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Prior Art, Obviousness, and the America Invents Act in 2012


Speaker(s): Aaron B. Bernstein, Benjamin C. Hsing, David D. Schumann, John M. White, Leonard Richard Svensson, Patrick R. Jewik, Rebecca Goldman Rudich
Recorded on: Jul. 23, 2012
PLI Program #: 35264

Patrick Jewik is a partner in the Electronics and Software Patent Prosecution Group of Kilpatrick, Townsend, and Stockton, LLP, and resides in its San Francisco office.

Mr. Jewik's practice focuses on patent prosecution and strategic patent counseling. He currently manages treams of patent prosecutors to develop the IP portfolios of both startups and large companies. He has also prepared and prosecuted patent applications in a number of technologies, including semiconductor devices and manufacturing, medical devices, electronic toys, insect repellant compositions, nanoscale materials, physical security devices, computer peripherals, biochips, bioinformatics software, and business methods and systems. He has successfully prosecuted inter partes and ex parte reexamination applications, and reissue patent applications, and has also had many of his prosecuted patents litigated.

Mr. Jewik also worked as a patent examiner at the United States Patent and Trademark Office (USPTO) where he examined patent applications directed to superconductors, semiconductors, electroluminescent devices and materials, polymers, coatings, ceramics, composite fabric materials, and circuit boards. At the USPTO, he obtained a partial signatory authority status and a masters level designation in the art of superconductor materials.

Prior to entering ttle field of law, he worked as a process engineer at IBM Corporation, where he worked in electronics manufacturing.


David Schumann is a partner in the Litigation Group of Fenwick & West LLP, a law firm specializing in high technology matters. Mr. Schumann is resident in the San Francisco office, and his practice focuses on patent and other intellectual property litigation and counseling principally relating to wireless, semiconductors, networking, telecommunications, software and Internet technologies.  Mr. Schumann has broad pre-trial and trial experience as well as significant pre-litigation counseling experience.  Mr. Schumann has also prosecuted numerous patents in these fields for leading high technology companies.

Prior to attending law school, Mr. Schumann designed and developed wireless and CANbus-networked products, mixed signal semiconductor products, and inertial guidance and navigation equipment. 

Mr. Schumann received his J.D. magna cum laude from the University of Miami in 2002 where he was an Articles and Comments Editor for the University of Miami Law Review. He is also a member of Order of the Coif.  He received his B.S. in Electrical Engineering with honors from the University of New Haven in 1990. Mr. Schumann is a member of the State Bar of California and is registered to practice before the U.S. Patent and Trademark Office.

Primary Areas of Practice: Patent Litigation
Law School: University of Miami, Miami Florida
   
 


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.


EDUCATION

George Mason University School of Law, Arlington,VA, J.D.,  November 1983 (with distinction)
University of Maryland, College Park, MD, B. S., 1975 (Specialty:  Biochemistry)

BAR ADMISSIONS

  • Virginia, 1984; California, 1999.
  • U.S. Patent and Trademark Office
  • Court of Appeals for the Federal Circuit.
  • Supreme Court of Virginia and District Courts in Virginia and California.

EXPERIENCE

Birch, Stewart, Kolasch & Birch, LLP, Partner

  • Prepared, filed and prosecuted numerous patent applications in the areas of biotechnology, biochemistry, pharmaceuticals and organic chemistry since 1982.
  • Numerous patent interferences and at all stages of the proceedings.
  • Prepared, filed and prosecuted a variety of reexamination and reissue applications.
  • Numerous appeals before the USPTO Board of Patent Appeals and Interferences.
  • Experienced in District Court patent infringement litigations.
  • Counseled clients for numerous opinions on patent validity and infringement issues.
  • Managed worldwide patent portfolios, including prosecution of applications and management of oppositions in numerous countries.
  • Conducted due diligence studies regarding corporate intellectual patent portfolios.

University of San Diego School of Law, Adjunct Professor of Law – Biotechnology Patent Law

Shlesinger, Arkwright, Garvey & Dinsmore, Arlington, VA.
Technical Assistant/Patent Searcher

Hazelton Laboratories, Vienna, VA
Technician, technical writer

Presentations and Publications

Prepared and presented numerous lectures and seminars in the United States and abroad regarding U.S. patent law. The following are examples of some recent presentations:

- July 2002 – Presentation at SRI Conference on “Patentability of Genes”
- April 2003 – Presentation at Whittier Law School IP Seminar Series on “Recent Issues in the Patenting of Life Sciences”
- April 2003 – Presentation at OCPLA Monthly Meeting on Interference Practice
- November 2003 – Presentation at OCPLA Monthly Meeting on Practical Implications of the Federal Circuit’s Decision in Festo.
- April – May 2004 – Moderator for panels speaking at Whittier Law School IP Spring Seminar Series.
- October 2004 – Presentation on Patent Claim Strategies for the United States, and Moderator for panel discussion on Reach Through Claims at FICPI Forum, Venice, Italy.
- June 2005 – Two day seminar at Helsinki Technical University, Finland on US Patent Practice.
- October 2005 – Presentation on “Non-Litigation Methods for Challenging a Competitor’s Patent”, VPP Conference, Weimar, Germany.
- October 2005 – Presentation on “Comparative Claim Drafting – Revisiting Some Old Issues with New Developments”, FICPI Forum, Lisbon, Portugal.
- September 2006  – Presentation at Orange County Patent Lawyers Association on “Pre-Appeal Brief Conferences at the USPTO”
- January 2007 – Presentations on “Electronic Filing at the USPTO” and “The USPTO Struggles with Biotech: An Update”; Patent Law  Institue 2007,  San Francisco, California.
- October 2007 – Presenation on “Post-Grant Procedures: Present and Future”, BIO IP Counsels Meeting, New York, New York.
- November 2007 – Moderate two day seminar sessions on “A Day in the Life of a 21st Century E-Office”, FICPI Forum, Seville, Spain.
- January 2008 – Presentations on “Electronic Filing at the USPTO” and “PTO/Pharma Trends – News to Report”; Practicing Law  Institue 2008,  San Francisco, California.
- June 2008 – “Prior Art & Obviousness 2008: The PTO and CAFC Perspective on Practicing Law Sections 102 & 103,  Patent Law  Institue 2008,  San Francisco, California.
- April 2009 – “Adapting to Changing IP Laws”, presentation at BIOCOM Spring IP Workshop, San Diego, California
- September 2009 – “Section 102(a) and (b) and the CAFC 2009”,  Practicing Law  Institue 2009,  San Francisco, California.
- October 2009 – “IP Challenges for Inventions Related to High Throughput Screening”, BIOCOM IP Workshop, San Diego, California
- January and March 2010 – “Reissue and Reexamination Strategies and Tactics with Concurrent Litigation”, co-chair and speaker, Practicing Law  Institue San Francisco and Chicago.
- March 2010 – “All Things Chemical and Biotechnical at the PTO”, Practicing Law  Institue, San Francisco, California.
- September 2010 - “Section 102(a) and (b) and the CAFC 2010”,  Practicing Law  Institue 2010,  San Francisco, California
- January 20101– “Reissue and Reexamination Strategies and Tactics with Concurrent Litigation”, co-chair and speaker, Practicing Law  Institue San Francisco
- February 2011 - “All Things Chemical and Biotechnical at the PTO”, Practicing Law  Institue, San Francisco, California”
- July 2011 - “Section 102(a) and (b) and the CAFC 2011” and “Impact of KSRat the USPTO”,  Practicing Law  Institue 2011,  San Francisco, California
- August 2011 – “Change Agents: Impact of US Patent Law Developments On Your Patent Portfolio Management”, Ipendo 2011 User Forum, La Jolla, California.
- October 2011 - “Prior Use and the AIA”, ”,  Practicing Law  Institue 2010,  San Francisco, California
- December, 2011 – “Impact of Patent Reform on Your Patent Portfolio”, Connect Policy Forum, San Diego, California.
- March, 2012 – “All Things Chemical and Biotechnological at the PTO”, Practicing Law  Institue 2010,  San Francisco, California
-  July,, 2012 – “Prior Art, Obviousness, and the America Invents Act in 2012”,  Practicing Law  Institue 2010,  New York and San Francisco.
- November 2012 – “Patents: Prosecution, Global View”, Intellectual Property & Licensing Workshop, San Diego Center for Systems Biology, San Diego, California
- March 2013 – “Implementing the AIA – First to File: The New 102 Timelines and Deadlines, Practicing Law  Institue 2013,  San Francisco, California
- March 2013 – “All Things Chemical and Biotech, Practicing Law  Institue 2013,  San Francisco, California

 

LEONARD R. SVENSSON, ABSTRACT

Leonard Svensson is a partner in the firm of Birch, Stewart, Kolasch & Birch, LLP and is a partner in firm’s office in San Diego, California. Mr. Svensson holds a Bachelor of Science degree in biochemistry, a juris doctorate degree in law, and is a member of the Virginia and California State bars. He has experience in all aspects of intellectual property law, including prosecution of patent applications in the United States and abroad, opposition proceedings in the EPO and Japan, infringement actions in U. S. Federal District Court, patent interferences and appeals. He also has experience counseling in patent validity and infringement issues, handling worldwide patent portfolios and conducting product clearance studies in the major markets of Europe, Japan and the United States. Mr. Svensson has particular technical expertise in the fields of biotechnology (including plant biotechnology), biochemistry and pharmaceuticals.  He has lectured frequently before both U.S. and international audiences on various aspects of U.S. patent practice.

 


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.


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.