“That button is genius,” two engineers wrote after seeing a prototype virtual reality viewer. Those comments later became evidence of industry praise in a precedential Federal Circuit opinion confirming that a petitioner may fail to prove obviousness even when the prior art disclosed the claimed features and provided a reason to combine the references. The decision shows that objective indicia of nonobviousness are not merely supporting evidence and, in the right case, can determine the outcome of an inter partes review (IPR).
Copying and Industry Praise
In Google LLC v. DDC Technology, LLC, the challenged patents covered virtual reality viewers that enclosed a smartphone within a housing. The “button” solved a basic problem with those viewers. It allowed a user to interact with the phone’s touch screen while the phone remained enclosed inside the viewer.
The Patent Trial and Appeal Board (PTAB) found that the prior art disclosed the relevant claim limitations and that a skilled artisan would have been motivated to combine the references. But the PTAB still concluded that Google had not proved the claims obvious.
The PTAB found strong evidence that Google copied DDC’s product and prototype. It compared the products directly and determined that differences in their input mechanisms were minor and did not alter their fundamental features. The Federal Circuit affirmed, explaining that a product need not be an exact replica to support an inference of copying.
The PTAB also considered emails from Google engineers responding to a video of the prototype. Two engineers wrote, “That button is genius” and “That’s an ingenious button!” Google argued that the comments were merely polite compliments offered during an ongoing business relationship. The PTAB recognized that context but still gave the praise moderate weight. The Federal Circuit held that substantial evidence supported that determination.
Google argued that its prior art showing outweighed DDC’s objective evidence. The Federal Circuit disagreed, reiterating that objective indicia “may often be the most probative and cogent evidence in the record.” Because all the nonobviousness factors must be weighed together, the court found no legal error in the PTAB’s conclusion that Google had not proved obviousness.
What the Decision Means for IPR Practice
For patent owners, the decision highlights the value of product comparisons, evidence of access and contemporaneous reactions to prototypes. Copying requires more than showing that the accused product practices the claims. The evidence should show access to and replication of a product or prototype embodying the patented invention.
IPR petitioners should address in the petition known evidence of copying, industry praise and other objective indicia, including their nexus and weight. Because the petitioner retains the burden of proving unpatentability, objective indicia cannot be treated as an afterthought. In the right case, sometimes the button really is genius.
