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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

  • work Practice Area

    Patent

Date & Time
  • event Date

    Thursday, July 14, 2022

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

This CLE course will guide patent counsel on leveraging decisions by the PTAB, the CCPA, and the Federal Circuit regarding applying Section 112 written description and enablement requirements in patent cases. The panel will examine lessons from these decisions and offer strategies to overcome challenges under Section 112(a), particularly in light of the current judicial restrictive approach.

Faculty

Thomas L. Irving
Partner
Marbury Law Group

Mr. Irving has 47 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served as lead counsel in many patent interferences.

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Sharon A. Israel
Partner
Shook Hardy & Bacon

Ms. Israel focuses her practice on intellectual property law, with an emphasis in patent litigation. She has represented IP clients before trial and appellate courts, the PTAB and the International Trade Commission. Ms. Israel has litigated patents related to a variety of industries and technologies, including wireless communications, oilfield equipment, consumer electronics, chemicals and medical devices. She is a frequent speaker and writer on IP-related topics and currently serves on the Council for the American Bar Association Intellectual Property Law Section. Ms. Israel also is a Fellow of the American Bar Foundation; the Texas Bar Foundation; the Houston Bar Foundation; and the American Intellectual Property Law Association.

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Krista Aiello
Assistant General Counsel-Patents
Unilever

Ms. Kostiew is an experienced patent attorney with a demonstrated history of working in the consumer goods industry including beauty and personal care products and compositions (bars, liquids, sanitizers, shampoos, conditioners, etc.). She is skilled in Patent Prosecution, Freedom to Operate (FTO), Patent Portfolio Analysis, Patent Law, Technology Transfer, NDA/CDAs, and other aspects of Intellectual Property.

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Bridget Smith
Assistant General Counsel, Intellectual Property
Relativity Space

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Description

Patent practitioners in all technologies face 112(a) issues all the time, in examiner rejections during prosecution, patentability challenges in post-grant reviews (PGRs) before the PTAB, and validity challenges before the courts. The Federal Circuit has seemingly been raising the bar for meeting the written description and enablement requirements in recent years. Also, 112(a) written description support is required for entitlement to the priority date, so practitioners may find themselves facing 112(a) issues in inter partes reviews (IPRs) to either defend a priority date assertion of a patent claim or attack a priority date assertion of a reference raised by a petitioner. Furthermore, in motions to amend in post-grant proceedings, 37 CFR 42.121/42.221 requires patent owners to support any proposed substitute claims.

Potential written description issues include:

  • Result without means of achieving it (hope vs. plan);
  • Broad claim with little support in the specification, e.g., a genus claim with few or no species described in the specification;
  • Unsupported claim limitations;
  • Attempts to cherry-pick the original disclosure to claim narrow subject matter later discovered to be valuable;
  • Substantial claim amendments made during prosecution;
  • Priority chain support; and
  • Could a POSITA conclude with "reasonable certainty" that the patentee had "possession" of claimed invention?

Potential enablement issues include:

  • Are claims objectively enabled?
  • Routine vs. undue experimentation;
  • Proper/improper use of post-filing evidence? (can only reflect state of the art at the time of filing);
  • Priority date assertions;
  • Claims enabled throughout scope?
  • Any incorporation by reference issues?

The CCPA developed a rich body of Sect. 112 jurisprudence, which the Federal Circuit adopted as binding precedent, providing a treasure trove of arguments for practitioners. Counsel can draw on these CCPA cases and PTAB and Federal Circuit cases for guidance in presenting evidence and arguments of written description and enablement.

Listen as our authoritative panel of U.S. patent attorneys examines the lessons from recent Federal Circuit and PTAB decisions and select CCPA decisions to avoid repeating past mistakes and promote the progress of the useful arts and sciences as mandated by the Constitution.

Outline

  1. Recent Section 112(a) CAFC decisions
  2. Recent PTAB 112(a) decisions
  3. Lessons from the CCPA and early Federal Circuit decisions that reversed Sect. 112 rejections/invalidity holdings

Benefits

The panel will review these and other essential issues:

  • What lessons can patentees apply to meet the written description and enablement requirements and withstand invalidity/unpatentability challenges based on written description and enablement?
  • What steps can fix written description and enablement problems?
  • What proactive steps should patent counsel take going forward to avoid repeating past mistakes?