IP Litigation Attorney in Washington, District of Columbia
Strategies Regarding Obviousness
Strategies Regarding Obviousness
More In This Category
View Transcript
00:04
well obviousness is is uh an area that’s
00:07
really critical
00:08
uh
00:09
to outcomes in iprs and pgrs
00:13
and in district court litigation the
00:15
conventional wisdom is you always want
00:17
to present an invalidity case based on
00:19
anticipation not obviousness but the
00:22
opposite is true at the board because
00:24
you have three technically trained
00:25
judges who are immersed in obviousness
00:28
issues every day they’re very
00:29
comfortable with it and it’s a more
00:31
fluid doctrine than anticipation so it’s
00:35
a better approach for the petitioner
00:37
typically to rely on obviousness and
00:39
what we do when representing a patent
00:41
owner is we scour the petition to assess
00:45
whether or not
00:47
the references that are presented are
00:49
combinable and whether or not there’s a
00:51
a rationale that’s presented
00:54
for combining those references that
00:55
makes sense and whether or not it’s
00:57
presented in a way that’s complete and
00:59
when representing the petitioner
01:01
we really try to
01:03
rely on more than one rationale if we
01:06
can in the supreme court’s ksr decision
01:09
which dealt with the teaching suggestion
01:12
motivation test
01:13
the supreme court identified six
01:15
additional rationales for obviousness
01:18
and all of them dealt with
01:20
predictability that was the touchstone
01:22
so typically what we try to do is is
01:24
rely on the teaching suggestion
01:26
motivation test
01:28
and then also one of the
01:30
rationales that relates to
01:31
predictability if possible to have those
01:34
two rationales that really helps to make
01:37
sure that the petition is robust
01:39
that exercise of going through and and
01:41
presenting those two rationales is uh
01:44
very helpful
Contact Kevin Laurence
Email This Lawyer
(202) 558-6180
See All This Lawyer's Videos
Visit Lawyer's Website
Washington, D.C. intellectual property lawyer Kevin Laurence shares the strategies he pursues regarding obviousness.
