Secondary Considerations in IPR: What the Board Credits

Secondary-considerations testimony is credited at the PTAB when it is tightly tethered to the claimed feature, and discounted when it floats free of the claim. That is the rule the Board has been applying with increasing precision over the last five years, and it is the rule that determines whether a patent owner's commercial-success or long-felt-need expert moves the obviousness analysis at all.

The doctrine is older. The application is sharpening.

The Graham factors

Graham v. John Deere, 383 U.S. 1 (1966), set the framework for obviousness in modern patent law. The objective indicia, often called secondary considerations, are the fourth Graham factor. Graham itself named commercial success, long-felt but unsolved need, and failure of others. Later Federal Circuit and CCPA decisions added copying by competitors, unexpected results, industry praise, licensing, and skepticism in the art. The Graham Court treated these indicia, in language it quoted from Monroe Auto Equipment Co. v. Heckethorn Manufacturing & Supply Co., 332 F.2d 406 (6th Cir. 1964), as evidence to "guard against slipping into use of hindsight."

In an IPR final written decision, the patent owner typically introduces secondary-considerations evidence through an expert declaration. The expert collects the underlying data (sales figures, prior failed attempts, industry recognition) and offers an opinion that the data supports a finding of non-obviousness. The Board then evaluates the declaration against the prior-art combination the petitioner has assembled.

The Federal Circuit has held repeatedly that secondary considerations must be considered when present. The question is not whether the Board will look at the evidence. The question is what weight the evidence gets.

The nexus requirement

Nexus is where most secondary-considerations testimony in IPR rises or falls. The patent owner has to show that the proffered evidence of commercial success, or industry praise, or copying, is tied to the claimed invention rather than to features known in the prior art or to extrinsic factors like marketing.

Fox Factory v. SRAM (Fed. Cir. 2019) tightened this analysis. The court held that the presumption of nexus, available when the product is "coextensive" with the claim, requires the patent owner to show that the product embodies the full scope of the claim and that any unclaimed features are not critical and do not materially impact the product's functionality. Where the product has features outside the claim that contribute to commercial success, the presumption fails and the patent owner must demonstrate nexus directly.

Demonstrating nexus directly means the expert has to identify, claim limitation by claim limitation, which features of the commercially successful product correspond to which limitations, and why those features (not the unclaimed marketing, packaging, brand, or auxiliary technology) drove the commercial result. That is a heavy lift for an expert who has not done the comparison work in advance.

What the Board credits

The aggregate pattern across IPR final written decisions on WitnessLens is consistent. Secondary-considerations testimony is credited less often than primary-prior-art opinions. Where it is credited, the declarations tend to share a few features.

The expert ties the commercial success or long-felt need to a specific claim limitation, by name, and explains why that limitation is the feature driving the result. The declaration walks through the alternative explanations (broader market growth, marketing spend, brand strength) and disposes of them on the record. The underlying data is documented in exhibits the Board can audit, not summarized in conclusory paragraphs.

Where the testimony is discounted, the failure modes also cluster. The expert points to a successful product and asserts that the product practices the claim, without identifying which features in the product map to which limitations. The expert relies on industry recognition that pre-dates the priority date or post-dates the claim scope. The expert offers commercial-success data for a product family that includes unclaimed embodiments, without separating out the data for the product that actually practices the asserted claim.

The Board has written enough decisions on these failure modes that the pattern is teachable. A patent owner who wants secondary-considerations evidence to move the obviousness analysis should have her expert engaged early enough to do the nexus work before the declaration is finalized.

Practical implications

A few points for retaining counsel and patent owners.

First, the expert needs the claim chart and the product technical specifications side by side, before the declaration is drafted. Nexus is not added at the end. It is the spine.

Second, the commercial-success data should be cabined to the product or product line that practices the asserted claim. Aggregated revenue across a portfolio is rarely useful and often actively damaging on cross.

Third, copying evidence has to identify what was copied. A competitor that built a product in the same general space is not copying. A competitor that adopted the claimed feature after years of using an alternative approach is.

Fourth, long-felt need requires evidence of the need and evidence of the failures. Industry statements that the need existed, paired with patent filings that attempted to solve it and failed, are stronger than testimony that the need was "well known."

Fifth, the expert should be prepared to address the petitioner's nexus rebuttal directly. The petitioner will almost always argue that the success was driven by unclaimed features. The declaration should anticipate that argument and address it in the affirmative case.

A note on the data

Aggregate observations on Board treatment of secondary-considerations testimony draw on IPR final written decisions and the associated patent-owner declarations tracked on WitnessLens. Credit rates compare expert opinions on objective indicia against expert opinions on primary obviousness within the same set of decisions. Case citations are to published Federal Circuit and Supreme Court decisions. Methodology details are on the methodology page.