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 video webinar with Q&A
This CLE course will provide guidance on Section 112 issues that arise during an inter partes review (IPR) proceeding. The panel will address the Patent Trial and Appeal Board's (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.
- PTAB responses to assertions made by IPR petitioners that claims do not comply with Section 112
- Factors to consider when deciding whether to challenge claims in an IPR that might be invalid under 112
- How are Section 112 issues addressed by the PTAB treated in counterpart district court litigations?
- Claim construction
- Meeting the claim construction requirements for means-plus-function claims in IPR petitions
- Claim construction standards in IPRs vs. district courts and how they impact 112 considerations
- Requirements for establishing priority of invention from earlier applications or patents
- Requirements for establishing an earlier critical date of an asserted reference
- Requirements for antedating an asserted reference
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?
Jonathan R. Bowser
Haynes and Boone
Mr. Bowser focuses his practice on intellectual property law, with a special emphasis on inter partes matters before... | Read More
Mr. Bowser focuses his practice on intellectual property law, with a special emphasis on inter partes matters before the Patent Trial and Appeal Board, in federal courts, and before the U.S. International Trade Commission. He specializes in challenging and defending the validity of patents in post-grant proceedings including inter partes review (IPR), post-grant review (PGR), covered business method (CBM) review, ex parte reexamination, and reissue applications. He also specializes in client counseling including preparing opinions on validity, freedom to operate, and infringement. In addition, he assists clients in leveraging their patent rights through the evaluation, licensing and/or sale of patents.Close
Roger H. Lee
Buchanan Ingersoll & Rooney
Mr. Lee focuses his practice on many areas of intellectual property law, with a special emphasis on inter partes... | Read More
Mr. Lee focuses his practice on many areas of intellectual property law, with a special emphasis on inter partes matters before the Patent Trial and Appeal Board. He has challenged and defended patents in inter partes review (IPR) and reexamination proceedings. He is experienced with trial practice and procedure before the PTAB in post-grant proceedings under the America Invents Act. His practice includes the preparation and prosecution of domestic and foreign patent applications. He is experienced in all phases of patent prosecution, from drafting applications to appeals before the PTAB. He provides strategic counseling and opinions concerning validity, infringement and freedom-to-operate issues.Close