Refuting Obviousness With Secondary Considerations
Surviving or Defeating Validity Challenges, Lessons From Recent Federal Circuit and PTAB Decisions

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
Intermediate
- work Practice Area
Patent
- event Date
Thursday, September 26, 2024
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE course will guide patent counsel on the use of secondary considerations to demonstrate or refute obviousness. The panel will examine what works and what does not when seeking to survive or defeat validity challenges. The panel will also review recent Federal Circuit decisions and Patent Trial and Appeal Board (PTAB) precedential and informative decisions addressing secondary considerations evidence and offer best practices for arguing secondary considerations.
Faculty

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.

Leveraging more than two decades of patent and trademark prosecution experience, Mr. Dresch focuses his practice on providing personalized and comprehensive intellectual property counseling to major corporations, emerging companies, and individual inventors in the U.S. and abroad. Clients seek his counsel for guidance establishing, developing, and managing their patent and trademark portfolios. He is also a trusted adviser on issues related to patent infringement, patent validity, avoiding infringement, and patent valuation. Mr. Dresch is highly skilled in the preparation and prosecution of U.S. and foreign utility and design patent applications in the mechanical, electrical, and electro-mechanical fields. His knowledge spans various aspects of intellectual property law, including appeals before the U.S. Patent Trial and Appeal Board and Trademark Trial and Appeal Board, reexamination, and reissue. Further, he has extensive experience conducting in-person interviews with USPTO examiners and supervisors.
Description
Over the last few years, the Federal Circuit and the PTAB have emphasized the importance of secondary considerations. The courts and the Patent and Trial Appeal Board have focused on these requirements, thereby guiding practitioners on how to use secondary considerations for effective rebuttals across varied areas of technology.
Often, the biggest hurdle to proving nonobviousness through secondary considerations is the difficulty of demonstrating a nexus between the proffered evidence and the claimed invention. Counsel needs to understand what the PTAB and courts are looking for in a persuasive secondary considerations argument. When refuting such arguments, a patent challenger should contest the nexus between the evidence and the patent claims at issue. The patent challenger should also consider the probative weight of the patent owner's secondary consideration evidence to determine if there is sufficient factual support in the record. And patent owners should plan and prepare for these attacks.
Listen as our authoritative panel of patent attorneys examines the use of secondary considerations to refute obviousness. The panel will discuss what works and what does not when seeking to defend or defeat validity challenges. The panel will review Federal Circuit and PTAB decisions addressing secondary considerations and offer best practices for arguing secondary considerations.
Outline
- Secondary considerations to refute obviousness
- Federal Circuit and PTAB decisions
- Best practices
Benefits
The panel will review these and other critical issues:
- What are the lessons from recent cases where secondary considerations successfully defeated validity challenges?
- What can be learned from unsuccessful attempts when using secondary considerations?
- How have the federal courts treated secondary considerations in recent cases?
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