Webinar: Navigating Section 112 Issues in IPR Proceedings

Webinar: Navigating Section 112 Issues in IPR Proceedings – Using Section 112 as a Sword or Shield

Speakers: Counsel Jonathan Bowser & Counsel Roger Lee

On April 27, 2017, Jonathan Bowser and Roger Lee conducted the webinar “Navigating Section 112 Issues In IPR Proceedings—Using Section 112 as a Sword or Shield”, hosted by Strafford. The webinar focused on Section 112 issues that often arise during the course of inter partes review (IPR) proceedings.

Bowser and Lee addressed responses by PTAB panels to assertions by IPR petitioners that claims do not comply with Section 112, and factors to consider when deciding whether to challenge claims in an IPR that might be invalid under Section 112. They also discussed related claim constructions issues, including meeting the claim construction requirements for means-plus-function claims in IPR petitions, and requirements for establishing priority of invention from earlier applications or patents. They offered best practices for handling Section 112 issues in IPRs.

Download the presentation here.


Related upcoming events

  • 06 14, 17 10:16 am - 06 14, 17 4:20 pm

    Women in IP & Law Summit - Silicon Valley
    Who is My Mentor and Developing a Sponsor

    Panel Speaker: Shareholder Erin Dunston
    Wednesday, June 14, 4:20 PM

    Shareholder Erin Dunston, Gingko Bioworks General Counsel Shelby Walker, Microsoft Senior Attorney Pamela Hiatt, and Gilead Sciences Associate IP General Counsel Gretchen Stroud will lead the panel, Who is My Mentor and Developing a Sponsor.

    Having a mentor is great but it may not be realistic in IP as you can’t ask a peer at a rival company if you just made a mistake. However, in order to progress your career you must find sponsors to learn and help you develop. So where can you find mentorship? What people and experience should you seek? How to be seen and heard so the quality of your work can be judged on its own merit?

    This panel will examine:

    -The value of good mentorship
    -No mentor – where to seek guidance
    -Sponsorship and its importance
    -Creating your own meritocracy

    For more information, please visit the conference website.



  • 06 24, 17 8:45 am - 06 24, 17 10:00 am

    Federal Circuit Bar Association Annual Bench & Bar Conference
    PTAB Practice in the Pharmaceutical Industry

    Panelist: Shareholder Erin Dunston
    Saturday, June 24, 8:45 AM-10:00 AM

    Shareholder Erin Dunston, Sanofi Principal Counsel Brian McCaslin, Mylan Assistant General Counsel Thomas Jenkins, and USPTO Chief  Judge David Ruschke will lead the panel, PTAB Practice in the Pharmaceutical Industry.

    Inter partes review (“IPR”) has increasingly become a method of choice for challenging life sciences patents, including those related to blockbuster biopharmaceuticals and medical devices. This panel will discuss the various strategic considerations and challenges unique to life sciences IPRs, including when IPRs are used in the context of co-pending district court litigation. The panel will also discuss how strategic approaches may differ depending upon the particular type of biopharmaceutical at issue, including complex biologics and small molecules.

    For more information, please visit the conference website.



  • 08 30, 17 3:00 pm - 08 30, 17 5:00 pm

    Webinar: Exploring the "Patent Agent Privilege" Proposal and Its Anticipated Impacts on PTAB Proceedings

    Join Shareholder Lloyd Smith and Cooley attorney Britton Davis on Wednesday, August 30, 3:00 PM-5:00 PM, for a webinar hosted by The Knowledge Group.

    The United States Patent and Trademark Office (USPTO) has proposed a rule that would recognize a privilege for certain communications between U.S. patent agents or foreign non-attorney patent practitioners and their clients, to the same extent as communications between clients and U.S. attorneys. It would replace the current patchwork of common law, which requires a complex fact-based analysis to decide privilege questions.

    Smith and Davis will discuss how and to what extent the rule would protect communications from discovery in trial practice at the USPTO and the Patent Trial and Appeal Board (PTAB), including inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings under the Leahy-Smith America Invents Act (AIA).

    Key topics include:

    • Discovery
    • Inter Partes Review
    • Post-Grant Review
    • Business Method Patents
    • Leahy-Smith America Invents Act
    • Communications Covered
    • Jurisdictional Limitations


  • 10 12, 17 12:00 pm - 10 12, 17 2:00 pm

    Webinar: PTAB Patent Proceedings - Best Practices and Strategies You Must Know for 2017 & Beyond

    Speaker: Roger Lee - Counsel, Patent Office Litigation Practice

    Join us on Thursday, October 12, 12:00 PM-2:00 PM, for a webinar hosted by The Knowledge Group.