Webinar: Navigating Section 112 Issues in IPR Proceedings

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

  • Aug 30, 2017 3:00 pm - Aug 30, 2017 4:00 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-4:00 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


  • Oct 12, 2017 12:00 pm - Oct 12, 2017 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.