On April 27, 2017, Jonathan Bowser and Roger Lee, both Counsel in Buchanan’s Intellectual Property section, gave a webinar presentation on Section 112 issues that often arise during the course of inter partes review (IPR) proceedings. The webinar was titled “Navigating Section 112 Issues In IPR Proceedings - Using Section 112 as a Sword or a Shield,” and was hosted by Strafford. Jonathan and Roger addressed 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. Jonathan and Roger also discussed 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. They offered best practices for handling Section 112 issues in IPRs. Click here for a PDF of the presentation.
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