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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

  • work Practice Area

    Patent

Date & Time
  • event Date

    Thursday, September 15, 2022

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00

This course is $0 with these passes:

CLE
ALL

This CLE course 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.

Faculty

Daniel J. Pereira
Partner
Merchant & Gould PC

Dr. Pereira, Ph.D., leverages his extensive background in science and law to deliver strategic patent portfolio management, client counseling, and litigation services. Specializing in technologies such as chemical technologies, metallurgy, solar, bioinformatics, semiconductors, OLEDs, solid-state batteries, medical diagnostics, AI and computer-related technologies, pharmaceuticals, and biotechnology, he adeptly navigates the complexities of patent prosecution, IP litigation, and patent interferences for his clients. As a partner at Merchant & Gould's Washington D.C. Area office, Dr. Pereira focuses on delivering comprehensive intellectual property services to innovators. He helps them navigate the legal landscape to protect their inventions and maximize the value of their IP assets. Dr. Pereira is adept at handling intellectual property asset acquisitions, offering thorough risk assessment and due diligence to secure his client's future growth and success. He has a strong background in proceedings before the Patent Trial and Appeal Board (PTAB), district court patent litigations, and appeals at the Federal Circuit. Dr. Pereira's proactive approach to pre-litigation counseling and litigation avoidance is highly valued by clients seeking to navigate the complex landscape of intellectual property law.

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Matthew D. Zapadka
Partner
Arnall Golden Gregory LLP

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.

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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 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.

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.

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?