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
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.
- Background for the obviousness standard
- Federal Circuit treatment of PTAB decisions in appeals of final rejections and ex parte and inter partes reexaminations
- Federal Circuit treatment of district court decisions
- IPR decisions and results on Federal Circuit review
- Interplay with Section 101
- 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
Womble Carlyle Sandridge & Rice
Mr. Herman litigates matters across a wide array of technologies in the chemical, mechanical and electrical arts. He... | Read More
Mr. Herman litigates matters across a wide array of technologies in the chemical, mechanical and electrical arts. He represents both domestic and foreign clients in patent, trademark and other intellectual property disputes before the U.S. Federal District Courts, the International Trade Commission, and the United States Patent & Trademark Office. Mr. Herman also has significant appellate experience at the Court of Appeals for the Federal Circuit.Close
Jon L. Schuchardt, Ph.D.
Mr. Schuchardt is a client-focused IP professional, fluent in organic chemistry, catalysis, and polymer chemistry, with... | Read More
Mr. Schuchardt is a client-focused IP professional, fluent in organic chemistry, catalysis, and polymer chemistry, with 22 years of experience in IP law. He is an expert in devising patent strategies, growing patent portfolios, counseling business leaders, drafting applications, and improving IP processes. He has prepared, filed and prosecuted more than 270 patent applications. Mr. Schuchardt is also an inventor on 15 issued U.S. patents.Close