Navigating 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 CLE webinar with Q&A


Conducted on Thursday, April 27, 2017
Recorded event now available


This CLE webinar will provide guidance on Section 112 issues that arise during the course of an inter partes review (IPR) proceeding. The panel will address the PTAB's response to assertions that claims do not comply with Section 112 and will discuss related claim constructions issues. The panel will offer best practices for handling Section 112 issues in IPRs, and explore how district courts treat Section 112 issues addressed by the PTAB in IPR proceedings.

Description

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

Written description 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 determine whether the priority application provides written descriptive support for the claim under Section 112(a)/first paragraph.

Listen as our authoritative panel of patent attorneys discusses Section 112 issues that often arise during the course of an IPR proceeding. The panel will address responses by PTAB panels to assertions by IPR petitioners that claims do not comply with Section 112 and factors to consider when deciding whether to challenge claims in an IPR that might be invalid under Section 112. The panel will also discuss related claim constructions 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.

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 Section 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 Section 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 IPR petitioners must show to meet the claim construction requirements for means-plus-function claims under Section 112(f)?

Faculty

Jonathan R. Bowser, Counsel
Buchanan Ingersoll & Rooney, Alexandria, Va.

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. 

Roger H. Lee, Counsel
Buchanan Ingersoll & Rooney, Alexandria, Va.

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.


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