In the challenging world of PTAB petitioners – where claims are frequently argued as invalid over a combination of prior art references – understanding what constitutes “analogous art” is a threshold requirement for any obviousness inquiry. Recently, the Federal Circuit shed some light on what is required of petitioners in PTAB proceedings to satisfy this requirement.
Analogous art can often be a confusing aspect of PTAB proceedings; however, it doesn’t have to be. Simply put, analogous art refers to art that is from the same field of endeavor, regardless of the problem addressed, or if it’s not within the field of endeavor, it is still relevant if it pertains to the particular problem faced by the inventor.
In a recent turn of events, the Federal Circuit, in a decision that has gotten much attention, has brought some clarity to the issue. The Court has emphasized that there is no set formula to determine what constitutes analogous art in PTAB proceedings. No “magic words” are required, according to the Court.
Rather, the Court advised that, to establish that a particular art is analogous, three key criteria should be met: the art must address a problem directly applicable or analogous to that disclosed in the patent; the problem should have been recognized and analyzed in a similar manner to that disclosed in the patent; and the claimed invention and the prior art must show similar structure or function.
The Court’s guidance is a helpful tool for those making claims about patent similarities. Whether you are a patent attorney, a patent examiner, or a patent holder, it is crucial to understand this clarification.
This ruling is expected to shape future PTAB proceedings and serve as a vital reference for patent attorneys, IP departments, and patent owners. Brought to the fore by Kilpatrick Townsend & Stockton LLP, this development is a critical piece of information for law professionals involved in patent cases.
The full details of the decision can be found on the JD Supra website.