Section 103 and Obviousness: Capitalizing on CCPA and Early Federal Circuit Precedent

Description

Recent Federal Circuit patent decisions, such as Allergan, Novo Nordisk, Galderma, and BMS, demonstrate that some of the lessons from earlier Section 103 pharmaceutical and chemical decisions by the CCPA may have fallen by the wayside. The CCPA developed a rich body of obviousness jurisprudence, which the Federal Circuit adopted as binding precedent.

CCPA Section 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 obviousness, the CCPA makes clear that all relevant evidence must be considered. Counsel can draw on CCPA cases for guidance in handling such evidence and in 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 PTAB has established a proper prima facie case of obviousness.

When applying the statutory obviousness standard, it is imperative that patent counsel understand and heed the lessons of these cases to avoid committing missteps, to challenge, when appropriate, a prima facie case of obviousness, and, in the right circumstances, to base obviousness decisions on all available evidence. That evidence may go to showing there is no prima facie case of obviousness and/or that any such case is rebutted.

Listen as our authoritative panel of U.S. patent attorneys discusses how practitioners should evaluate obviousness and examines the lessons provided by selected CCPA and early Federal Circuit decisions, as well as by the recent “Paradise Lost” 103 Federal Circuit decisions mentioned above where those lessons are often overlooked. The panel will offer strategies to leverage those C.C.P.A. and early Federal Circuit decisions to avoid re-making old mistakes.