Skip to main content

Patent Eligibility, Prior Art and Obviousness 2018: Current Trends in Sections 101, 102, and 103


Speaker(s): Aaron B. Bernstein, Annemarie Hassett, Benjamin C. Hsing, Jason T. Murata, John M. White, Rebecca Goldman Rudich, Robert J. Spar
Recorded on: Jun. 12, 2018
PLI Program #: 220044

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.


Jason T. Murata practice focuses on patent and trade secret litigation. He has been involved in all aspects of patent infringement and trade secret litigation, from pre-suit investigation to trial and appeal.

His recent experiences include a bench trial in a patent infringement action relating to a generic once-daily gabapentin product; obtaining a judgment of noninfringement in a trial relating to a generic budesonide product; obtaining denial of motion for temporary restraining order in a patent infringement action relating to generic aripiprazole drug product (Abilify®); defending patent infringement actions relating to spinal implants, antidandruff shampoo products and margarine and spread products.

Practice Areas

  • Intellectual Property
  • Patents
  • Trade Secret, Trademark & Copyright

Education

  • JD – Washington University School of Law (2002)
  • MA, Biology – Washington University (2002)
  • BS, Biochemistry – McMaster University (1999)


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.


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 (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.