Objective Evidence in IPRs: Demonstrating Sufficient Nexus

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 (POPR) 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. One problem has been that, according to PTAB, patent owners have not shown sufficient nexus between the objective evidence and the claimed invention.

The nexus requirement for objective evidence is not a new concept; it is long-established in case law. Why then have patent owners struggled to persuasively establish nexus between the claimed invention and the objective evidence? 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? The IPR timeline is already short (and strictly limited), and it will be even tighter for patent owners opting into the new motion to amend pilot program for addressing the patentability of proposed substitute claims.

Listen as our authoritative panel of patent attorneys examines 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 supporting positions of non-obviousness.