Objective Evidence in IPRs: Demonstrating Sufficient Nexus

Linking Evidence and Merits of Claimed Invention, Leveraging Prosecution Declarations

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


Conducted on Wednesday, August 21, 2019

Recorded event now available

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Program Materials

This CLE webinar will guide patent counsel on how to demonstrate 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 (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.

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Outline

  1. Successful and unsuccessful attempts to rely on objective evidence of non-obviousness
  2. Evidence commensurate in scope
  3. Requests for additional discovery of objective evidence
  4. Strategic use of prosecution declarations
  5. Best practices for using objective evidence to establish non-obviousness

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 are the advantages of 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

Feldstein, Mark
Mark J. Feldstein, Ph.D.

Partner
Finnegan Henderson Farabow Garrett & Dunner

Dr. Feldstein focuses on U.S. district court litigation, primarily concerning the enforcement of U.S. patent rights and...  |  Read More

Flibbert, Michael
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

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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