Obviousness Standard: Leveraging Latest PTO and Court Guidance

Description

The impact of Federal Circuit decisions has been significant. An earlier rash of cases (e.g., In re NuVasive) remanded to the PTAB with requests for more-reasoned decision making has now settled as the Federal Circuit apparently has renewed confidence in the PTAB’s ability to generate a thorough record for review.

The Federal Circuit's treatment of district court decisions will be explored. An apparent dichotomy regarding the proper role of prima facie obviousness analysis as it applies to validity determinations will be noted. Numerous cases (e.g., Forest Laboratories v. Sigmapharm Laboratories and Endo Pharmaceuticals v. Actavis) have helped to clarify the court’s current views regarding motivation to modify or combine reference teachings and what amounts to a reasonable expectation of success. Inherency, a staple of Section 102 law, has also been discussed in the context of Section 103, e.g., in Persion Pharmaceuticals v. Alvogen Malta Operations and Hospira v. Fresenius Kabi USA).

Many recent Federal Circuit cases review decisions from IPR proceedings. We will see how the PTAB and CAFC agreed about secondary considerations and nexus to the claimed subject matter in Henny Penny v. Frymaster, and we will contrast that with how the court disagreed with the Board’s approach in Fox Factory v. SRAM. "Common sense" mattered to both the PTAB and the CAFC in B/E Aerospace v. C&D Zodiac, and both tribunals explained when general knowledge is properly used to supply a missing claim limitation in Koninklijke Philips v. Google.

Other decisions on the agenda inform practitioners about how the Federal Circuit views motivation to combine references, unexpected results, hindsight, structural similarity in chemical cases, and other facets of the obviousness analysis.

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

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