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
A live 90-minute CLE webinar with interactive Q&A
Thursday, April 27, 2017 (in 3 days)
1:00pm-2:30pm EDT, 10:00am-11:30am PDT
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.
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.
- 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 Section 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 Section 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 IPR petitioners must show to meet the claim construction requirements for means-plus-function claims under Section 112(f)?
Jonathan R. Bowser, Counsel
Buchanan Ingersoll & Rooney,
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,
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.
Live Webinar $297.00
Add a colleague on the same connection in the same room for only $97.00 in the shopping cart or by calling customer service.
This webinar is eligible for at least 1.5 general CLE credits.
CLE credits are not available for PR.
*In KS, OH, PA, for more than 1 attendee on the connection you must contact Strafford CLE via email or call 1-800-926-7926 ext. 35 prior to the program for special instructions.
CLE On-Demand - Streaming Video
Includes recorded streaming video of full program plus PDF handouts.
On-demand is the only recorded format recognized for CLE credits in DE, IN, KS, LA, MS, NC, OH, OK, SC, TN, VA, WI.
AK, AZ, CA, CO, CT, DE, FL, GA, HI, IA, ID, IL, IN*, KS, KY, LA, ME, MN, MO, MT, NC, ND, NH**, NJ, NM, NV, NY, OH*, OK, OR, PA, SC, TN, TX, UT, VA, VT, WA, WI, WV, WY (Note: Some states restrict CLE eligibility based on the age of a program. Refer to our state CLE Map for additional information.)
*Only available for attorneys admitted for more than two years. For OH CLE credits, only programs recorded within the current calendar year are eligible - contact the CLE department for verification.
**NH attendees must self-determine if a program is eligible for credit and self-report their attendance.
CLE On-Demand Video $297.00
Available 48 hours after the live event
Includes full event recording plus handouts (available after live webinar).
Strafford is an approved provider and self-study CLE credit is available in most states.
AK, AZ, CA, CO, CT, FL, GA, HI, IA, ID, IL, KY, ME, MN, MO, MT, ND, NJ, NM, NY, OR, PA, TN, TX, UT, VT, WA, WV, WY (Note: Some states restrict CLE eligibility based on the age of a program. Refer to our state CLE Map for additional information.)
Strafford will process CLE credit for one person on each recording.
Additional copies of a recording can be purchased at a discount. Please call Strafford Customer Service toll-free at 1-800-926-7926 ext 10 or email email@example.com to place your order.
Recorded Webinar Download $297.00
Available 48 hours after the live event
Recorded Audio Download (MP3) $297.00
Available 24 hours after the live event
DVD (Slide Presentation with Audio) $297.00
plus $9.45 S&H
Available ten business days after the live event
Registration Plus Recorded Event
Live Webinar & Webinar Download $394.00
Recorded Webinar Download Only $97.00 with Registration/Webinar Combo
Live Webinar & Audio Download $394.00
Recorded Audio Download (MP3) Only $97.00 with Registration/MP3 Combo
Live Webinar & DVD $394.00 plus $9.45 S&H
DVD (Slide Presentation with Audio) Only $97.00 with Registration/DVD Combo
Strafford webinars offer several options for participation: online viewing of speaker-controlled PowerPoint presentations with audio via computer speakers or via phone; or audio only via telephone (download speaker handouts prior to the program). Please note that our webinars do not feature videos of the presenters.
CLE Credits By State
I liked the practical insights, particularly when tied to cases the presenters had worked on.
Strafford provided an enthusiastic presentation that focused on patent practice, not theory.
David H. Vance
Vance Intellectual Property
Strafford webinars are a great service and very interesting. Well done. I look forward to future topics.
Carter Mario Injury Lawyers
The program's structure and organization was very logical and easy to follow.
Very timely. I also liked the references to current and recent suits.
Patent Law Advisory Board
Fulbright & Jaworski
Winston & Strawn
Stroock & Stroock & Lavan
Feinberg Day Alberti & Thompson
Senior IP Counsel
Strafford webinars are backed by our 100% Unconditional Money-Back Guarantee: if you are not satisfied with any of our products, simply let us know and get a full refund. For more information regarding complaints and refunds, please contact us at 1-800-926-7926 ext 10. Complaints regarding this program can be submitted via the course evaluation found in the “Thank you” e-mail at the end of the course.