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 video webinar with Q&A
This CLE course 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 Patent Trial and Appeal Board (PTAB) precedential and informative decisions addressing secondary considerations evidence and offer best practices for arguing secondary considerations.
- Secondary considerations to refute obviousness
- Federal Circuit and PTAB decisions
- Best practices
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?
John J. Dresch
Arnall Golden Gregory
Leveraging more than two decades of patent and trademark prosecution experience, Mr. Dresch focuses his practice on... | Read More
Leveraging more than two decades of patent and trademark prosecution experience, Mr. Dresch focuses his practice on providing personalized and comprehensive intellectual property counseling to major corporations, emerging companies, and individual inventors in the U.S. and abroad. Clients seek his counsel for guidance establishing, developing, and managing their patent and trademark portfolios. He is also a trusted adviser on issues related to patent infringement, patent validity, avoiding infringement, and patent valuation. Mr. Dresch is highly skilled in the preparation and prosecution of U.S. and foreign utility and design patent applications in the mechanical, electrical, and electro-mechanical fields. His knowledge spans various aspects of intellectual property law, including appeals before the U.S. Patent Trial and Appeal Board and Trademark Trial and Appeal Board, reexamination, and reissue. Further, he has extensive experience conducting in-person interviews with USPTO examiners and supervisors.Close
Matthew D. Zapadka
Arnall Golden Gregory
Mr. Zapadka counsels clients on the protection and enforcement of their intellectual property assets, with a focus on... | Read More
Mr. Zapadka counsels clients on the protection and enforcement of their intellectual property assets, with a focus on patent litigation. In this role, he advises on various intellectual property disputes in federal district court and state court, as well as trials at the USPTO Patent Trial and Appeal Board (PTAB). Mr. Zapadka also advises clients on patent prosecution matters, assisting companies ranging in size from start-ups to Fortune 500 companies. Additionally, he has experience litigating commercial disputes. Mr. Zapadka has worked with companies across a variety of sectors, including genetic technologies; biomolecular engineering, such as therapeutic and diagnostic molecules; prosthetics; pharmaceuticals; dietary supplements; cannabis/CBD; nuclear reactors; software; ultracapacitors; consumer products; genetic data visualization systems; and blockchain applications.Close