Secondary Considerations at the PTAB: Combating Obviousness Challenges, Establishing Nexus

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


Conducted on Thursday, June 14, 2018

Recorded event now available

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Program Materials

This CLE webinar will guide patent counsel on the use of secondary considerations at the the Patent Trial and Appeal Board (PTAB). The panel will examine what works and what does not when seeking to defeat validity challenges. The panel will also review Federal Circuit decisions addressing secondary considerations evidence presented in an IPR trial and offer best practices for arguing secondary considerations at the PTAB.

Description

The PTAB and courts review secondary considerations when analyzing the obviousness of patent claims. Patent owners relying on secondary considerations to defeat an obviousness challenge often face an uphill battle.

At the PTAB, patent owners have seen mixed results in convincing the Board that secondary considerations outweigh a prima facie case of obviousness. As counsel, it is important to understand what the PTAB and courts are looking for in a persuasive and successful secondary considerations argument. For example, counsel must demonstrate a nexus between the evidence and the patent claims at issue.

Listen as our authoritative panel of patent litigators examines AIA trials at the PTAB where secondary considerations were deemed to be persuasive in defeating obviousness challenges and other trials where secondary considerations were deemed unpersuasive. The panel will discuss the trends observed from both successful and unsuccessful attempts. The panel will also review Federal Circuit decisions addressing secondary considerations evidence in AIA trials and offer best practices for arguing secondary considerations at the PTAB.

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Outline

  1. AIA trials and an overview of the use of secondary considerations to defeat claims of obviousness
  2. AIA trials where secondary considerations were deemed to be effective in defeating validity challenges
  3. AIA trials where secondary considerations were deemed to be ineffective in defeating validity challenges
  4. Federal Circuit decisions addressing secondary considerations evidence presented in an AIA trial
  5. Best practices for arguing secondary considerations at the PTAB

Benefits

The panel will review these and other critical issues:

  • What lessons can be learned from cases where secondary considerations successfully defeated validity challenges?
  • What trends can be observed from unsuccessful attempts when using secondary considerations?
  • How have the federal courts addressed secondary considerations?

Faculty

Fedowitz, Matthew
Matthew L. Fedowitz

Shareholder
Buchanan Ingersoll & Rooney

Mr. Fedowitz has a particular expertise in the pharmaceutical, life science and medical device fields. His practice...  |  Read More

Hirschhorn, Philip
Philip L. Hirschhorn

Shareholder
Buchanan Ingersoll & Rooney

Mr. Hirschhorn counsels clients on the interplay between Patent Office and district court proceedings. He has...  |  Read More

Cherry, Christopher
Christopher M. Cherry, Ph.D.

Buchanan Ingersoll & Rooney

Dr. Cherry focuses his practice on intellectual property law, in particular, inter partes proceedings before...  |  Read More

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