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Patent Eligibility, Prior Art, Obviousness and Disclosure 2020: 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. 11, 2020
PLI Program #: 277921

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.


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, 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 ?eld 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.

Sasha was selected as an Intellectual PropertyTrailblazer for 2019 by the National Law Journal. She was also named by the Daily Journal in 2019 as one of California’s Top Women Lawyers, Top Artificial Intelligence Lawyers, and one of California’s Top Intellectual Property Lawyers (having previously received this recognition in 2013). Chambers USA named Sasha a Recognized Practitioner in the area of Intellectual Property (2018-present). Sasha’s success and talents in the IP ?eld have also earned her recognition by The Best Lawyers in America© in the area of Litigation: Intellectual Property (2017-present). The Recorder has recognized Sasha as one of the “Women Leaders in Tech Law.” four times (2013, 2014, 2017 and 2018).   She was also recognized as a “Trailblazer” by the South Asian Bar Association – Northern California (2016); an “IP Star” by Managing IP magazine (2013–2018); one of the “Top 250 Women in IP” by IP Stars (2013–2018).


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.


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.


Michael Gulliford is the Founder, General Counsel and a Managing Principal of Soryn IP Group, a patent advisory and finance firm headquartered in New York City.  Since its founding nearly five years ago, Soryn has closed more than $150 million in patent-centric deals.  In addition to its robust advisory practice, Soryn's sister company, Soryn Capital, manages one of the largest funds in the U.S. dedicated to patent litigation finance.  Michael has repeatedly been named to the list of the Leading IP Strategists in the World, and is regularly asked to speak and publish on the latest patent developments.  Prior to founding Soryn, Michael was a partner in the Intellectual Property group at Kirkland & Ellis LLP.  Michael graduated magna cum laude from the Seton Hall University School of Law and received his B.A. in Neuroscience from Columbia University.