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Patent Eligibility, Prior Art and Obviousness 2017: Current Trends in Sections 101, 102, and 103


Speaker(s): Aaron B. Bernstein, Annemarie Hassett, Benjamin C. Hsing, Jonathan A. Harris, Rebecca Goldman Rudich, Robert J. Spar
Recorded on: Jun. 13, 2017
PLI Program #: 186456

Ben Hsing is a partner at McGuireWoods LLP.  Ben’s practice is focused on patent litigation and counseling in the life sciences industry.  Ben is an accomplished trial lawyer, having tried numerous high-profile cases on behalf of major pharmaceutical and technology companies.  Ben is also well versed in USPTO proceedings and assists clients in post-grant and contested patent office proceedings.  In addition, Ben is experienced in conducting intellectual property due diligence investigations in connection with acquisitions and licensing deals and rendering freedom-to-operate, patentability, validity and infringement opinions.  According to Chambers USA 2014, Ben is a “favorite of high-profile branded drug companies.” Chambers USA 2018 describes Ben as “a very detail-oriented attorney.”  Ben is an active member of the legal community and frequently speaks on topics involving intellectual property and litigation.  Ben graduated with highest honors from George Washington University Law School.


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.


A patent trial lawyer with nearly two decades of experience, Jonathan Harris focuses his practice on patent litigation and contested Patent Office proceedings in the biomedical field. Clients describe Jonathan as "an excellent patent analyst" and "skilled at translating complex technical subjects into English." Jonathan has worked with industry leaders such as Actavis (now Teva), Johnson & Johnson, Par (now Endo), Thermo Fisher and Unilever. He has successfully litigated and tried cases involving products worth billions of dollars.

With experience in both patent litigation and prosecution, Jonathan seeks to separate the strongest from the weakest positions early in each case.  His approach narrows cases to what really matters at trial and helps identify unique and defensible positions others might not have considered.

Given his focus on clients’ business objectives and having earned an MBA, Jonathan also tries to see the bigger picture of every matter — not only from a legal, but also a commercial perspective.  Jonathan prides himself on counseling clients to reduce litigation risk and craft business resolutions through effective pre-trial strategies.  He also regularly provides advice on pre-litigation matters, prepares patent licenses and conducts IP due diligence.

Outside the firm, Jonathan co-founded the Janet Bond Arterton IP Inn of Court. He has also tried cases for the Commission on Human Rights and Opportunities on a pro bono basis.


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 (a member of the Rules Sub-Committee), and is admitted to the CAFC.


Anne is a skilled advocate with 30 years’ experience advising clients on complex business litigation. Her practice has concentrated on intellectual property involving a wide range of technologies, with a particular focus on pharmaceutical and medical device patent litigation, including Hatch-Waxman ANDA matters. She has handled all phases of complex litigation from inception through resolution, and has extensive jury trial experience. 

Anne works closely with clients to devise strategy and achieve business goals. Skilled at developing effective working relationships with senior executives and business units, she is able to clearly communicate the technology at issue to the fact finder in litigation. 

She has a strong commitment to the training and development of other lawyers. Anne has served in leadership roles in deposition and trial skills training programs, and made numerous CLE presentations to practitioners. 

Anne’s representations include successfully preventing Pronova Biopharma Norge AS from blocking Teva Pharmaceutical’s marketing of its generic Lovaza® product, in which Teva prevailed on appeal by invalidating the patent under the on-sale bar, and in preventing G.D. Searle and Pfizer Asia from blocking Teva’s marketing of its generic Celebrex® product, in which the district court found the patent invalid. Her other patent litigation cases include: representing Teva in all phases of Hatch-Waxman ANDA litigations involving a wide range of pharmaceuticals; Gillette on razor blade edge technology; Lucent on semiconductor technology and optical lasers; and Verizon on cellular technologies. 

Anne divides her time between the firm and NYU School of Law, where she is a fulltime Research Scholar and Executive Director of the Engelberg Center on Innovation Law & Policy.


Aaron Bernstein is Director of Bernstein IP Consulting, and previously Vice President for IP Litigation & IP Transactions, and Product Groups Legal Counsel for Zebra Technologies, Corp. Prior to Zebra’s acquisition of Motorola’s Enterprise Division which led to Aaron’s move to Zebra, Aaron was Lead Intellectual Property Counsel for Motorola Solutions, Inc., responsible for managing patent litigation for the corporation. Aaron joined Motorola when it acquired Symbol Technologies, Inc. where he held the position of Chief Patent Counsel. Prior to Symbol, Aaron served as Senior Patent Counsel for Intel, Corp. Prior to Intel, Aaron work for an earlier period at Motorola, and at the law firm of Knobbe, Martens, Olson and Bear. Mr. Bernstein attended California Western School of Law (JD, 1991), and obtained his BS in engineering at Harvey Mudd College (1987). Mr. Bernstein has also been a regular faculty for PLI’s patent bar review course.