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In Volvo Penta of the Americas, LLC, v. Brunswick Corporation No. 2022-1765, pending cite (Fed. Cir. August 24, 2023), Brunswick petitioned for an inter partes review of Volvo’s U.S. Patent No. 9,630,692 patent (“the ’692 patent”) challenging all claims as obvious. Brunswick filed its challenge on the same day as the launch of its competing product – the Bravo Four S. The ’692 patent relates to a stern-mounted motor design with forward, bow-facing propellers. It was undisputed that both Volvo and Brunswick have competing products that embody the ’692 patent.

Brunswick’s challenge relied on two prior art references: (i) Kiekhaefer, a 1962 patent that is directed to an outboard motor that could have either a rear-facing or forward-facing propellers and (ii) Brandt, a 1989 patent directed to a stern-mounted drive with rear-facing propellers.

Volvo did not dispute that the combination of prior art references disclosed all claim limitations. Instead, Volvo argued that a person of ordinary skill in the art would not have been motivated to combine the references with a reasonable expectation of success and that objective indicia of nonobviousness overcame any prima facie case of obviousness.

The Board rejected Volvo’s argument and found there was sufficient evidence of motivation to combine the two prior art references. Volvo appealed the Board’s decision. Brunswick settled with Volvo after appeal briefing completed and the USPTO intervened to defend the Board’s decisions relying on Brunswick’s appeal briefing.


  1. Was there substantial evidence to support the Board’s finding of a motivation to combine the references?
  2. Was there a nexus between the claimed invention and the evidence of secondary consideration of nonobviousness?
  3. Did the Board sufficiently consider the secondary considerations of non-obviousness?


  1. The Board’s finding of a motivation to combine the references was supported by substantial evidence.
  2. The Board correctly found that Volvo’s presumption of a nexus was not supported due to Volvo’s lack of co-extensiveness argument, but the Board’s finding of a lack of independent nexus was not supported by substantial evidence.
  3. The Board failed to properly analyze and consider the objective indicia of nonobviousness.


Motivation to Combine

Volvo argued that there was no motivation to combine based on (1) despite having knowledge of Kiekhaefer for decades, Brunswick never attempted the proposed modification; (2) Brunswick’s proposed modification would have required a nearly total redesign of the drive system; (3) the complexity in shifting the vertical drive shaft of Kiekhaefer; and (4) Brunswick attempted and failed to create a functional front drive system. The Federal Circuit held all these factors were sufficiently considered and this issue was correctly decided. Furthermore, the Board correctly rejected Volvo’s argument by holding that the existence of other designs to improve speed and efficiency does not make the selection of Kiekhaefer nonobvious. The Federal Circuit agreed with the Board that speed and efficiency were considered in the motor’s design, but these considerations were not exclusive.

In summary, the Board correctly considered the record as a whole, despite its reliance on Volvo’s witness who was not a person of ordinary skill in the art, and its finding of motivation to combine was supported by substantial evidence.


For secondary consideration evidence to be relevant, there must be a nexus between the merits of the claimed invention and the secondary consideration evidence, which can be shown in two ways: (1) through a presumption of nexus, or (2) showing that the evidence is a direct result of the unique characteristics of the claimed invention.

A patent owner is entitled to a presumption of nexus when it shows that the asserted objective evidence is tied to a specific product that embodies the claimed features, and is coextensive with them. When nexus is presumed, the burden shifts to the party asserting obviousness. Even absent a presumption of nexus, a party can prove nexus by showing that the secondary consideration evidence is the direct result of the unique characteristics of the claimed invention. Volvo argued that the Board incorrectly found that a presumption of nexus was not met and that Volvo did not otherwise show nexus.

The Federal Circuit agreed with the Board that although the product embodies the invention, Volvo failed to provide sufficient argument on coextensiveness. The Federal Circuit agreed that a single sentence of “Volvo Penta’s Forward Drive is a commercial embodiment of the ’692 Patent and coextensive with the claims,” along with a cite to an expert declaration is insufficient to show a presumption of nexus.

However, the Federal Circuit found that the Board did not sufficiently consider the invention as a whole and the Board’s finding of a lack of nexus was not supported by substantial evidence. In particular, the Board did not sufficiently consider that the claimed features are the reason for the commercial success of the Forward Drive system. The Federal Circuit further held the Board did not sufficiently consider its own statement that Brunswick’s system was “akin to copying” and was motivated by Volvo’s Forward Drive design. Finally, at oral argument, the USPTO argued that to the extent Volvo identified these claims elements as unique characteristics, they already existed in the prior art. However, the Federal Circuit cannot consider that argument, because it was not a basis upon which the Board reached its decision. Based on the Board’s considerations, the Board’s finding of a lack of nexus is not supported by substantial evidence and instead, the Federal Circuit held that Volvo demonstrated a nexus between the claims and its evidence of secondary consideration.

Objective Indicia of Nonobviousness

The Federal Circuit agreed with Volvo’s argument that the Board’s analyses of objective indicia of nonobviousness, including its assignment of weights to different considerations, was vague and ambiguous. For example, the Board found there was “some weight” of nonobviousness based on Brunswick’s internal documents indicating how the Forward Drive guided Brunswick’s design of the Bravo Four S system. The Federal Circuit held the Board’s assignment of “only some weight” was not supported by substantial evidence.

Although the Board acknowledged that boat manufacturers strongly desired the Forward Drive system and that manufacturers were urging Brunswick to design its own version of the Forward Drive system, the Board again only afforded “some weight” of nonobviousness based on commercial success. For these considerations along with others, the Board did not explain why the evidence was limited to “some weight” and it also failed to explain whether “some weight” in all cases were the same weight.

The Federal Circuit also highlighted the Board’s failure to evaluate the long-felt but unresolved need of the invention and the time between the asserted prior art references and the filing date. The Board’s understanding of the cited evidence was not supported by substantial evidence, because, for example, the Board failed to give any explanation as to why it gave very little weight to a magazine article that described the Forward Drive as “radical,” “game-changing,” and starting a “revolution.”

Finally, the Board’s ultimate conclusion that evidence of obviousness outweighed evidence of nonobviousness without explanation was an error, especially in light of its error in assessing the weight of the various objective indicia of nonobviousness.