Womble Carlyle attorney Barry Herman will help lead a Strafford Webinar on “Obviousness Standard: Leveraging Latest PTO and Court Guidance -- Overcoming Challenges of Obviousness and Attacks on Patent Validity”. The 90-minute Webinar takes place on Thursday, June 1.
Herman will be joined in the presentation by Jon Schuchardt of Dilworth IP. Decisions are rapidly emerging from the PTAB from IPR proceedings, and many of these decisions are being ratified without opinion by the Federal Circuit, effectively giving the PTAB the final word. Herman and Schuchardt will explore how the PTAB is analyzing obviousness issues when deciding whether to institute trial and then after trial has been instituted. Their discussion will include the role of secondary considerations of non-obviousness (and the nexus requirement), whether “teaching away” arguments can be successful, the importance of “motivation to combine,” and obviousness challenges to design patents.
In addition to providing insight on PTAB final decisions to give practical guidance to both patentees and petitioners, Herman and Schuchardt will review recent IPR decisions that have reached the Federal Circuit, including, for instance, "Arendi v. Apple, In re NuVasive," and "Personal Web Technologies v. Apple."
The Webinar will review the following topics:
- How have recent Federal Circuit decisions affected application of the obviousness standard?
- What level of “unexpected results” is needed to demonstrate patentability in light of recent decisions?
- How can practitioners leverage recent decisions in which the Federal Circuit has insisted upon more thorough, reasoned explanations of the PTO’s obviousness conclusions?
- What are the most effective strategies for both patentees and petitioners in prevailing on obviousness assertions in an IPR proceeding, and how will that strategy play out at the Federal Circuit?
Barry Herman is an intellectual property litigation partner working in Baltimore. He represents both domestic and foreign clients in a wide range of intellectual property matters, with an emphasis on patent litigation in district courts, the International Trade Commission, and the USPTO.