Many, if not most, obviousness fights are won or lost on the content of the prior art itself. The challenger finds two or three references that, taken together, show every element of a claim, explains why a person of ordinary skill in the art would have combined them, and the claim falls. A decision the Federal Circuit issued on November 5 is a useful reminder that this is not the end of the analysis – and that evidence a patent owner may not even realize it has can carry the day.
A Button You Press from Outside the Housing
In Google LLC v. DDC Technology, LLC, Nos. 2025-1315, -1316, -1330 (Fed. Cir. Nov. 5, 2026), Google challenged three smartphone-based, virtual reality (“VR”) viewer patents owned by DDC Technology in inter partes review (“IPR”) proceedings (U.S. Patent Nos. 9,420,075, 10,528,199 and 11,093,001). Early VR viewers of this type had a basic problem – once the phone was inside the housing, the user could not touch the screen. The patented viewer solved it with an input mechanism the user presses from outside the housing, which in turn contacts the phone’s touchscreen.
Google relied on a Japanese publication describing a viewer attachment with a “remote touch circuit” and a U.S. publication describing a button that actuates a phone’s touchscreen through a waterproof case. The Patent Trial and Appeal Board (“PTAB”) agreed with Google that the two references together disclosed every limitation of the main claims, and that a skilled artisan would have been motivated to combine them with a reasonable expectation of success. In most cases, that would have been the end of those claims.
Copying and Praise Carried the Day
It wasn’t. DDC presented evidence of what the law calls “secondary considerations” (sometimes called “objective indicia”) of non-obviousness. The Board found that Google had copied DDC’s patented product and weighed that evidence “heavily.” It also found industry praise, to which it gave “moderate weight.” On balance, the Board concluded that the evidence of non-obviousness outweighed the evidence of obviousness, and the key claims survived. The Federal Circuit affirmed. The industry praise evidence was in the form of emails from Google’s own engineers. However, the Board found this evidence less compelling than the copying evidence.
This case addressed an issue I found confusing as a new patent litigator many years ago. “Copying” is considered evidence of non-obviousness, but I thought that every infringer was necessarily “copying” because they infringed. However, infringing a patent and “copying” are not the same thing. This is where patent infringement is very different from copyright infringement.
Copying in the context of secondary considerations evidence refers to copying a product that has the patented features. Here, the Board compared Google’s viewer to DDC’s DODOcase VR 1.2 viewer and to the inventor’s prototype, side by side, and characterized the differences it found as “minor, non-material modifications.”
While the Google case involves a challenge to an issued patent, secondary considerations evidence can also be used during prosecution to overcome an obviousness rejection.
Practical Guidance for Patent Owners
In our experience, most patent owners do not think about secondary considerations until they are in the middle of a fight. By then, the best evidence may be hard to find. A few things are worth doing now:
Keep dated records of your product’s development. Prototypes, videos and the emails you send when you show the product to potential partners, customers and investors can all become evidence. In DDC’s case, an email exchange with a would-be business partner became key evidence. Although the Google case did not concern “unexpected results” evidence, this is also recognized secondary considerations evidence, so if you have any impressive test results that relate to the features you are patenting, make sure to keep them as well.
Save the praise. Positive comments from customers, reviewers and especially competitors are evidence. Note who said it and in what context.
Make sure your patent covers your own product. Copying is shown by comparing the accused product to your product, but if the copied features are not covered by your patent claims, evidence of copying will not overcome an obviousness challenge.
Build the story into the application. As we discuss in our book, Your Patent Sucks, hard evidence of secondary considerations is often not available while an application is pending, but a narrative of non-obviousness tethered to the claim language can still help during prosecution and later.
Obviousness is a hindsight-prone exercise. Evidence that a sophisticated company saw your invention, admired it and then built something very close to it is some of the most persuasive evidence there is that the invention was not obvious.