Case Law Review: Obviousness

By: Josh Sloat

For the final episode of our 2024 season, we’re bringing it all together with a review of recent patent case law and how these decisions could impact your strategy going forward. The state of patent law – and its implications for the success of your business – is an ever-evolving landscape that combines the perspectives of the patent office, the judicial interpretations of the courts, and the legislative inputs of Congress. Broader situational awareness of movements on all three fronts will help not only with getting your IP right granted now but also in formulating a patent in a way that will maximize its odds of assertability and overall value when you later need it. 
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Section 103: Nonobvious Inventions

Kristen Hansen, Patent Strategy Specialist at Aurora, and Dr. David Jackrel, President of Jackrel Consulting, lead today’s two-part discussion with our all-star panel, dissecting recent court decisions impacting the core patenting issue of obviousness. Section 103 of U.S. Code, Title 35 governs how this concept applies to patentability. It essentially states that an invention cannot be patented if the differences between your claimed invention and the prior art are such that the claimed invention as a whole would have been obvious to a person having ordinary skill in the art at the time the invention was conceived. So determining obviousness is more than simply establishing that the invention doesn’t already exist and that it isn’t documented elsewhere. Its conception must also not have otherwise been obvious to those in the field at the time. 

If you’re thinking that sounds awfully subjective in the present and highly susceptible to hindsight bias in the future, you’d be right. Beyond being one of the four main drivers for patent application rejection at examination time, obviousness is also one of the primary vectors used by the Patent Trial and Appeal Board for invalidating patents via Inter Partes Review, so it’s essential to get this right so as to limit your patent’s potential invalidation surface area. 

Episode Overview

In breaking this all down in terms of how obviousness has been playing out in the courts, Dave, Kristen, and the panel discuss:

• Inter Partes Review and how some PTAB strategy deviates from conventional patenting wisdom when it comes to obviousness.
• Recent obviousness case law decisions.
• Practice tips related to obviousness including analysis of how previously invalidated claims impact future claims, the dangers of being your own lexicographer, and the strategic importance of drafting backup positions in your specification.

Kristen and Dave are joined by our always exceptional group of IP experts, including:

• Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora
• Ty Davis, Patent Strategy Associate at Aurora
• Daniel Wright, Patent Strategist at Aurora
• Marie Smyth, Patent Agent at Brake Hughes Bellermann LLP

Mossoff Minute: PREVAIL Advances

In this month's Mossoff Minute, Professor Adam Mossoff discusses some incredibly exciting news about the PREVAIL Act, which is designed to bring much overdue reform to the Patent Trial and Appeal Board. We’re also publishing excerpts as short-form videos on Instagram Reels, YouTube Shorts, and TikTok.

How to Listen

Patently Strategic is available on all major podcasting directories, including Apple Podcasts and Spotify. We're also available on 12 other directories including Stitcher, iHeart Radio, and TuneIn, so you should be able to find us wherever you listen to podcasts.
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Resources.

To further explore the topics discussed, see the following past episodes and resources:

Related Episodes

• PTAB Survival Guide
• Patent Anatomy: What's in a patent?​​
• Patent Searching (How to Find Prior Art)
• Patent Wars: Innovators, Revolutionaries, and the Race to Reform
• American Inventor Horror Story: 10 Years of AIA and the PTAB
• CAFC Chronicles: Costly Tales of Claim Construction Fails (Case Law)
• Top Inventor Mistakes (pitfalls of not searching prior art)

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