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Prior Art and Obviousness 2014: Current Trends in Sections 102 and 103


Speaker(s): Annemarie Hassett, Benjamin C. Hsing, John M. White, Leonard Richard Svensson, Michael W. O'Neill, Rebecca Goldman Rudich, Robert J. Spar
Recorded on: Jun. 17, 2014
PLI Program #: 55375

EDUCATION

George Mason University School of Law, Arlington,VA, J.D.,  November 1983 (with distinction)
University of Maryland, College Park, MD, B. S., 1975 (Specialty:  Biochemistry)

BAR ADMISSIONS

  • Virginia, 1984; California, 1999.
  • U.S. Patent and Trademark Office
  • Court of Appeals for the Federal Circuit.
  • Supreme Court of Virginia and District Courts in Virginia and California.

EXPERIENCE

Birch, Stewart, Kolasch & Birch, LLP, Partner

  • Prepared, filed and prosecuted numerous patent applications in the areas of biotechnology, biochemistry, pharmaceuticals and organic chemistry since 1982.
  • Numerous patent interferences and at all stages of the proceedings.
  • Prepared, filed and prosecuted a variety of reexamination and reissue applications.
  • Numerous appeals before the USPTO Board of Patent Appeals and Interferences.
  • Experienced in District Court patent infringement litigations.
  • Counseled clients for numerous opinions on patent validity and infringement issues.
  • Managed worldwide patent portfolios, including prosecution of applications and management of oppositions in numerous countries.
  • Conducted due diligence studies regarding corporate intellectual patent portfolios.

University of San Diego School of Law, Adjunct Professor of Law – Biotechnology Patent Law

Shlesinger, Arkwright, Garvey & Dinsmore, Arlington, VA.
Technical Assistant/Patent Searcher

Hazelton Laboratories, Vienna, VA
Technician, technical writer

Presentations and Publications

Prepared and presented numerous lectures and seminars in the United States and abroad regarding U.S. patent law. The following are examples of some recent presentations:

- July 2002 – Presentation at SRI Conference on “Patentability of Genes”
- April 2003 – Presentation at Whittier Law School IP Seminar Series on “Recent Issues in the Patenting of Life Sciences”
- April 2003 – Presentation at OCPLA Monthly Meeting on Interference Practice
- November 2003 – Presentation at OCPLA Monthly Meeting on Practical Implications of the Federal Circuit’s Decision in Festo.
- April – May 2004 – Moderator for panels speaking at Whittier Law School IP Spring Seminar Series.
- October 2004 – Presentation on Patent Claim Strategies for the United States, and Moderator for panel discussion on Reach Through Claims at FICPI Forum, Venice, Italy.
- June 2005 – Two day seminar at Helsinki Technical University, Finland on US Patent Practice.
- October 2005 – Presentation on “Non-Litigation Methods for Challenging a Competitor’s Patent”, VPP Conference, Weimar, Germany.
- October 2005 – Presentation on “Comparative Claim Drafting – Revisiting Some Old Issues with New Developments”, FICPI Forum, Lisbon, Portugal.
- September 2006  – Presentation at Orange County Patent Lawyers Association on “Pre-Appeal Brief Conferences at the USPTO”
- January 2007 – Presentations on “Electronic Filing at the USPTO” and “The USPTO Struggles with Biotech: An Update”; Patent Law  Institue 2007,  San Francisco, California.
- October 2007 – Presenation on “Post-Grant Procedures: Present and Future”, BIO IP Counsels Meeting, New York, New York.
- November 2007 – Moderate two day seminar sessions on “A Day in the Life of a 21st Century E-Office”, FICPI Forum, Seville, Spain.
- January 2008 – Presentations on “Electronic Filing at the USPTO” and “PTO/Pharma Trends – News to Report”; Practicing Law  Institue 2008,  San Francisco, California.
- June 2008 – “Prior Art & Obviousness 2008: The PTO and CAFC Perspective on Practicing Law Sections 102 & 103,  Patent Law  Institue 2008,  San Francisco, California.
- April 2009 – “Adapting to Changing IP Laws”, presentation at BIOCOM Spring IP Workshop, San Diego, California
- September 2009 – “Section 102(a) and (b) and the CAFC 2009”,  Practicing Law  Institue 2009,  San Francisco, California.
- October 2009 – “IP Challenges for Inventions Related to High Throughput Screening”, BIOCOM IP Workshop, San Diego, California
- January and March 2010 – “Reissue and Reexamination Strategies and Tactics with Concurrent Litigation”, co-chair and speaker, Practicing Law  Institue San Francisco and Chicago.
- March 2010 – “All Things Chemical and Biotechnical at the PTO”, Practicing Law  Institue, San Francisco, California.
- September 2010 - “Section 102(a) and (b) and the CAFC 2010”,  Practicing Law  Institue 2010,  San Francisco, California
- January 20101– “Reissue and Reexamination Strategies and Tactics with Concurrent Litigation”, co-chair and speaker, Practicing Law  Institue San Francisco
- February 2011 - “All Things Chemical and Biotechnical at the PTO”, Practicing Law  Institue, San Francisco, California”
- July 2011 - “Section 102(a) and (b) and the CAFC 2011” and “Impact of KSRat the USPTO”,  Practicing Law  Institue 2011,  San Francisco, California
- August 2011 – “Change Agents: Impact of US Patent Law Developments On Your Patent Portfolio Management”, Ipendo 2011 User Forum, La Jolla, California.
- October 2011 - “Prior Use and the AIA”, ”,  Practicing Law  Institue 2010,  San Francisco, California
- December, 2011 – “Impact of Patent Reform on Your Patent Portfolio”, Connect Policy Forum, San Diego, California.
- March, 2012 – “All Things Chemical and Biotechnological at the PTO”, Practicing Law  Institue 2010,  San Francisco, California
-  July,, 2012 – “Prior Art, Obviousness, and the America Invents Act in 2012”,  Practicing Law  Institue 2010,  New York and San Francisco.
- November 2012 – “Patents: Prosecution, Global View”, Intellectual Property & Licensing Workshop, San Diego Center for Systems Biology, San Diego, California
- March 2013 – “Implementing the AIA – First to File: The New 102 Timelines and Deadlines, Practicing Law  Institue 2013,  San Francisco, California
- March 2013 – “All Things Chemical and Biotech, Practicing Law  Institue 2013,  San Francisco, California

 

LEONARD R. SVENSSON, ABSTRACT

Leonard Svensson is a partner in the firm of Birch, Stewart, Kolasch & Birch, LLP and is a partner in firm’s office in San Diego, California. Mr. Svensson holds a Bachelor of Science degree in biochemistry, a juris doctorate degree in law, and is a member of the Virginia and California State bars. He has experience in all aspects of intellectual property law, including prosecution of patent applications in the United States and abroad, opposition proceedings in the EPO and Japan, infringement actions in U. S. Federal District Court, patent interferences and appeals. He also has experience counseling in patent validity and infringement issues, handling worldwide patent portfolios and conducting product clearance studies in the major markets of Europe, Japan and the United States. Mr. Svensson has particular technical expertise in the fields of biotechnology (including plant biotechnology), biochemistry and pharmaceuticals.  He has lectured frequently before both U.S. and international audiences on various aspects of U.S. patent practice.

 


Rebecca Goldman Rudich is a Shareholder in the Washington, DC office of Vedder Price and a member of the Intellectual Property group. 

Ms. Rudich has broad experience counseling clients in intellectual property matters, including procurement, licensing and enforcement of patents and trademarks. Her patent 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.

Ms. Rudich has extensive experience in re-examination proceedings at the U.S. Patent and Trademark Office.

In addition, Ms. Rudich 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. Ms. Rudich 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.


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.


Anne Hassett joined the Engelberg Center in January 2015 following a distinguished career as a trial lawyer in complex business litigation, in particular intellectual property litigation.  Anne has been a litigator for 30 years, most recently as a senior partner in the patent litigation practice at Goodwin Procter LLP.  She was also a partner at Kirkland & Ellis LLP and a member of that firm’s intellectual property litigation practice, and she practiced at Fish & Neave.  Anne received her BS (summa cum laude) in chemistry from the State University of New York at Albany, AM in chemistry from Harvard University, and JD (cum laude) from Hastings College of the Law, University of California.  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 First Vice President and serves on the board of the New York Intellectual Property Law Association, serves as 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.  Her goal for the Engelberg Center is to facilitate the conversation between scholars, practitioners, innovators, stakeholders, and key decision makers about the law and policy that best support innovation in the 21stcentury.


Ben Hsing is a partner in the Intellectual Property group at BakerHostetler.  Ben is a patent litigator possessing experience with a range of technologies.  Ben 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.


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 (a member of the Rules Sub-Committee), and is admitted to the CAFC.