Patent owners often submit objective evidence of non-obviousness in inter partes reviews (IPRs). But the patent owners have not always succeeded in persuading the Patent Trial and Appeal Board (PTAB) that such objective evidence tips the balance in favor of nonobviousness. A problem for patent owners has been when the PTAB decides that patent owners have not shown sufficient nexus between the objective evidence of nonobviousness and the claimed invention. In this article, Finnegan attorney Thomas L. Irving examines attempts to rely on objective evidence of non-obviousness and discusses how the necessary link between the evidence and the merits of the claimed invention may be made. The article will also look at the issue whether evidence proffered is commensurate in scope with the breadth of the claimed invention. Finally, the article will discuss the strategic use of prosecution declarations in the Patent Owner's Preliminary Response (POPR) supporting positions of non-obviousness under the current rules, which may be helpful in convincing PTAB to deny the institution of an IPR.
Originally published by Bloomberg BNA.
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