Refuting Obviousness With Secondary Considerations

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.

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.