Patently Strategic Podcast: Obviousness Case Law Review

An invention cannot be patented if the differences between a 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 made. Determining obviousness – and the validity of your patent – 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 (PTAB) for invalidating patents via Inter Partes Review (IPR), so it’s essential to get this right, so as to limit your patent’s potential invalidation surface area.

The Ever-Evolving Landscape of Patent Law

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 property 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. 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.

Episode Overview: Obviousness Case Law Review

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

• Softview LLC v. Apple Inc, Motorola Mobility LLC. The USPTO’s authority to estop patentees from obtaining patent claims ‘Not Patentably Distinct’ from Previously Invalidated Claims, and the value in using AI tools to proof and check your newly proposed claim sets against all claims in prior proceedings in the family.
• Centripetal Networks v. Palo Alto Networks. The strategic importance of drafting backup positions in your specification.
• Parkervision, Inc. v. Vidal. The dangers of being your own lexicographer.
• Crocs Inc. v. Dawgs/Effervescent Inc. The risks of not ensuring that advertised aspects match the scope of the patent protection when advertising a product or service as “patented” or “patent pending.”
• Qualcomm Inc. v. Intel Corp. Some key differences in the 103 rationales in Keller and KSR.
• Novartis Pharma v. Regeneron Pharmaceuticals. What do you need to support a teaching away argument?

Discussion Panel

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

• 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.

Back in 2025

This will be our last episode for the year. We’ll be back in the new year with an excellent lineup of episodes with discussions on topics including strategies for dealing with application rejection, an exploration of cannabis-related patent cases, portfolio-focused investment tips for startups, and of course, all of the latest on critical patent reform efforts. I always mention this in the outro, but in case you don’t make it that far, please don’t hesitate to reach out for any other topics you’d like to hear our experts unpack.

As we head into the holidays and turn the corner from Thanksgiving, we also want to give thanks to all of the innovators out there who are working so hard to shape our future and to the tireless revolutionaries battling in the trenches of innovation policy and patent reform, fighting the good fight, to ensure inventors have a path cleared for strong, predictable, and reliable patent rights. Thanks for all you do. It’s a blessing to know and work with you all.

Related Listening and Reading

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

• Discussion Slides. Presenter notes shared during the panel discussion.
• Patent Searching: Sleuthing Your Way to Stronger Patents. The importance of surfacing prior art.
• Patent Anatomy: What’s in a patent? Deep dive on the parts of a patent and how they connect.
• PTAB Survival Guide. Strategies for better IPR-proofing your patents.
• CAFC Chronicles: Costly Tales of Claim Construction Fails (Case Law). Our other case law review episode from 2024. Also explores the concept of a PHOSITA.
• Patent Wars: Innovators, Revolutionaries, and the Race to Reform. A deep dive into the problems plaguing the patent world, including the PTAB – otherwise known as the Patent Death Squad.