of what a person of ordinary skill would have done.
Commercial success
Commercial success is the most frequently invoked secondary consideration in patent prosecution and litigation. To establish commercial success supporting nonobviousness, the patentee must show: (1) the product or process embodying the claimed invention achieved significant market success; and (2) a nexus between that success and the specific features claimed in the patent (not merely the product's name, marketing, or unpatented features). Evidence includes revenue data, market share, industry awards, and analyst reports. The nexus requirement is important: success of a product due to superior manufacturing, brand recognition, pricing advantages, or network effects does not support nonobviousness of the claimed technology. Patents in crowded markets where many factors affect commercial outcomes face more scrutiny on nexus. In pharmaceutical patent cases, commercial success of a drug can be highly persuasive but must be tied to the claimed compound or method rather than the marketing exclusivity from FDA approval.
Long-felt but unsolved need
Long-felt but unsolved need is powerful evidence that an invention was not obvious: if the solution had been obvious to a person of ordinary skill, the art would have arrived at it sooner. To establish long-felt need, the patentee must show: (1) the art recognized and sought the solution to the problem for a significant period before the invention; (2) the claimed invention actually solved the problem; and (3) the recognition of the need predates the effective filing date of the patent application (showing the solution was not found despite long awareness of the need). Evidence comes from: prior publications identifying the problem as unresolved, patent applications attempting partial solutions, conference discussions of the unsolved challenge, and the gap between when the problem was first identified in the literature and the invention date. Courts weigh this evidence heavily when the period of need was long and the evidence is well-documented.
Failure of others
Failure of others supports nonobviousness by showing that skilled practitioners in the field attempted to solve the same problem and could not — suggesting the solution was not obvious. Evidence of failure of others includes: abandoned research programs (potentially documented in publications, regulatory filings, or litigation discovery); prior patents disclosing attempts that did not achieve the claimed result; and expert testimony about unsuccessful approaches in the field. For this secondary consideration to be persuasive, the failures must be directed to the same problem and must involve persons with relevant skill. Failure of others is often combined with long-felt need — together they show that a recognized need went unsatisfied despite active, skilled efforts. In complex technology fields (pharmaceutical chemistry, semiconductor fabrication), failure of others can be particularly strong because the field attracts significant resources and talented researchers.
Unexpected results
Unexpected results means the patented invention achieved a degree of improvement or a quality of result that was surprising or unexpected compared to the prior art. This is particularly important in chemistry, biology, and pharmaceutical cases. Evidence of unexpected results typically requires: (1) comparative testing showing the claimed composition or method achieved results superior to the closest prior art; and (2) expert testimony that the degree of improvement was unexpected by skilled practitioners. The comparison must be to the closest prior art — not to distant or unrelated compounds or methods. Unexpected results can take multiple forms: better efficacy than predicted, reduced side effects, a synergistic combination effect, or stability properties not expected from the structure. The 'unexpectedness' must be shown relative to what a POSITA would have predicted, not simply relative to what did not exist in the prior art — if the prior art would have predicted the result, the result is not unexpected.
Skepticism of experts and copying
Other recognized secondary considerations include skepticism of experts and copying by competitors. Skepticism of experts: if experts in the field expressed skepticism or disbelief that the claimed approach would work, and the invention proved them wrong, that skepticism is evidence of nonobviousness. Evidence comes from publications doubting the approach, contemporaneous expert statements, and regulatory or peer review commentary. Copying by competitors: if competitors, rather than designing around the patent, chose to copy the patented invention (and later took a license or faced infringement allegations), that copying is evidence that the invention had unique value not easily replicated by obvious alternatives. To establish copying, the patentee must show the competitor was aware of the patent and specifically copied rather than independently developing a similar solution. Praise and recognition by those skilled in the art — awards, citations, or published endorsements of the invention's significance — also constitute secondary consideration evidence.
Nexus and practical considerations
The nexus requirement is the critical practical issue in secondary considerations evidence. All secondary considerations must be tied to the claimed features of the invention — not to unpatented features, marketing, or other advantages. When arguing commercial success, patentees should document which product features drive success and link those features to specific claim limitations. When arguing long-felt need or failure of others, the problem and the failures must be for the same technical challenge addressed by the claims. Nexus is established most credibly through: expert declarations specifically addressing each claimed feature; market studies attributing success to patented features; side-by-side testing comparing patented and unpatented versions; and documentary evidence from before the invention date (not curated post-litigation). Courts are skeptical of post-litigation secondary considerations evidence assembled specifically for litigation — evidence generated contemporaneously with the invention and its commercialization carries more weight.
Frequently Asked Questions
What are secondary considerations in patent law?
Secondary considerations (also called objective indicia of nonobviousness) are evidence from the real world that tends to show a claimed invention was not obvious, even if the prior art looks superficially close. The major secondary considerations recognized by courts include: (1) commercial success — the invention achieved significant commercial success in the marketplace; (2) long-felt but unsolved need — skilled artisans recognized the problem for years but failed to solve it before the invention; (3) failure of others — skilled artisans tried and failed to solve the same problem; (4) unexpected results — the invention achieved results that were unexpected or surprising relative to prior art; (5) copying by competitors — competitors copied the invention rather than designing around it; (6) licensing — others in the industry sought licenses to practice the invention; (7) praise from experts — the invention received recognition from those skilled in the art. These are called 'secondary' not because they are less important, but because they arose after the Graham v. John Deere framework was established.
What is the nexus requirement for secondary considerations?
For secondary considerations to support nonobviousness, there must be a nexus — a connection — between the evidence and the claimed invention. Commercial success, for example, must be attributable to the claimed features of the invention, not to unrelated factors like aggressive marketing, manufacturing advantages, or the company's dominant market position. If a product is commercially successful due to its brand recognition rather than the patented features, the commercial success does not support nonobviousness of the patent claims. The Federal Circuit applies a rebuttable presumption of nexus when the patentee shows the product is the invention disclosed and claimed in the patent — i.e., the product embodies the claimed features. The opponent can rebut by showing the success flows from factors other than the claimed invention. Establishing nexus often requires expert testimony connecting the commercial success or other indicia to the specific claimed features.
How much weight do secondary considerations receive?
Secondary considerations are part of the totality of evidence the court considers in an obviousness analysis — they are not determinative by themselves but can be outcome-determinative when the primary Graham factors (scope and content of prior art, differences from the prior art, level of ordinary skill) are close. The Supreme Court in Graham v. John Deere (1966) directed that objective indicia 'may have relevancy' and that they 'may be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.' The Federal Circuit has in some cases found secondary considerations sufficient to overcome a strong prima facie case of obviousness from the prior art. In other cases, particularly where the prior art teaches directly to the invention, secondary considerations have been given limited weight. Powerful, well-documented secondary considerations (e.g., overwhelming commercial success plus documented failure by industry leaders) carry more weight than weak or attenuated evidence.
When should secondary considerations be presented?
Secondary considerations can be presented at multiple stages: during patent prosecution (in response to an obviousness rejection under § 103), during inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB), and during district court litigation. In prosecution, practitioners submit evidence of commercial success (sales data, market share), long-felt need (publications recognizing the unsolved problem), or unexpected results (comparative test data showing unexpected superiority) via a declaration by the inventor, a technical expert, or a marketing expert. Evidence should be marshaled early — at the prosecution stage — because gathering supporting documentation after the fact is more difficult. PTAB proceedings allow patent owners to submit evidence of secondary considerations as part of their patent owner response to a petition, but the patent owner must be prepared to link the evidence to specific claim features.
What is the difference between long-felt need and failure of others?
Long-felt but unsolved need and failure of others are related but distinct secondary considerations. Long-felt need focuses on the time dimension: skilled artisans and the industry recognized a problem for years (sometimes decades) before the patented invention solved it. The longer the gap between recognizing the problem and solving it, the stronger the evidence that the solution was not obvious. Evidence includes publications describing the problem, patent applications attempting partial solutions, and statements from industry participants about the need. Failure of others focuses on effort: others in the field specifically tried to solve the same problem and were unable to do so before the patented invention. Evidence includes abandoned research programs, prior patents that attempted but did not achieve the same result, and testimony from practitioners about unsuccessful approaches. Both types of evidence require nexus — the need and failures must be for the specific problem solved by the claimed invention.