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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, January 7, 2021

  • 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
CLE
ALL

This CLE course will guide patent counsel on leveraging decisions by the Court of Customs and Patent Appeals (CCPA) and the Federal Circuit in applying Sections 102 and 103 prior art and obviousness standards. The panel will examine lessons learned through CCPA and early Federal Circuit decisions, as well as offer strategies for evaluating prior art and obviousness, handling evidence, and overcoming assertions of unpatentability.

Faculty

Adriana L. Burgy
Partner
Finnegan Henderson Farabow Garrett & Dunner LLP

Ms. Burgy focuses on opinion work, client counseling, patent prosecution and management, and litigation in the chemical, pharmaceutical, and biotechnology arts. She counsels her clients on a diverse range of patent issues. She assists clients on single-patent issues as well as complex matters involving multiple patents and applications requiring ongoing advice on patent portfolio strategy and development, with an eye towards litigation. She has assisted clients in the early stages of development through due diligence and patent portfolio analysis.

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Thomas L. Irving
Partner
Marbury Law Group

Mr. Irving has 47 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served as lead counsel in many patent interferences.

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Aliza G. Carrano
Miscellaneous

Ms. Carrano is a registered patent attorney, focusing her practice on complex patent litigation before the U.S. district courts and the U.S. International Trade Commission (ITC). She works on litigation matters in a variety of technologies, primarily in the electrical, software, optical technology, wireless technology, business methods, and mechanical fields. Her litigation experience includes analyzing patent portfolios for assertion; formulating claim construction, infringement, and validity positions; taking and defending depositions; and trial. Before law school, she worked as a software engineer at Raytheon, where she analyzed and enhanced the baseline source code for the Deployable Ground Intercept Facility.

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Arpita Bhattacharyya
Partner
Finnegan Henderson Farabow Garrett & Dunner LLP

Ms. Bhattacharyya, Ph.D., practices all aspects of patent law, including district court and ITC litigation, patent office trials and examination, and client counseling, with an emphasis on patents related to medical devices, diagnostics, and electronic and mechanical technologies. She has been recognized as a WIPR Influential Women in IP Trailblazer.

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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.

Outline

  1. Assessing prior art
  2. Evaluating anticipation
  3. Evaluating obviousness
  4. Lessons from the CCPA and early Federal Circuit decisions
  5. Leveraging CCPA decisions and early Federal Circuit decisions to avoid untoward Sections 102 and 103 results

Benefits

The panel will review these and other key issues:

  • How is evidence of unexpected properties by a claimed invention evaluated?
  • What lessons can patent counsel draw from CCPA decisions when asessing prior art? When applying the statutory obviousness standard?
  • What steps should patent counsel take going forward to avoid making the mistakes of the past?