Obviousness Standard: Leveraging Latest PTO and Court Guidance

Overcoming Challenges of Obviousness and Attacks on Patent Validity

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

Conducted on Thursday, June 1, 2017

Recorded event now available

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Program Materials

This CLE webinar will provide patent counsel with guidance on the evolving obviousness standard. In a post-AIA, post-KSR v. Teleflex world in which obviousness is at times confused with patent eligibility under Section 101, how is the Federal Circuit’s treatment of obviousness issues changing? How does the Patent Trial and Appeal Board (PTAB) handle obviousness in the increasingly popular inter partes review (IPR) proceedings? Even though the burden to prove invalidity remains with the accused infringer, is the standard for patentees to prevail on non-obviousness under Section 103 more confusing than ever? Our panel with answer these and other important questions.


The impact of Federal Circuit decisions has been significant. Federal Circuit review of PTAB decisions in appeals of final rejections and ex parte and inter partes reexaminations has highlighted the importance of deference to PTO expertise in Kennametal Inc. v. Ingersoll Cutting Tool Co. and In re Urbanski, and the difficulties in arguing that references are not physically combinable as in Allied Erecting v. Genesis Attachments.

The Federal Circuit’s treatment of district court decisions will also be explored. The court’s analysis of unexpected results in Senju Pharm. v. Lupin Ltd. and Prometheus Labs v. Roxane Labs have added contours to the obviousness calculus. The impact of KSR in the electromechanical arts continues to be felt in decisions such as ABT Systems v. Emerson.

A rash of recent decisions (e.g., Icon Health and Fitness v. Strava and In re Van Os) citing the need for the USPTO to supply reasoned explanations and evidentiary support for obviousness conclusions will be explored. Decisions that inform practitioners about how the Federal Circuit views teaching away, motivation to combine references, and other facets of obviousness analysis will also be discussed.

Decisions are rapidly emerging from the PTAB from IPR proceedings, and many of these decisions are being ratified without opinion by the Federal Circuit, effectively giving the PTAB the final word. We will explore how the PTAB is analyzing obviousness issues when deciding whether to institute trial and then after trial has been instituted. Our discussion will include the role of secondary considerations of non-obviousness (and the nexus requirement), whether “teaching away” arguments can be successful, the importance of “motivation to combine,” and obviousness challenges to design patents. In addition to providing insight on PTAB final decisions to give practical guidance to both patentees and petitioners, we will review recent IPR decisions that have reached the Federal Circuit, including, for instance, Arendi v. Apple, In re NuVasive, and Personal Web Technologies v. Apple.

Practitioners need to understand how the PTAB, district courts and the Federal Circuit apply the obviousness standard in order to successfully manage their patent portfolios and overall IP strategy.

Listen as our authoritative panel of patent attorneys examines the obviousness standard and the many recent changes that impact it, outlines steps that companies and counsel should take to withstand obviousness rejections, and offers best practices for prosecuting and defending against obviousness attacks in litigation.



  1. Background for the obviousness standard
  2. Federal Circuit treatment of PTAB decisions in appeals of final rejections and ex parte and inter partes reexaminations
  3. Federal Circuit treatment of district court decisions
  4. IPR decisions and results on Federal Circuit review
  5. Interplay with Section 101
  6. Practice tips


The panel will review these and other key issues:

  • How have recent Federal Circuit decisions affected application of the obviousness standard?
  • What level of “unexpected results” is needed to demonstrate patentability in light of recent decisions?
  • How can practitioners leverage recent decisions in which the Federal Circuit has insisted upon more thorough, reasoned explanations of the PTO’s obviousness conclusions?
  • What are the most effective strategies for both patentees and petitioners in prevailing on obviousness assertions in an IPR proceeding, and how will that strategy play out at the Federal Circuit?


Barry J. Herman
Barry J. Herman

Womble Carlyle Sandridge & Rice

Mr. Herman litigates matters across a wide array of technologies in the chemical, mechanical and electrical arts. He...  |  Read More

Schuchardt, Jonathan L.
Jon L. Schuchardt, Ph.D.

Dilworth IP

Mr. Schuchardt is a client-focused IP professional, fluent in organic chemistry, catalysis, and polymer chemistry, with...  |  Read More

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