Refuting Obviousness With Secondary Considerations

Surviving or Defeating Validity Challenges, Lessons From Recent Federal Circuit and PTAB Decisions

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


Conducted on Tuesday, December 15, 2020

Recorded event now available

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Program Materials

This CLE webinar will guide patent counsel on the use of secondary considerations to demonstrate or refute obviousness. The panel will examine what works and what does not when seeking to survive or defeat validity challenges. The panel will also review recent Federal Circuit decisions and PTAB precedential and informative decisions addressing secondary considerations evidence and offer best practices for arguing secondary considerations.

Description

In a recent line of cases, the Federal Circuit emphasized the importance of secondary considerations. The court also explained the requirements to use these considerations to refute obviousness effectively. The Patent Trial and Appeal Board (PTAB) has also designated as precedential or informative decisions addressing secondary considerations.

The biggest hurdle to proving nonobviousness through secondary considerations is demonstrating a nexus between the proffered evidence and the claimed invention. Counsel needs to understand what the PTAB and courts are looking for in a persuasive secondary considerations argument. When refuting such arguments, a patent challenger should contest the nexus between the evidence and the patent claims at issue. The patent challenger should also consider the probative weight of the patent owner's secondary consideration evidence to determine if there is sufficient factual support in the record.

Listen as our authoritative panel of patent attorneys examines the use of secondary considerations to refute obviousness. The panel will discuss what works and what does not when seeking to defend or defeat validity challenges. The panel will review Federal Circuit and PTAB decisions addressing secondary considerations and offer best practices for arguing secondary considerations.

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Outline

  1. Secondary considerations to refute obviousness
  2. Recent Federal Circuit and PTAB decisions
  3. Best practices

Benefits

The panel will review these and other critical issues:

  • What are the lessons from recent cases where secondary considerations successfully defeated validity challenges?
  • What can be learned from unsuccessful attempts when using secondary considerations?
  • How have the federal courts treated secondary considerations in recent cases?

Faculty

Stach, Jason
Jason E. Stach

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Stach has extensive experience in several areas, including challenging and defending patents in post-grant...  |  Read More

Zapadka, Matthew
Matthew D. Zapadka

Attorney
Bass Berry & Sims

Mr. Zapadka counsels clients on the protection and enforcement of their intellectual property assets, with a focus on...  |  Read More

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