Secondary Considerations: Latest Guideposts

Director Paul A. Ainsworth will be a panelist in IPO’s IP Chat Channel webinar “Secondary Considerations: Latest Guideposts” on Thursday, July 30, 2020 from 2:00 to 3:00 p.m. EDT.

This webinar will review and analyze the latest judicial guideposts regarding the role and weight of objective indicia in evaluating the nonobviousness of a claimed invention. Uncertainty in this area dates back to Graham v. Deere, where the U.S. Supreme Court explicitly endorsed the use of secondary considerations but failed to clarify their role.

Recently both the Federal Circuit and PTAB have clarified the nexus aspect of this issue. A patentee generally must establish a nexus between the objective indicia and the claimed invention. This is most easily done when the commercial product is coextensive with the claimed invention because the patentee is entitled to a presumption of a nexus between the associated objective indicia and the claimed invention. In Fox Factory, the Federal Circuit explained that whether a commercial embodiment is “coextensive” with a claimed invention is often a question of degree and that although “perfect correspondence” is not required, a patentee must show the product is “essentially the claimed invention.”

By contrast, the three PTAB cases, Lectrosonics, Inc. v. Zaxcom, Inc. (Jan. 2020; precedential April 2020), Ex parte Whirlpool Corp., (Oct. 2013; informative, April 2020) and Ex parte Thompson, (March 2014; informative April 2020), show the PTAB willing to find objective indicia arguments persuasive in AIA trials and appeals from prosecution rejections. The last two cases are rare examples of the PTAB making a case involving examiner rejection “informative”. The PTAB decisions lay out a roadmap of the kind of evidence needed to establish nexus.

Panelists will discuss the current landscape and share drafting and prosecution tips for strengthening the nexus case.