716.06 Copying [R-07.2022]
Another form of secondary evidence which may be presented by applicants during prosecution of an application, but which is more often presented during litigation, is evidence that competitors in the marketplace are copying the invention instead of using the prior art. Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325, 73 USPQ2d 1225, 1230 (Fed. Cir. 2004) (“Our cases do establish that copying by a competitor may be a relevant consideration in the secondary factor analysis”). As indicated by the Federal Circuit in Wyers v. Master Lock Co., 616 F.3d 1231, 1246, 95 USPQ2d 1525, 1537 (Fed. Cir. 2010), copying “… requires evidence of efforts to replicate a specific product, which may be demonstrated through internal company documents, direct evidence such as disassembling a patented prototype, photographing its features, and using the photograph as a blueprint to build a replica, or access to the patented product combined with substantial similarity to the patented product.” .
Evidence that shows access to a competitor’s non-public information and use of that information to develop a product may be persuasive evidence of copying. Liqwd, Inc. v. L’Oreal USA, Inc., 941 F.3d 1133, 1139 (Fed. Cir. 2019) (Liqwd presented evidence, such as emails and declarations, that showed L’Oreal had access to the then-confidential disclosure of the patent application and L’Oreal’s subsequent loss of interest in purchasing Liqwd’s technology). Evidence of copying was persuasive of nonobviousness when an alleged infringer tried for a substantial length of time to design a product or process similar to the claimed invention, but failed and then copied the claimed invention instead. Dow Chem. Co. v. American Cyanamid Co., 816 F.2d 617, 2 USPQ2d 1350 (Fed. Cir. 1987) and Panduit Corp. v. Dennison Manufacturing Co., 774 F.2d 1082, 1098-99, 227 USPQ 337, 348, 349 (Fed. Cir. 1985), vacated on other grounds, 475 U.S. 809, 229 USPQ 478 (1986), on remand, 810 F.2d 1561, 1 USPQ2d 1593 (Fed. Cir. 1987) (evidence of copying found persuasive of nonobviousness where admitted infringer failed to satisfactorily produce a solution after 10 years of effort and expense).
However, more than the mere fact of copying is necessary to make that action significant because copying may be attributable to other factors such as a lack of concern for patent property or contempt for the patentee’s ability to enforce the patent. Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 226 USPQ 881 (Fed. Cir. 1985) (overruled on other grounds by Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356, 50 USPQ2d 1672 (Fed. Cir. 1999)). Alleged copying is not persuasive of nonobviousness when the copy is not identical to the claimed product, and the other manufacturer had not expended great effort to develop its own solution. Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 227 USPQ 766 (Fed. Cir. 1985). See also Vandenberg v. Dairy Equipment Co., 740 F.2d 1560, 1568, 224 USPQ 195, 199 (Fed. Cir. 1984) (evidence of copying not found persuasive of nonobviousness because the basic concepts of a plastic support device using a ball and socket joint were developed prior to learning of their competitor’s device).