Industry praise for mainstream hair products is enough to refute bald evidence claims

In a recent inter partes review proceedings, the Patent Trial and Appeal Board relied on compelling evidence of ancillary considerations to declare that all of the disputed claims were not unpatentable under 35 U.S.C § 103. Specifically, the PTAB found the patentee’s evidence regarding industry praise and acceptance to be compelling enough to conclusively decide whether to publish the evidence.

The patent in suit discloses a brush-like hair straightener that uses protruding heating elements and spacers to quickly straighten hair without burning the user’s scalp. The applicant has contested all the claims as being obvious on several combinations of the state of the art. In response, the patentee provided objective evidence of non-obviousness, including evidence of a long felt but unmet need, the failure of others, skepticism, praise and acceptance of the industry, copy and commercial success.

First, the PTAB agreed with the petitioner that a person of ordinary skill in the art would have modified a prior art reference and combined it with the teachings of a second prior art reference. of the art to create the claimed invention. However, after evaluating secondary considerations, the PTAB concluded that the evidence of industry praise and acceptance, alone, was compelling enough to render all claims non-obvious.

For secondary considerations, the patentee pointed to one of its products, the DAFNI brush, as evidence of non-obviousness. The patent holder argued that the DAFNI brush is entitled to a presumption of connection with the claimed invention because it respects all the limitations of the claimed invention and is therefore coextensive with the invention. Further, the patent proprietor has argued that the industry acclaim and acceptance of the DAFNI brush is a direct result of the unique features of the claimed invention, namely the plurality of elongated heating elements and elongated insulating spacers that allow users to quickly straighten hair without burning the skin. . In support of these claims, the patentee submitted several popular magazine articles in which the DAFNI brush was praised for its ability to quickly and effectively straighten hair while protecting the user’s scalp, testimony that the Increased speed and safety are due to the elements of the claim. , numerous accolades and recognitions from popular home and beauty magazines, and the use of the DAFNI brush by professional hairstylists, celebrities and leading beauty influencers.

The petitioner replied that the DAFNI brush could not be coextensive with the independent claim because the product contained additional unclaimed features. The applicant further argued that the praise and industry acceptance did not result from the claimed features, but rather was attributable to the unclaimed features, prior art features, aesthetics, marketing and branding. However, the petitioner has provided no evidence to support the argument that the success of the DAFNI brush was due to unclaimed features or other extraneous factors.

Ultimately, the PTAB determined that the patentee demonstrated a connection between the DAFNI brush and the claimed invention by showing that evidence of secondary considerations resulted directly from the unique features of the claimed invention. The PTAB therefore concluded that the patentee’s considerable and largely irrefutable evidence of industry acclaim and acceptance was persuasive evidence of non-obviousness. As such, the PTAB concluded that, given the persuasive evidence of secondary considerations, the tenuous combinations of prior art were not sufficient to make the contested claims obvious.

Practical tip: When it comes to arguing or challenging evidentiary grounds, it is important not to overlook evidence of secondary considerations. In particular, where the claimed invention involves a popular consumer product, the praise and industry acceptance that directly results from the claimed features may be sufficient to overcome a challenge of obviousness. However, any party attempting to address secondary considerations should point to actual evidence and avoid unsubstantiated claims.

Ontel products. Corp. vs. Guy A. Shaked Invs. ltd.IPR2021-00052, document 38 (PTAB 18 April 2022)