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Patent Eligibility, Prior Art, Obviousness and Disclosure 2021: Current Trends in Sections 101, 102, 103 and 112


Speaker(s): Benjamin C. Hsing, John M. White, Jonathan A. Harris, Michael J. Gulliford, Rebecca Goldman Rudich, Robert J. Spar, Sasha G. Rao
Recorded on: May. 10, 2021
PLI Program #: 304289

Ben Hsing is an accomplished trial lawyer with significant experience litigating patents across a broad range of technologies, including pharmaceutical compounds and formulations, telecommunication cables, treatment methods, genetically engineered seeds, medical devices, memory chips, light switches, imaging devices, and pet products. Ben has secured favorable results for major pharmaceutical and technology companies in numerous high-profile cases.

Ben regularly calls upon his experience as a patent examiner to provide comprehensive counsel to clients on matters before the U.S. Patent and Trademark Office (USPTO), including post-grant and contested patent office proceedings. He also conducts intellectual property (IP) due diligence investigations in connection with acquisitions and licensing deals. He is deeply involved in his clients’ matters, ensuring that he understands all aspects of their businesses and cases so that he can identify, dissect, and solve potential challenges facing his clients.


Jonathan Harris is a partner in the Corporate and Litigation Departments and a member of the Life Sciences Practice Group. A patent lawyer and business-minded MBA with over two decades of experience, Jonathan helps clients protect, license and exploit their most critical innovations. He advises established and emergent life science companies on all aspects of IP matters, including patent licenses and strategic alliances, litigation, IP diligence, freedom to operate, and prosecution.

Clients describe Jonathan as “an excellent patent analyst” and “skilled at translating complex technical subjects into English.” He works with start-ups to develop and license key IP assets. He has also worked extensively with global industry leaders on products worth billions of dollars. Given his MBA, Jonathan tries to see the bigger picture of every matter — not only from a legal, but also a commercial perspective. His many years of high stakes patent litigation experience help clients see around corners and reduce litigation risk. He serves as outside general counsel to clients and their boards of directors.

Jonathan has also prepared and prosecuted over two hundred patents and served as lead or co-lead trial counsel in numerous Paragraph IV actions over pharmaceutical products, including Cialis® (tadalafil), Diclegis® (doxylamine succinate, pyridoxine HCl), Focalin® (dexmethylphenidate HCl), Ritalin® (methylphenidate HCL), Trilipix® (fenofibric acid), and Zometa® (Zoledronic Acid), among others. He is intimately familiar with the overlying FDA regulatory regime in the pharmaceutical area.   

Education

- University of Connecticut School of Law  (J.D.)

- cum laude

- University of Connecticut School of Business  (M.B.A.)

- cum laude

- Duke University  (B.S.)

Bar Admissions

- Connecticut


Michael is a Founder and Managing Principal of Soryn IP Capital Management, which which provides private credit, litigation finance and speciality IP financial solutions to owners and managers of valuable intellectual property.   Prior to Soryn IP Capital Management, Michael founded Soryn IP Group, an advisory business that closed more than $100mm in patent-centric deals and that guided the management of private and publicly traded companies with respect to intellectual property strategy.  Prior to Soryn IP Group, Michael was a partner in the IP litigation group of Kirkland & Ellis LLP.  

Michael has been recognized as a Global Leader in IP, a Patent Master and has also repeatedly been recognized as one of the Leading IP Strategists in the World.  Michael regularly speaks and publishes on the latest developments in IP monetization, policy and strategy.  He holds a B.A. in Neuroscience from Columbia University and a J.D. from the Seton Hall University School of Law, where he graduated magna cum laude and served as an editor of the law review.


Rebecca Goldman Rudich is a patent attorney with diverse experience in electrical and mechanical technologies. Bolstered by her previous experience as an electrical engineer with the U.S. Air Force, Rebecca is uniquely able to understand the needs of clients within the electronics space.

Rebecca has over 20 years of experience counseling clients in intellectual property matters, including procurement, licensing and enforcement of patents and trademarks. Her prosecution practice is focused in the electrical and mechanical arts, including liquid crystal display devices, home appliances, software inventions, Internet systems, semiconductor devices, cellular telephone systems, cable television systems, audio amplifiers, computer memory devices, laser devices, flooring systems and injection molding.

She is a member of the firm’s Post Grant Proceedings practice, with extensive experience in reexamination proceedings at the U.S. Patent and Trademark Office.

In addition, Rebecca counsels clients in portfolio management, technology transfer and licensing matters. She has engaged in a wide variety of enforcement actions in the areas of liquid crystal displays, optical discs, microprocessors, memory devices and computer hard disks, and has participated in administrative hearings before the United States International Trade Commission. She has prepared numerous infringement, validity and freedom-to-operate opinions in a variety of technologies.


Sasha Rao is Chair of Maynard Cooper & Gale's nationwide Intellectual Property Practice, which includes an experienced team of IP lawyers and professionals located in San Francisco, New York, Los Angeles, Huntsville, and Birmingham. Sasha is a seasoned intellectual property lawyer with an established record of success for some of the world's leading companies.

Sasha regularly leads intellectual property and commercial litigation for her clients, including cases involving patents, trademarks, copyrights, trade secrets, unfair competition, and complex commercial disputes. Sasha has tried cases in district courts throughout the U.S. Her strong science background in physics has enabled her to develop effective courtroom strategies for cases involving technologies ranging from pharmaceuticals, medical devices, and biotechnology to computers, Internet, and software. In the technology realm, Sasha has defended some of Silicon Valley’s leading companies in cases brought by competitors and non-practicing entities. In the realm of life sciences, Sasha has extensive experience in Hatch-Waxman/ANDA litigation and has represented generic and branded pharmaceutical companies in numerous patent cases.

Sasha also advises clients on corporate, transactional, policy and regulatory matters, including IP aspects of mergers and acquisitions. Sasha's enthusiasm for cutting-edge technologies has led to her being recognized as one of the leading practitioners in the emerging field of autonomy and robotics systems, including autonomous vehicles, drones, and UAVs, urban air mobility, and connected and artificially intelligent systems. Her legal subject matter expertise includes regulatory, policy, intellectual property, data rights, and legal strategy.

Sasha is registered to practice in the United States Patent and Trademark Office. She also represents clients in Patent Office trials, including covered business method (CBM) and inter partes review (IPR) post-grant invalidity challenges available under the America Invents Act.

Chambers USA recognized Sasha in 2020 as a Leading Individual in Intellectual Property: Patent. She was also named by the Daily Journal in 2020 as one of California’s Top Intellectual Property Lawyers (having previously received this recognition in 2019 and 2013) and in 2019 as one of California’s Top Women Lawyers and Top Artificial Intelligence Lawyers. Sasha was selected as an Intellectual Property Trailblazer for 2019 by the National Law Journal. The Recorder has recognized Sasha as one of the “Women Leaders in Tech Law” four times (2013, 2014, 2017 and 2018).


Recognized as one of the top patent educators in the United States, John has over 30 years experience in all phases of the patent field. As a Director at Soryn, John is principally responsible for outreach to the technology community and advising Soryn clients on a host of strategic issues.

John began his technical career as a Field Engineer with the Federal Highway Administration specializing in bridge rehabilitation. Later, he worked as a Patent Examiner and the Special Assistant and Speech Writer to the Commissioner of Patents, Donald J. Quigg. Post law school, John founded what would become the largest patent searching and documentation entity in the U.S., supplying the needs of clients across the globe. He also founded the patent law firm, Berenato & White, and a patent education company. After selling the education company to the Practising Law Institute in the mid-90’s, John remained the author and principal lecturer for the course he created.

Since 1995, John has taught 25,000+ fellow patent practitioners in preparation for the Patent Office registration exam. He has also taught more than 400 Patent Examiners patent law and evidence, and has been qualified as a Patent Procedure Expert in several Federal District Court lawsuits. In addition, John served as an Adjunct Professor for the University of Virginia School of Law, and John Marshal Law School and has created numerous patent education programs and publications.

John has examined, written, and prosecuted thousands of patent applications in the United States and around the world.

Born in Bern, Switzerland, John graduated in Civil Engineering from Virginia Tech, and obtained his law degree from George Washington University. He regularly speaks and publishes on a host of patent topics.


Since January 3, 2007 when he retired from the USPTO, Robert (Bob) Spar has been actively providing advice, consultation and training services to the patent bar about patent practices and Office procedures, including, in particular, about recent examination related notices/initiatives, and proposed/final rule changes by the USPTO. He has provided such specialized consultant services via presentations and training workshops, with follow-up e-mails, to patent intellectual property organizations, individual attorneys, patent departments of major corporations and leading patent law firms; and to the patent community in general via presentations at Annual Patent Law conferences and telephonic Hot Topic Briefing webinars for the PLI. He has taught for the PLI in its bar review course, its program on Reissue and Reexamination Strategies and Tactics with Concurrent Litigation, and in its annual PLI programs on prior art/35 USC 102/103.  He also served as an expert witness in patent litigation matters, and provided legal and technical consultation services on reissues, reexamination requests, and patent procedures, practices and issues.

Prior to his retirement on January 3, 2007, Bob had nearly 40 years of service at the USPTO. For the last 11 years, Bob was the Director of the Office of Patent Legal Administration (OPLA, formerly SPLO), under the Deputy Commissioner for Patent Examination Policy. Bob, with OPLA, played a significant and leading role in developing and implementing many major Office rule makings and policy initiatives involving the patent process, and greatly affecting the patent corps and all patent practitioners.

During his tenure in the Office, Bob served in a number of capacities in Patents, holding the titles of Primary Examiner, Supervisory Patent Examiner (SPE), and Special Programs Examiner (SPRE); serving on details to the Solicitor’s Office, the Board of Appeals and Interferences; and in 1978, he was selected for a 1 year Commerce Science and Technology Fellowship to the White House.

He taught extensively at the Patent Academy (including numerous patent examiner initial training (PEIT) sessions, and on 35 U.S.C. 103 – Obviousness); he made many training and informational presentations to examiners, technical support staff, and top patents management; and he made a large number of presentations on proposed, existing and revised PTO practices and policies to state and city patent bar organizations, at conferences of intellectual property organizations, and for the PLI. He helped to create the Form Paragraph manual of the Manual of Patent Examining Procedure (MPEP), and served as its editor for many years.

He received a BME from Rensselaer Polytechnic Institute in 1962, a LLB from University of Baltimore in 1969, is a member of the Maryland Bar, AIPLA, registered to practice before the USPTO, and is admitted to the CAFC.