Secondary Considerations at the PTAB: Combating Obviousness Challenges, Establishing Nexus
Recording of a 90-minute premium CLE webinar with Q&A
This CLE course will guide patent counsel on the use of secondary considerations at the the Patent Trial and Appeal Board (PTAB). The panel will examine what works and what does not when seeking to defeat validity challenges. The panel will also review Federal Circuit decisions addressing secondary considerations evidence presented in an IPR trial and offer best practices for arguing secondary considerations at the PTAB.
Outline
- AIA trials and an overview of the use of secondary considerations to defeat claims of obviousness
- AIA trials where secondary considerations were deemed to be effective in defeating validity challenges
- AIA trials where secondary considerations were deemed to be ineffective in defeating validity challenges
- Federal Circuit decisions addressing secondary considerations evidence presented in an AIA trial
- Best practices for arguing secondary considerations at the PTAB
Benefits
The panel will review these and other critical issues:
- What lessons can be learned from cases where secondary considerations successfully defeated validity challenges?
- What trends can be observed from unsuccessful attempts when using secondary considerations?
- How have the federal courts addressed secondary considerations?
Faculty
Matthew L. Fedowitz
Shareholder
Buchanan Ingersoll & Rooney
Mr. Fedowitz has a particular expertise in the pharmaceutical, life science and medical device fields. His practice... | Read More
Mr. Fedowitz has a particular expertise in the pharmaceutical, life science and medical device fields. His practice includes patent portfolio development and strategic patent prosecution; litigation in federal district court; and inter partes proceedings before the Patent Trial and Appeal Board. He assists clients in the identification of products as business development opportunities and maneuvers through intellectual property hurdles by coordinating due diligence, preparing patent validity, freedom-to-operate and non-infringement opinions, and resolving disputes in court and before the U.S. Patent and Trademark Office.
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Philip L. Hirschhorn
Shareholder
Buchanan Ingersoll & Rooney
Mr. Hirschhorn has represented clients in Hatch-Waxman (Paragraph IV) litigations, has worked in diverse industries... | Read More
Mr. Hirschhorn has represented clients in Hatch-Waxman (Paragraph IV) litigations, has worked in diverse industries such as graphics, visualization technologies, medical devices, and chemical and consumer products, and also has experience handling copyright and trademark/trade dress litigation. In patent litigations, he has counseled clients on the interplay between Patent Office (PTAB) and district court actions. He has represented clients involved in proceedings in or with the Patent Office, including § 145 actions to obtain patents, ex parte and inter partes reexaminations and adversarial post-grant proceedings, including inter partes reviews.
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Christopher M. Cherry, Ph.D.
Buchanan Ingersoll & Rooney
Dr. Cherry focuses his practice on intellectual property law, in particular, inter partes proceedings before the USPTO... | Read More
Dr. Cherry focuses his practice on intellectual property law, in particular, inter partes proceedings before the USPTO (interferences, inter partes review, post-grant review, and reexaminations), representing both petitioners and patent owners. He has significant experience in patent prosecution, freedom-to-operate analyses, due diligence, and non-infringement and invalidity opinions. He has experience working with larger companies, start-ups, universities, and with recruiting and managing scientific experts.
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