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Patent Eligibility, Prior Art and Obviousness 2015: Current Trends in Sections 101, 102 and 103


Speaker(s): Aaron B. Bernstein, Annemarie Hassett, Benjamin C. Hsing, John M. White, Michael W. O'Neill, Rebecca Goldman Rudich, Robert J. Spar
Recorded on: Jun. 15, 2015
PLI Program #: 59929

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 17-year veteran of the United States Patent and Trademark Office (USPTO), Michael O'Neill brings his seasoned experience as an administrative patent judge for the Board of Patent Appeals and Interferences—the predecessor to the Patent Trial Appeal Board (PTAB)—to Dentons as a member of the Firm’s robust Intellectual Property and Technology practice. 

Michael’s experience derives from his work involving PTAB post-grant proceedings, including inter partes reviews (IPR), transitional covered business methods (CBM), post-grant reviews (PGR) and derivations. He has been involved in numerous post-grant proceedings, representing both petitioners and patent owners. Michael is adept at counseling in-house senior management and chief IP counsel, outside litigation counsel and expert witnesses to develop effective legal strategies. As a judge, he authored more than 300 reported board opinions spanning diverse subject matters. During his judicial appointment, Michael developed a strong background in appeals involving biomedical, mechanical, electrical, chemical and business method technologies.

Michael’s unique skills center largely upon his more than two decades of work in the field, translating to an in-depth knowledge of what it takes to survive as a patentee in today’s competitive market economy. He has leveraged vast IP portfolios for global clients through countless design-arounds, reverse-engineering and strategic licensing. Michael is also comfortable marrying legal risks and rewards together with business objectives, relying on shrewd judgment calls and meticulous skills taught through years of work dissecting complex legal issues. 

Through his experience as a patent judge, and his years at the USPTO, Michael can advise on matters involving patent litigation strategies, validity, patent as well as trademark practice and procedure. He works with lead litigation counsel to draft and review claim charts, invalidity contentions, arguments for claim construction and summary judgment; depose and defend expert witnesses; and address all aspects of document review. He coaches litigation counsel in mock trial and appellate settings to make arguments stronger. Michael also provides expert witness services for USPTO patent practice and procedure, and is available to render his valuable expert services.


A patent litigator possessing experience with a range of technologies, Ben Hsing focuses his practice on the enforcement of patent rights in the life sciences industry, with a concentration in Hatch-Waxman ANDA-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. Ben is also experienced in conducting intellectual property due diligence investigations in connection with acquisitions and licensing deals. Ben is always deeply involved in his clients' matters, ensuring that he understands all aspects of their businesses and the cases at hand so that he will be able to fully identify, dissect and solve the potential challenges facing his clients.

According to Chambers USA 2014, Ben is a “favorite of high-profile branded drug companies.” He is an active member of the legal community and frequently speaks on topics involving intellectual property and litigations.


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, registered to practice before the USPTO, and is admitted to the CAFC.


Aaron Bernstein is Vice President for IP Litigation & IP Transactions, and Product Groups Legal Counsel for Zebra Technologies Inc.  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 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-Elect and serves on the board of the New York Intellectual Property Law Association (NYIPLA), is Board Liaison to the NYIPLA’s Legislative Action Committee, and is a member of the Honorable William C. Conner Inn of Court. Anne is Of Counsel to Amster, Rothstein, & Ebenstein, LLP. Anne is also a research scholar at NYU School of Law, with a particular interest in how diversity enhances innovation.