Publications & News

Increasing Role of Objective Indicia of Nonobviousness in AIA Proceedings

November 6, 2017

By Keith L. Slenkovich, Kevin M. Yurkerwich, PhD

In this article published by Bloomberg Law's Patent, Trademark & Copyright Journal, authors Keith Slenkovich and Kevin Yurkerwich direct practitioners to carefully develop objective indicia evidence, and responses challenging the sufficiency of such evidence. They also share that practitioners should remain cognizant of the types of objective indicia evidence that the PTAB may accept as persuasive, and make sure to properly present and support such evidence in the IPR trial record.

Excerpt: During inter partes review (IPR) proceedings, a patent owner facing a challenge to a patent's claims on the basis of obviousness may seek to counter this challenge by presenting evidence of objective indicia of nonobviousness, sometimes referred to as ''secondary consideration of nonobviousness.'' Objective indicia evidence ''can include copying, long felt but unsolved need, failur of others, commercial success, unexpected results created by the claimed invention, unexpected properties of the claimed invention, licenses showing industry respect for the invention, and skepticism of skilled artisans before the invention.'' Power Integrations, Inc. v. Fairchild Semiconductor Int'l, Inc., 711 F.3d 1348, 136 (Fed. Cir. 2013). Read the article.