Obviousness Standard: Leveraging Latest PTO and Court Guidance

Overcoming Challenges of Obviousness and Attacks on Patent Validity

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


Conducted on Thursday, September 17, 2020

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Program Materials

This CLE webinar will provide patent counsel with guidance on the evolving obviousness standard. In a post-KSR v. Teleflex world in which obviousness is at times confused with patent eligibility under Section 101, how is the Federal Circuit's treatment of obviousness issues changing? How does the Patent Trial and Appeal Board (PTAB) handle obviousness in inter partes review (IPR) proceedings? Which forum more favors patentees, the PTAB, or the district courts? Our panel with answer these and other essential questions.

Description

The impact of Federal Circuit decisions has been significant. An earlier rash of cases (e.g., In re NuVasive) remanded to the PTAB with requests for more-reasoned decision making has now settled as the Federal Circuit apparently has renewed confidence in the PTAB’s ability to generate a thorough record for review.

The Federal Circuit's treatment of district court decisions will be explored. An apparent dichotomy regarding the proper role of prima facie obviousness analysis as it applies to validity determinations will be noted. Numerous cases (e.g., Forest Laboratories v. Sigmapharm Laboratories and Endo Pharmaceuticals v. Actavis) have helped to clarify the court’s current views regarding motivation to modify or combine reference teachings and what amounts to a reasonable expectation of success. Inherency, a staple of Section 102 law, has also been discussed in the context of Section 103, e.g., in Persion Pharmaceuticals v. Alvogen Malta Operations and Hospira v. Fresenius Kabi USA).

Many recent Federal Circuit cases review decisions from IPR proceedings. We will see how the PTAB and CAFC agreed about secondary considerations and nexus to the claimed subject matter in Henny Penny v. Frymaster, and we will contrast that with how the court disagreed with the Board’s approach in Fox Factory v. SRAM. "Common sense" mattered to both the PTAB and the CAFC in B/E Aerospace v. C&D Zodiac, and both tribunals explained when general knowledge is properly used to supply a missing claim limitation in Koninklijke Philips v. Google.

Other decisions on the agenda inform practitioners about how the Federal Circuit views motivation to combine references, unexpected results, hindsight, structural similarity in chemical cases, and other facets of the obviousness analysis.

Practitioners need to understand how the PTAB, district courts, and the Federal Circuit apply the obviousness standard to manage their patent portfolios and overall IP strategy successfully.

Listen as our authoritative panel of patent attorneys examines the obviousness standard and the many recent changes that impact it. The webinar will outline steps that companies and counsel should take to withstand obviousness rejections and offer best practices for prosecuting and defending against obviousness attacks in litigation.

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Outline

  1. Background for the obviousness standard
  2. Federal Circuit treatment of PTAB decisions in appeals of final rejections in ex parte and inter partes reexaminations
  3. Federal Circuit treatment of district court decisions
  4. IPR decisions and results on Federal Circuit review
  5. Practice tips

Benefits

The panel will review these and other high profile issues:

  • How have recent Federal Circuit decisions impacted the application of the obviousness standard?
  • What level of "unexpected results" is needed to demonstrate patentability?
  • How can practitioners leverage recent decisions in which the Federal Circuit has insisted upon more thorough, reasoned explanations of the PTO's obviousness conclusion?
  • What strategies should patentees and petitioners employ to prevail on obviousness assertions in an IPR proceeding, and how will those strategies fare at the Federal Circuit?

Faculty

Reid, William
William R. Reid

Partner
Dilworth IP

Mr. Reid serves as primary U.S. patent prosecution counsel for the European division of one of the world’s...  |  Read More

Schuchardt, Jonathan L.
Jon L. Schuchardt, Ph.D.

Partner
Dilworth IP

Mr. Schuchardt is a client-focused IP professional, fluent in organic chemistry, catalysis, and polymer chemistry, with...  |  Read More

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