HomeWebcastPatent Eligibility Determination in a Post-Alice World: Significant Updates & Developments
Online CLE Patent Eligibility CLE

Patent Eligibility Determination in a Post-Alice World: Significant Updates & Developments

Live Webcast Date: Thursday, June 29, 2017 from 12:00 pm to 1:30 pm (ET)
Intellectual Property Law (CLE)Recording

Online CLE Patent Eligibility

Join us for this Knowledge Group Online CLE Patent Eligibility Webinar. After the June 2014 Supreme Court's decision in Alice v. CLS Bank, numerous patent eligibility cases have flooded district courts, the Federal Circuit and impacted practice before the U.S. Patent Trademark Office (USPTO). Over the coming weeks and months, patent practitioners and industry anticipate a continuing number of significant patent eligibility decisions that will further reshape and remodel the landscape of patent eligibility law.

In this Webcast, The Knowledge Group has assembled a panel of key thought leaders and professionals to help the audience understand the important issues with respect to Patent Eligibility Determination in a Post-Alice landscape. Speakers will also present and analyze the recent trends and developments surrounding this significant topic, and provide practitioners practical advice in traversing Alice challenges, in both prosecution and litigation.

Key topics include:

  • Patent Eligibility in the Post-Alice Landscape
  • Recent Developments in Case Law and at the PTO
  • Litigation and Prosecution Perspectives
  • Practitioner Roadmaps
  • Opportunities and Challenges

Agenda

SEGMENT 1:
Orlando Lopez, Ph.D., Partner
Burns & Levinson LLP
  • How Alice decision precipitated a wave of patent ineligibility determinations, especially in the software industry.
  • While still there more Federal Circuit decisions of holding non-patentability, a number of decisions provide basis for arguing patentable subject matter:
    • Enfish
    • McRo
    • Rapid Litigation
    • Bascom
    • Thales Visionox
    • Trading Technologies (non-precedential-but first business method case held to be patentable subject matter)
  • The decisions provide guiding points for patent and claim drafting
  • Another approach-amend the statute
    • the IPO and the ABA have proposed changes to the 101 section of the statute

SEGMENT 2:
James J. DeCarlo, Shareholder
Greenberg Traurig
  • How federal case law has been incorporated into USPTO Examiner guidelines
    • Latest Guidelines
    • Actual implementation: Roadmap for practitioners

SEGMENT 3:
Lewis E. Hudnell, III, Founder
Hudnell Law Group PC
  • Analysis of how Federal Circuit has collapsed other sections of Patent Act (102, 103, and 112) into section 101 determinations
  • Evolution of the "how" inquiry in patent eligibility determinations and whether or not it is an appropriate inquiry.

Who Should Attend

  • Patent Attorneys
  • Intellectual Property Lawyers
  • Patent Consultants
  • Patent Licensing Attorneys
  • Patent Litigators
  • Patent Holders
  • Private Companies
  • Corporate Counsel
  • In-house Counsel
  • Other related and Interested Individuals

Online CLE Patent Eligibility

SEGMENT 1:
Orlando Lopez, Ph.D., Partner
Burns & Levinson LLP
  • How Alice decision precipitated a wave of patent ineligibility determinations, especially in the software industry.
  • While still there more Federal Circuit decisions of holding non-patentability, a number of decisions provide basis for arguing patentable subject matter:
    • Enfish
    • McRo
    • Rapid Litigation
    • Bascom
    • Thales Visionox
    • Trading Technologies (non-precedential-but first business method case held to be patentable subject matter)
  • The decisions provide guiding points for patent and claim drafting
  • Another approach-amend the statute
    • the IPO and the ABA have proposed changes to the 101 section of the statute

SEGMENT 2:
James J. DeCarlo, Shareholder
Greenberg Traurig
  • How federal case law has been incorporated into USPTO Examiner guidelines
    • Latest Guidelines
    • Actual implementation: Roadmap for practitioners

SEGMENT 3:
Lewis E. Hudnell, III, Founder
Hudnell Law Group PC
  • Analysis of how Federal Circuit has collapsed other sections of Patent Act (102, 103, and 112) into section 101 determinations
  • Evolution of the "how" inquiry in patent eligibility determinations and whether or not it is an appropriate inquiry.

Online CLE Patent Eligibility

Online CLE Patent Eligibility

Orlando Lopez, Ph.D.PartnerBurns & Levinson LLP

Orlando Lopez is a Partner in the Firm’s Intellectual Property Group. Prior to joining Burns & Levinson LLP in January 2006, he was with the firm Perkins Smith & Cohen LLP. In his practice, Dr. Lopez concentrates on helping his clients, which range from individual inventors to large multinational corporations and universities, identify and protect their intellectual property and build their patent portfolios. He applies his broad technical expertise and his experience in intellectual property to counsel his clients.

Admitted to practice law in Massachusetts, the Federal Circuit Court of Appeals and the U.S. Patent and Trademark Office, Dr. Lopez has drafted and prosecuted patent applications in diverse areas of technology such as nanotechnology, optics, quantum optics, software, business methods, telecommunications, wireless applications, electronic imaging, medical devices, mechanical and physical devices.

Dr. Lopez also has over twenty-five years of experience at various high technology companies, including Polaroid, Data General, Control Data, and Science Applications, as a technical manager, program manager, engineer and researcher. His experience spans from managing product design projects, managing complex research teams involving software, IC design, optics, mechanics and electronics to being an active researcher in areas from magnetic and optical recording and electromagnetic effects to imaging science. He has broad knowledge in a variety of engineering and physical science disciplines including physical devices, optics, software, imaging science and mechanical devices.

Online CLE Patent Eligibility

James J. DeCarloShareholderGreenberg Traurig

Jim DeCarlo is a Shareholder in Greenberg Traurig’s Intellectual Property and Technology Practice.  A registered patent attorney and Electrical Engineer, he is actively involved in virtually all aspects of intellectual property counseling. Jim started his career in the computer industry, and since transitioning to law has spent over 25 years litigating, licensing and procuring patents in the software, hardware, internet and networking space, among many others. Jim’s experience includes litigating patent matters in District Courts around the country, handling matters before the PTAB, counseling clients on the strategic use and management of intellectual property assets, and drafting infringement, validity and freedom to operate opinions. He also counsels clients on the drafting and negotiating of complex technology agreements and directs the prosecution of patent applications in areas such as networking, artificial intelligence, cloud computing, virtual and augmented reality, IoT, streaming media, electronic commerce, Internet search engines, search advertising, client/server systems, mobile and land based telecommunications, and computer software and hardware. Jim’s litigation and prosecution matters have covered other wide-ranging technology areas including semiconductors, semiconductor fabrication, pharmaceuticals, medical devices, fiber optics, cameras, injection molding, manufacturing, toys, pulp and paper, steel production, electronics and electro-mechanical devices.

Jim’s clients in the US and abroad range from start-ups with one or two key patents to giants with thousands of patents worldwide.  A frequent author and lecturer on patent law issues, he is relied on by clients to assist in protecting their most significant technology in a manner that will stand up in litigation, to defend against charges of infringement frequently brought by patent assertion entities, and to work with in-house counsel to develop processes and procedures to effectively manage worldwide patent portfolios.  Jim also maintains strategic relations with the USPTO, and has conducted hundreds of personal interview with US Patent Examiners to more rapidly move his clients’ cases to allowance.

Online CLE Patent Eligibility

Lewis E. Hudnell, IIIFounderHudnell Law Group PC

Mr. Hudnell is an intellectual property attorney specializing in patent litigation.  He is committed to providing outstanding client service and to helping clients achieve favorable results in complex patent disputes.  Mr. Hudnell has served as lead counsel on numerous patent lawsuits in federal court.  Mr. Hudnell has successfully represented clients at trial and obtained numerous settlements in his clients’ favor.  He has also successfully represented clients in post-grant proceedings before the Patent Trial & Appeal Board.  Mr. Hudnell earned a B.S. in Operations Research and Industrial Engineering from Cornell University and a J.D. from the University of Pennsylvania.


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Online CLE Patent Eligibility

Course Level:
   Intermediate

Advance Preparation:
   Print and review course materials

Method Of Presentation:
   On-demand Webcast

Prerequisite:
   Experience in patent law

Course Code:
   146376

NASBA Field of Study:
   Business Law - Technical

NY Category of CLE Credit:
   Skills

Total Credits:
    1.5 CLE

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About the Knowledge Group

The Knowledge Group

The Knowledge Group has been a leading global provider of Continuing Education (CLE, CPE) for over 13 Years. We produce over 450 LIVE webcasts annually and have a catalog of over 4,000 on-demand courses.

About the Knowledge Group

The Knowledge Group

The Knowledge Group has been a leading global provider of Continuing Education (CLE, CPE) for over 13 Years. We produce over 450 LIVE webcasts annually and have a catalog of over 4,000 on-demand courses.

Burns & Levinson provides high-level, client-centric and results-oriented legal services to the firm’s regional, national and international clients. Burns & Levinson is a full-service law firm with over 125 lawyers in Boston, Providence and other regional offices, with areas of expertise in: business/finance, business litigation, divorce/family law, venture capital/emerging companies, employment, estate planning, government investigations, intellectual property, M&A/private equity, probate/trust litigation, and real estate. The firm partners with its clients to solve their business and personal legal issues in a collaborative, creative, and cost-effective way. For more information, visit Burns & Levinson at www.burnslev.com

Website: https://www.burnslev.com/

Greenberg Traurig is an international law firm with approximately 2000 attorneys and governmental affairs professionals in more than 38 locations in the United States, Latin America, Europe, the Middle East, and Asia. The firm’s attorneys help clients bridge diverse legal systems and cultures, with a focus on efficient, effective strategic advice and legal services. Greenberg Traurig’s multidisciplinary team includes lawyers who have been the chief legal officers at major multinational companies and have spent years solving real-world problems in the business, political and legal arenas.

Website: https://www.gtlaw.com/

Hudnell Law Group is a modern intellectual property law firm committed to innovating, adding value, and delivering results for its clients.  Hudnell Law Group offers a full spectrum of intellectual property legal services and develops creative solutions tailored to suit its clients’ intellectual property needs.  Hudnell Law Group employs new and alternative practices designed to enhance the value of its offerings.  Hudnell Law Group demonstrates its value by the results it achieves for its clients and its commitment to providing outstanding client service.

Website: https://www.hudnelllaw.com/

Orlando Lopez is a Partner in the Firm’s Intellectual Property Group. Prior to joining Burns & Levinson LLP in January 2006, he was with the firm Perkins Smith & Cohen LLP. In his practice, Dr. Lopez concentrates on helping his clients, which range from individual inventors to large multinational corporations and universities, identify and protect their intellectual property and build their patent portfolios. He applies his broad technical expertise and his experience in intellectual property to counsel his clients.

Admitted to practice law in Massachusetts, the Federal Circuit Court of Appeals and the U.S. Patent and Trademark Office, Dr. Lopez has drafted and prosecuted patent applications in diverse areas of technology such as nanotechnology, optics, quantum optics, software, business methods, telecommunications, wireless applications, electronic imaging, medical devices, mechanical and physical devices.

Dr. Lopez also has over twenty-five years of experience at various high technology companies, including Polaroid, Data General, Control Data, and Science Applications, as a technical manager, program manager, engineer and researcher. His experience spans from managing product design projects, managing complex research teams involving software, IC design, optics, mechanics and electronics to being an active researcher in areas from magnetic and optical recording and electromagnetic effects to imaging science. He has broad knowledge in a variety of engineering and physical science disciplines including physical devices, optics, software, imaging science and mechanical devices.

Jim DeCarlo is a Shareholder in Greenberg Traurig’s Intellectual Property and Technology Practice.  A registered patent attorney and Electrical Engineer, he is actively involved in virtually all aspects of intellectual property counseling. Jim started his career in the computer industry, and since transitioning to law has spent over 25 years litigating, licensing and procuring patents in the software, hardware, internet and networking space, among many others. Jim’s experience includes litigating patent matters in District Courts around the country, handling matters before the PTAB, counseling clients on the strategic use and management of intellectual property assets, and drafting infringement, validity and freedom to operate opinions. He also counsels clients on the drafting and negotiating of complex technology agreements and directs the prosecution of patent applications in areas such as networking, artificial intelligence, cloud computing, virtual and augmented reality, IoT, streaming media, electronic commerce, Internet search engines, search advertising, client/server systems, mobile and land based telecommunications, and computer software and hardware. Jim’s litigation and prosecution matters have covered other wide-ranging technology areas including semiconductors, semiconductor fabrication, pharmaceuticals, medical devices, fiber optics, cameras, injection molding, manufacturing, toys, pulp and paper, steel production, electronics and electro-mechanical devices.

Jim’s clients in the US and abroad range from start-ups with one or two key patents to giants with thousands of patents worldwide.  A frequent author and lecturer on patent law issues, he is relied on by clients to assist in protecting their most significant technology in a manner that will stand up in litigation, to defend against charges of infringement frequently brought by patent assertion entities, and to work with in-house counsel to develop processes and procedures to effectively manage worldwide patent portfolios.  Jim also maintains strategic relations with the USPTO, and has conducted hundreds of personal interview with US Patent Examiners to more rapidly move his clients’ cases to allowance.

Mr. Hudnell is an intellectual property attorney specializing in patent litigation.  He is committed to providing outstanding client service and to helping clients achieve favorable results in complex patent disputes.  Mr. Hudnell has served as lead counsel on numerous patent lawsuits in federal court.  Mr. Hudnell has successfully represented clients at trial and obtained numerous settlements in his clients’ favor.  He has also successfully represented clients in post-grant proceedings before the Patent Trial & Appeal Board.  Mr. Hudnell earned a B.S. in Operations Research and Industrial Engineering from Cornell University and a J.D. from the University of Pennsylvania.

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