Background
EMC Corporation (later part of Dell Technologies) held patents on data storage system techniques and sued Pure Storage, a startup that had developed flash-based enterprise storage systems. Pure Storage petitioned for IPR and challenged the patents as obvious. EMC offered substantial secondary consideration evidence: its flash storage systems had achieved remarkable commercial success, received industry awards, and addressed a long-felt need in the enterprise storage market for high-performance, low-latency all-flash storage solutions.
The PTAB found the claims obvious based on a combination of prior art references and found that EMC’s secondary considerations evidence, while substantial, was insufficient to overcome the strong prior art showing. EMC appealed.
The Court’s Holding
The Federal Circuit affirmed. The court found the PTAB had properly conducted the obviousness analysis and had given appropriate weight to the secondary considerations evidence. On nexus — the requirement that secondary considerations must be tied to the patented invention rather than to unclaimed features — the court found the PTAB properly evaluated whether EMC’s commercial success was attributable to the specific claimed inventions or to broader product features including marketing, pricing, and unclaimed technical features that also differentiated EMC’s products.
The court upheld the PTAB’s finding that while the commercial success was real, the nexus to the specific claimed inventions was weakened because competing flash storage products had also achieved commercial success using the prior art techniques. The industry praise was similarly discounted because much of it reflected general product quality rather than specific reactions to the patented inventions.
Key Takeaways
- Secondary considerations of non-obviousness (commercial success, industry praise, long-felt need) must have a nexus to the specific claimed invention — general product success or industry recognition of a product’s overall performance is insufficient if the success or praise is not specifically tied to the claimed inventive features.
- When competing products in a market have also achieved commercial success using approaches similar to the prior art, this weakens the nexus argument for secondary considerations because the success may reflect market demand rather than the patented innovation.
- Strong secondary considerations evidence can be overcome by a sufficiently strong prima facie obviousness case — courts and the PTAB must weigh all evidence in the totality and are not required to find non-obviousness simply because some secondary considerations evidence is presented.
- For patent holders asserting data storage, enterprise software, or cloud infrastructure patents in IPR, the secondary considerations strategy requires not just documenting commercial success but building an evidentiary record specifically connecting each claimed feature to the observed market outcomes.
Why It Matters
EMC v. Pure Storage was part of a broader patent dispute between legacy storage incumbents and flash storage startups in the early 2010s — a period of rapid market transformation as all-flash storage arrays disrupted the incumbent hard disk drive (HDD) storage market. The case illustrated that commercial disruption and impressive market success are not sufficient to save patents from IPR invalidity when the claimed innovations can be assembled from prior art with sufficient motivation.
The decision contributed to a body of Federal Circuit case law on secondary considerations in technology patent IPR proceedings — reinforcing that nexus analysis is critical and that strong primary obviousness evidence (clear motivation to combine known techniques to solve a known problem) is difficult to overcome through secondary considerations alone. For enterprise technology companies holding patents on incremental improvements to established technology platforms, the case served as a reminder that IPR petitions from competitors can succeed even when the claimed inventions are embedded in commercially successful products.