Section 112 Issues in IPR Proceedings: Using Section 112 as a Sword or a Shield

Addressing Section 112 Issues in IPR Petitions, Establishing Priority or Earlier Critical Date of Asserted Reference, and More

Recording of a 90-minute premium CLE webinar with Q&A


Conducted on Thursday, February 14, 2019

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Program Materials

This CLE webinar will provide guidance on Section 112 issues that arise during an inter partes review (IPR) proceeding. The panel will address the PTAB's response to assertions that claims do not comply with 112 and will discuss related claim construction issues. The panel will offer best practices for handling 112 issues in IPRs.

Description

In IPRs, petitioners may only challenge the validity of issued claims based on anticipation (Section 102) or obviousness (Section 103) grounds. Thus, petitioners may not present challenges based on Section 112. Nevertheless, Section 112 issues often arise during an IPR proceeding, such as when the Patent Trial and Appeal Board (PTAB) construes a claim at issue in an IPR.

The written description requirement is also relevant to determining priority. In some circumstances, the PTAB must determine a patent claim's priority date in connection with determining whether the claim is patentable over the asserted prior art. To make the priority determination of the claim in question, the PTAB must decide if the priority application provides written descriptive support for the claim under 112(a)/first paragraph.

Section 112 requirements play a role in the PTAB’s consideration of motions to amend. Also, in limited circumstances, the PTAB may construe claims to preserve their validity if the claims are interpreted under the Phillips claim construction standard.

After SAS Institute, if the PTAB decides to institute trial, the PTAB must institute with respect to all challenged claims, including claims that could potentially be indefinite under Section 112. This raises strategic considerations of whether IPR challenges are best suited for claims that may be indefinite.

Listen as our authoritative panel of patent attorneys discusses 112 issues that often arise during an IPR proceeding. The panel will address responses by PTAB panels to assertions by IPR petitioners that claims do not comply with 112 and factors to consider when deciding whether to challenge claims in an IPR that might be invalid under 112. The panel will also discuss related claim construction issues, including meeting the claim construction requirements for means-plus-function claims in IPR petitions and requirements for establishing priority of invention from earlier applications or patents. The panel will offer best practices for handling Section 112 issues in IPRs.

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Outline

  1. PTAB responses to assertions made by IPR petitioners that claims do not comply with Section 112
  2. Factors to consider when deciding whether to challenge claims in an IPR that might be invalid under 112
  3. How are Section 112 issues addressed by the PTAB treated in counterpart district court litigations?
  4. Claim construction
    1. Meeting the claim construction requirements for means-plus-function claims in IPR petitions
    2. Claim construction standards in IPRs vs. district courts and how they impact 112 considerations
    3. Requirements for establishing priority of invention from earlier applications or patents
    4. Requirements for establishing an earlier critical date of an asserted reference
    5. Requirements for antedating an asserted reference

Benefits

The panel will review these and other key issues:

  • How has the PTAB responded to assertions made by IPR petitioners that claims do not comply with Section 112?
  • What must patent owners show to establish priority to an earlier application or antedate an asserted reference?
  • What must IPR petitioners show to meet the claim construction requirements for means-plus-function claims under Section 112(f)/sixth paragraph?
  • How does the PTAB weigh prior determinations concerning priority made during prosecution or a patent challenged in an IPR?

Faculty

Bowser, Jonathan
Jonathan R. Bowser

Senior Patent Counsel
Unified Patents

Mr. Bowser prepares and litigates post-grant proceedings before the PTAB, and manages litigation, appeals, licensing...  |  Read More

Lee, Roger
Roger H. Lee

Shareholder
Buchanan Ingersoll & Rooney

Mr. Lee focuses his practice on many areas of intellectual property law, with a special emphasis on inter partes...  |  Read More

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