Michael Kiklis and Matthew Zapadka Offer Guidance on Proving Nonobviousness Through Secondary Considerations at PTAB

May 28, 2020
Law360

Bass, Berry & Sims attorneys Michael Kiklis and Matthew Zapadka authored an article for Law360 offering lessons from three cases at the Patent Trial and Appeal Board (PTAB) and recent guidance from the PTAB related to proving nonobviousness through secondary considerations (also known as “objective indicia of nonobviousness”).

“Perhaps the most significant hurdle to proving nonobviousness through secondary considerations is demonstrating a nexus between the proffered evidence and the claimed invention,” the authors said. “Practitioners need to muster their evidence, but they need to specifically tie that evidence to the claimed invention.”

To identify several takeaways from PTAB, Michael and Matthew analyzed a case aiming to use secondary considerations to prove nonobviousness in an inter partes review, during prosecution and in an ex parte reexamination.

The full analysis, “Keys to Success Through Secondary Consideration at PTAB,” was published by Law360 on May 26 and is available online (subscription required) or in PDF format here.