Inherency in Obviousness and Anticipation (RECORDING)

The doctrine of inherency can be a complex one to navigate.  Drawing upon lessons that can be learned from Federal Circuit opinions, this webinar will address how to avoid pitfalls in district court litigation and PTAB proceedings involving inherency, and also provide important tips for patent prosecution. 

Earlier this year, the Federal Circuit reversed Apple, Inc.'s successful challenge to software developer Personal Web Technologies data processing patent at the PTAB. "The board's reliance on inherency for [an] element in its obviousness analysis was improper," the panel said. The Federal Circuit explained that that the PTAB’s understanding of the prior art might be possible, but ruled that "mere possibility is not enough." 
Other Federal Circuit decisions also provide insights regarding this subject.  Endo Pharmaceuticals Solutions v. Custopharm Inc. held that prior art did not inherently disclose a composition’s vehicle formulation.  In Southwire Co. v. Cerro Wire LLC, the Court explained that “inherency may supply a missing claim limitation in an obviousness analysis” but “the limitation at issue necessarily must be present.”   
The panelists will discuss these cases, and more, and provide their views on the best practices to address inherency issues in patent prosecution and litigation.


Mark Feldstein, Finnegan

Paul Steadman, DLA Piper

Robert Greene Sterne, Sterne Kessler Goldstein Fox

Mark Feldstein


Mark Feldstein is a partner at Finnegan. He is a patent and trade secret litigator in U.S. district courts and also serves as lead counsel for clients in post-grant trial proceedings at the USPTO. He also maintains an active patent prosecution practice on behalf of domestic and foreign clients.  His practice encompasses issues involving pharmaceuticals, biochemistry, polymers, small molecule chemistry, nanotechnology, optics, and medical and analytic devices.  He holds a Ph.D. in chemistry.


Paul Steadman

DLA Piper

Paul Steadman is a trial lawyer and partner at DLA Piper. Paul represents global clients primarily in the automotive, electronics, and heavy industry sectors. He has a long track record litigating patent and trade secret cases, representing clients in Section 337 cases at the International Trade Commission, and arguing appeals to the Federal Circuit. He has represented a number of clients in matters where inherency was a central issue, including Cerro Wire in a successful Federal Circuit appeal. 

Robert Sterne

Sterne, Kessler, Goldstein & Fox, PLLC

Robert Greene Sterne is a founding director of Sterne Kessler Goldstein & Fox. He has been involved in many consequential patent cases, including as co-counsel in KSR International Co. v. Teleflex, Inc. and as successful patent reexamination counsel for i4i in Microsoft Corp. v. i4i.  He was the lead attorney in In re Beauregard, which addressed whether a computer program functionality on a disk was patentable subject matter. His firm has substantial experience in PTAB proceedings. 


Inherency in Obviousness and Anticipation (RECORDING)
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Open to view video.
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