Essential Developments in Patent Subject Matter Eligibility: What Lies Ahead in 2017?
As patentable innovations continue to flood industries, recent developments surrounding the law of subject matter eligibility have made obtaining and defending patents increasingly difficult. In this LIVE Webcast, a seasoned panel of thought leaders and professionals brought together by The Knowledge Group will provide the audience with an in-depth analysis of the fundamentals as well as essential developments in Patent Subject Matter Eligibility.
Key topics include:
- Patent Subject Matter Eligibility - Laws and Regulations
- Judicial Framework for Determining Patentability
- The 2016 Subject Matter Eligibility Cases
- Recent Court Decisions
- Recent Trends, Developments and Updates
Mark Thronson, Partner
Blank Rome LLP
- Analysis of the Alice test, with emphasis on part one: abstract idea
- Review of recent interpretations by Federal Circuit, concerning software patents
Robert McFarlane, Partner
Hanson Bridgett LLP
- The search for a descriptive and universal definition of patentability under Alice has been elusive, and there is no single, succinct, usable definition or test to decide whether something is patentable under Alice.
- Early decisions in the Federal Circuit in such cases as DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), and Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed.Cir. 2016) (which found for patentability), and Digitech Image Techs., LLC v. Elecs. For Imaging, 758 F.3d 1344 (Fed.Cir. 2014), Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’s Ass’n., 776 F.3d 1343 (Fed. Cir. 2014), and In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607 (Fed.Cir. 2016) (which found against patentability), offer useful guideposts.
- A growing body of cases, for example Amdocs v. Openet Telecom, 841 F.3d 1288 (Fed.Cir. 2017), test patentability under Alice by reciting features previously found patentable and then comparing the claims at issue to the subject matter in prior cases. Under this approach, a claim will be patentable if it is more similar to subject matter previously found to be patentable than it is to claimed inventions that were previously found to be non-patentable.
- Thus, while the Federal Circuit has not yet created a simple rule to be applied in all cases, this common-law approach is developing a body of case law that creates a framework for analysis and that leaves room for creative advocacy for both the patentee and the accused infringer.
Fang Xie, Of Counsel
Greenberg Traurig, LLP
- Analysis of cases and USPTO guidelines, focused on life sciences, e.g. natural products
Alison Maddeford, Partner
Riley Safer Holmes & Cancila LLP
- Practical takeaways from federal cases and USPTO guidelines
Who Should Attend:
- IP Attorneys & Consultants
- Patent Attorneys
- Patent Licensing Attorneys
- Patent Litigators
- In-house Counsel
- Patent Holders
- Patent Consultants
- General Counsel
Fang Xie, Ph.D., co‐leads the Biotechnology and Pharmaceutical Group at global law firm Greenberg Traurig LLP. Recently listed in IAM Strategy 300 – The World’s Leading IP Strategists, Fang focuses her practice on life sciences and technology‐driven transactions involving the establishing, licensing, sharing, development and monetization of various intellectual property rights. She has broad experience in worldwide patent and trademark portfolio development, intellectual property due diligence, licensing and technology transfer, patentability and product clearance studies, patent infringement and validity analyses, freedom to operate evaluations, as well as intellectual property litigation and pre-litigation counseling.
Prior to entering the field of law, Fang conducted her doctoral research at MIT, in the laboratories of Nobel Laureate H. Robert Horvitz and U.S. National Academy of Sciences Member Terry Orr-Weaver. At MIT, she investigated programmed cell death, developmental DNA replication, and gene amplification. She also received post-doctoral training at the Whitehead Institute for Biomedical Research in the areas of genomics, epigenetics, small RNA, and cancer biology. Prior to attending MIT, she had experience studying neuron regeneration and chromosomal evolution.
Fang can be reached at email@example.com.
Fang Xie, Ph.D., co‐leads the Biotechnology and Pharmaceutical Group at global law firm Greenberg Traurig LLP. Recently listed in IAM …
Robert A. McFarlane is a registered patent attorney, litigation partner with more than 20 years of experience representing clients in high-stakes, complex cases involving emerging and cutting edge technologies. Rob serves as co-chair of Hanson Bridgett’s Intellectual Property Practice and focuses his practice on patent litigation, intellectual property, and technology-related disputes and counseling. He is a Stanford-educated engineer who has litigated patent infringement matters involving a wide array of technologies in courts throughout the country. He is experienced in both bench and jury trials, arbitrations, and has argued cases in the Federal Circuit and California Courts of Appeals. Rob has been teaching patent law and patent ligation as an adjunct professor at Golden Gate University School of Law since 2008.
Prior to joining Hanson Bridgett in 2011, Rob spent the majority of his career as a litigation partner and patent litigator with Townsend and Townsend and Crew LLP.
Robert A. McFarlane is a registered patent attorney, litigation partner with more than 20 years of experience representing clients in …
Mark Thronson is a partner in Blank Rome’s Intellectual Property and Technology Group. Mark has thirty-four years of successful experience in virtually every aspect of patent law, including patent litigation, patent post-grant proceedings, patent prosecution, opinions/counseling, patent licensing, and alternative dispute resolution. Mark represents many of the world’s most important companies in a wide range of technologies.
From 1982 to 1988, Mark was an examiner at the U.S. Patent and Trademark Office. From 1994 to 2009, Mark was an adjunct professor at Johns Hopkins University, where he taught intellectual property law to graduate business students. In 2013, he received the prestigious Burton Award for distinguished legal writing. Mark received his undergraduate degree in civil engineering; he received his law degree, with honors, from George Washington University.
Mark Thronson is a partner in Blank Rome’s Intellectual Property and Technology Group. Mark has thirty-four years of successful experience …
Alison L. Maddeford is a litigator with more than a decade of experience representing clients in high-stakes, complex patent cases in a number of industries, including software, ecommerce, medical devices and pharmaceuticals. Alison focuses her practice on intellectual property litigation and counseling, with particular focus on patent disputes. She has represented clients both jury and bench trials in courts around the country, as well as before the Federal Circuit, Ninth Circuit and the California Court of Appeals.
Alison L. Maddeford is a litigator with more than a decade of experience representing clients in high-stakes, complex patent cases …
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Method of Presentation:
Experience in patent law
NASBA Field of Study:
Business Law - Technical
NY Category of CLE Credit:
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About Greenberg Traurig, LLP
Greenberg Traurig, LLP (GTLaw) has more than 2,000 attorneys in 38 offices in the United States, Latin America, Europe, Asia and the Middle East and is celebrating its 50th anniversary. A single entity worldwide, GTLaw has been recognized for its philanthropic giving, was named the second largest firm in the U.S. by Law360 in 2016, and among the Top 20 on the 2016 Am Law Global 100. Web: www.gtlaw.com Twitter: @GT_Law.
About Hanson Bridgett LLP
Founded in 1958, Hanson Bridgett is a full-service law firm with more than 150 attorneys based in California with offices in San Francisco, the North Bay, Sacramento, the East Bay and Los Angeles. Hanson Bridgett’s clients range from Fortune 500 corporations and global companies to governmental entities and regional businesses to individuals. Hanson Bridgett are a certified B Corp and prides itself on its mission of socially responsibility, commitment to diversity, charitable giving, pro bono legal work and hands-on service. More information on Hanson Bridgett can be found at www.hansonbridgett.com.
About Blank Rome LLP
By listening to general counsel, business leaders, and entrepreneurs, and anticipating their needs, Blank Rome LLP has provided exceptional service to clients for seventy years. Blank Rome has become one of America’s largest and most successful law firms by adding leading talent and new practice areas to handle critical client matters.
The firm’s eighty-plus intellectual property attorneys are located in Philadelphia, Houston, New York, and Washington, DC. Blank Rome combines decades of intellectual property litigation experience, throughout the United States, and globally, with a robust prosecution, procurement, and asset management practice to devise strategies that help clients protect and maximize the value of their intellectual property assets.
About Riley Safer Holmes & Cancila LLP
Riley Safer Holmes & Cancila LLP is committed to the same principle as their IP clients: innovation. Their engagements often address managing IP portfolios, beginning with obtaining protection, through building the portfolio and determining freedom to operate, and finally protecting IP assets. Their work focuses on patent litigation, post-grant review processes before the PTO, trade secrets, trade dress, trademarks and copyrights.
They have successfully litigated and tried cases involving technical fields such as medical devices, pharmaceuticals and Hatch-Waxman, biotech, consumer products, software, hardware, semiconductors, ecommerce and mechanical devices. They have developed defense strategies against patent trolls (non-practicing entities) and expedited the process for patent reviews for specious patents.