The Federal Circuit has repeatedly confirmed that secondary consideration evidence is an integral part of an obviousness analysis (indeed, it “may be the most pertinent, probative, and revealing evidence available to the decision maker in reaching a conclusion on the obviousness/nonobviousness issue”) and thus has mandated consideration of such evidence in assessing obviousness (Mintz v. Dietz & Watson, Inc.). The United States Patent and Trademark Office (USPTO) similarly requires consideration of secondary consideration evidence (MPEP 2145 (9th ed. Rev. 10.2019, June. 2020). This requirement makes sense. Among the many benefits to a patent challenger, IPRs have also effectively provided petitioners (i.e., patent challengers) with a shield against disclosure of evidence that might directly undermine their obviousness arguments – evidence that they typically would have been forced to disclose in district court litigation.
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