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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 BakerHostetler.  Ben is a patent litigator possessing experience with a range of technologies and focuses his practice on the enforcement of patent rights in the life sciences industry, with a concentration in Hatch-Waxman-based litigations. Ben is an accomplished trial lawyer, having tried numerous high-profile cases on behalf of major pharmaceutical and technology companies. As a former patent examiner, Ben is well-versed in USPTO proceedings and assists clients in post grant and contested patent office proceedings. He is also experienced in conducting intellectual property due diligence investigations in connection with acquisitions and licensing deals.

Ben is a graduate of Columbia University and received his J.D. from the George Washington University Law School.


Jonathan Harris is a patent lawyer with two decades of experience in all areas of patent law. He focuses his practice on contested patent proceedings and due diligence in the biomedical field. He has worked with industry leaders, including Teva, Johnson & Johnson, Endo Thermo Fisher and Unilever, and has successfully litigated and tried cases involving products worth billions of dollars.  He has also prepared patent licenses, conducted due diligence and counseled clients on freedom to operate and product launches.


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.


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.


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.


Anne Hassett joined the Engelberg Center in 2015 following a distinguished 30-year career as a trial lawyer in complex business litigation, in particular intellectual property litigation. Anne most recently was a senior partner in the patent litigation practice at Goodwin Procter LLP and previously a partner in the intellectual property practice at Kirkland & Ellis LLP. Anne received her BS summa cum laude in chemistry from SUNY Albany, AM in chemistry from Harvard University, and JD cum laude from U.C. Hastings College of the Law. Anne was editor-in-chief of the Hastings Law Review and named to the Order of the Coif and the Thurston Society. She is currently President and serves on the board of the New York Intellectual Property Law Association (NYIPLA), is Board Liaison to the NYIPLA’s Strategic Development Committee, and is a member of the Honorable William C. Conner Inn of Court. Anne is also a research scholar at NYU School of Law and an adjunct professor, teaching Life Sciences Patent Law and Innovation Externship Seminar.