Section 102 Prior Art and Section 103 Obviousness: Leveraging CCPA and Early Federal Circuit Decisions

Description

Recent Federal Circuit patent decisions demonstrate that some of the lessons from earlier Section 102 and 103 patent decisions by the CCPA may have fallen by the wayside. The CCPA developed a rich body of jurisprudence, which the Federal Circuit adopted as binding precedent. CCPA Section 102 and 103 jurisprudence provides a treasure trove of arguments for practitioners prosecuting and litigating patents in the face of assertions of unpatentability during ex parte prosecution and AIA's post-grant proceedings involving the Patent Trial and Appeal Board (PTAB), as well as invalidity in the district courts and the International Trade Commission.

In assessing and determining anticipation and obviousness, the CCPA clarifies that all relevant evidence must be considered. Counsel can draw on CCPA cases for guidance in handling evidence and overcoming the negative effects of contemporary Federal Circuit decisions. The CCPA and early Federal Circuit decisions also give detailed guidance in assessing whether the USPTO or a patent challenger has established a proper prima facie case of obviousness.

Patent counsel must understand and heed the lessons of these cases: (1) to avoid missteps, (2) to challenge, when appropriate, a prima facie case of obviousness, and (3) to base obviousness decisions on all available evidence. That evidence may show there is no prima facie case of obviousness and/or that any such case is rebutted.

Similarly, patent counsel must understand the current state of the law and the lessons from the CCPA on anticipation and obviousness. This will impact prosecution, litigation, and proceedings before the PTAB.

Listen as our authoritative panel of U.S. patent attorneys discusses how practitioners should analyze anticipation and obviousness, examining the lessons provided by selected CCPA and early Federal Circuit decisions. The panel will offer tactics to apply those CCPA and early Federal Circuit decisions to avoid remaking old mistakes.