Objective Evidence in IPRs: Demonstrating Sufficient Nexus

Linking Evidence and Merits of Claimed Invention, Leveraging Prosecution Declarations

Recording of a 90-minute CLE webinar with Q&A


Conducted on Thursday, November 5, 2015

Recorded event now available

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Program Materials

This CLE webinar will provide guidance to patent counsel on demonstrating nexus between objective evidence of non-obviousness and the claimed invention. The panel will offer best practices using analysis and explanation to link objective evidence to the merits of the claimed invention.

Description

Patent owners may submit objective evidence of non-obviousness in inter partes reviews (IPRs), and many have, either in the Patent Owner Preliminary Response or the Patent Owner Response. But patent owners have not had universal success in persuading the Patent Trial and Appeal Board (PTAB) that such objective evidence tips the balance in favor of non-obviousness. A problem has been that, according to PTAB, patent owners have not shown sufficient nexus between the objective evidence of non-obviousness and the claimed invention.

The nexus required for objective evidence of non-obviousness is not a new concept; it is long-established in case law. Why then have patent owners struggled to establish nexus between the claimed invention and the objective evidence of non-obviousness? Is the PTAB applying the “nexus” test more strictly than the courts or the examiners? Is the level of factual analysis that often comes with objective evidence just too big of an imposition on the IPR timeline?

Listen as our authoritative panel of patent attorneys examines successful and unsuccessful attempts to rely on objective evidence of non-obviousness and discusses how to make the necessary link between the evidence and the merits of the claimed invention. The panel will also look at whether evidence proffered is commensurate in scope with the breadth of the claimed invention and requests for additional discovery of objective evidence. Finally, the panel will discuss the strategic use of prosecution or litigation declarations in the POPR supporting positions of non-obviousness, and will mention the Proposed PTAB rules, which are the subject of a separate Strafford Webinar.

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Outline

  1. Unsuccessful attempts to rely on objective evidence of non-obviousness
  2. Successful attempts to rely on objective evidence of non-obviousness
  3. Requests for additional discovery of objective evidence
  4. Evidence commensurate in scope
  5. Strategic use of prosecution or litigation declarations
  6. Best practices for establishing nexus between the objective evidence and the merits of the claimed invention

Benefits

The panel will review these and other key issues:

  • How can patent counsel strategically use prosecution declarations supporting positions of non-obviousness in the POPR?
  • What advantage can be gained from understanding how the courts and the examiners are applying the nexus test?
  • What steps should patent owners and their counsel take to link through analysis and explanation objective evidence to the merits of the claimed invention?

Faculty

Michael J. Flibbert
Michael J. Flibbert

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Flibbert has extensive experience in all aspects of patent law, focusing on district court litigation, appeals, and...  |  Read More

Kerry Flynn
Kerry Flynn
Vice President, Chief IP Counsel
Vertex Pharmaceuticals

Ms. Flynn is a highly experienced licensing and intellectual property attorney with over 30 years of experience in both...  |  Read More

Irving, Thomas
Thomas L. Irving

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,...  |  Read More

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