Executive Summary1 min read
Key Takeaways
- A patent claim can be found invalid on “inherency” grounds if a prior art reference teaches nearly all the claimed features and any missing feature must “necessarily” be present when following that prior art’s teachings.
- In this case, Southwire’s industry-changing process patent successfully defeated an inherency attack from a challenger.
- Despite beating the inherency argument, the same patent ultimately succumbed to a separate “obviousness” attack.
The Bottom Line: Successfully defending a patent against one invalidity theory, like inherency, does not guarantee it will survive a separate attack such as obviousness — patent owners need a strategy that accounts for both.
Summary: How to defeat rejection based on “inherency”
Patent claims can be invalid if a prior art reference teaches almost all the claimed features and any missing features must “necessarily” be present when you follow the Prior art teachings.
In this IPR PTABCast Craige explains how Southwire’s industry-changing process patent defeated the inherence attack but succumbed to the “obviousness” attack.
Check out this further case study on obviousness.
Questions? If you would like to get your patent questions answered and be part of the show, Thompson Patent Law has a LIVE complimentary webinar called https://thompsonpatentlaw.com/atpa-all-shows/. Call the number below and reserve your spot in this LIVE teaching event.
