Washington, D.C. intellectual property lawyer Kevin Laurence shares the strategies he pursues regarding obviousness. He notes that obviousness is one of the most critical issues in inter partes reviews (IPRs), post-grant reviews (PGRs), and even district court litigation. Traditionally, in district court, the prevailing wisdom is to focus on anticipation rather than obviousness when presenting an invalidity case. However, he notes that the dynamic is quite different before the Patent Trial and Appeal Board (PTAB).

At the Board, there are three technically trained judges who deal with obviousness on a daily basis. They are deeply familiar with the doctrine and comfortable applying it, making obviousness a more flexible and effective approach for petitioners. For that reason, his team often treats obviousness as the stronger argument at the PTAB.

When representing patent owners, his approach involves carefully dissecting the petition to determine whether the cited references can truly be combined, whether the rationale for combining them makes logical sense, and whether that rationale is fully developed. Conversely, when representing petitioners, his team strives to base their arguments on multiple rationales whenever possible.

He points to the Supreme Court’s KSR decision, which expanded the framework beyond the traditional teaching-suggestion-motivation (TSM) test and identified six additional rationales for determining obviousness—all centered on predictability. In practice, he often combines the TSM rationale with at least one predictability-based rationale to strengthen the argument.

That dual approach, he explains, not only makes a petition more robust but also forces a deeper and more disciplined analysis. It’s an exercise that improves the quality of the arguments, increases the likelihood of success, and demonstrates to the judges that the petitioner has considered the issue from multiple, well-grounded perspectives.