Obviousness Standard: Leveraging Latest PTO and Court Guidance

Overcoming Challenges of Obviousness and Attacks on Patent Validity

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

Conducted on Tuesday, October 30, 2018

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 essential 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 thorough, reasoned decision making based on the evidence in In re Hodges, In re Van Os, and In re NuVasive.

We will explore the Federal Circuit’s treatment of district court decisions. The apparent dichotomy in the CAFC’s decisions regarding the proper role of prima facie obviousness analysis as it applies to validity determinations will be discussed. The contrasting opinions in Zup v. Nash Manufacturing are the most recent chapter in a story that includes last year’s opinions in Merck v. Hospira and Intercontinental Great Brands v. Kellogg North America.

The Federal Circuit has now reviewed numerous PTAB final decisions from IPR proceedings. We will consider both the PTAB’s reasoning and how the Federal Circuit treated the outcome keeping in mind that the CAFC ratifies many PTAB decisions without opinion, effectively giving the PTAB the final word. Well-reasoned decisions are important in the IPR context, of course, as illustrated by Outdry v. Geox, Rovalma v. Böhler-Edelstahl, and most recently, DSS Technology Management v. Apple.

The webinar will also review decisions that inform practitioners about how the Federal Circuit views teaching away, motivation to combine references, unexpected results, hindsight, structural similarity in chemical cases (as discussed in Anacor Pharmaceuticals), and other facets of obviousness analysis.

Practitioners need to understand how the PTAB, district courts, and the Federal Circuit apply the obviousness standard 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 in ex parte and inter partes reexaminations
  3. Federal Circuit treatment of district court decisions
  4. IPR decisions and results on Federal Circuit review
  5. Practice tips


The panel will review these and other high profile issues:

  • How have recent Federal Circuit decisions impacted application of the obviousness standard?
  • What level of “unexpected results” is needed to demonstrate patentability?
  • 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 strategies should patentees and petitioners employ to prevail on obviousness assertions in an IPR proceeding, and how will those strategies fare at the Federal Circuit?


Reid, William
William R. Reid

Dilworth IP

Mr. Reid serves as primary U.S. patent prosecution counsel for the European division of one of the world’s...  |  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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