Patent Eligibility: Navigating the Supreme Court’s Recent Decisions
Identifying and addressing patentable subject matter have always been a challenge for patent holders in the United States. The Federal Circuit, Patent Trial and Appeal Board (PTAB) and other federal courts have now issued a number of rulings concerning patent eligibility in light of the Supreme Court's decision in Alice Corp. v. CLS Bank and Mayo Collaborative Services v. Prometheus Labs. The opinions serve as guidance into the application of Alice Corp. and Mayo, which has influenced federal courts to invalidate hundreds of patents for computer-related and biotechnology inventions and the U.S. Patent and Trademark Office to deny patents to many applicants on similar grounds. A recent petition for a writ of certiorari in Sequenom v. Ariosa Diagnostics, if granted, may lead the Supreme Court to tweak patent-eligibility analysis yet again.
In this LIVE Webcast, a panel of key thought leaders and professionals assembled by The Knowledge Group will help the audience understand all the important issues and insights with regards to the Supreme Court’s recent decisions on patent eligibility cases, as well the resulting impact on rulings in the Federal Circuit and district courts. The speakers will present their findings and best practices in addressing patent eligibility issues in federal court and before the U.S. Patent and Trademark Office.
Key topics include:
- Patent Eligibility - Legal Framework
- Lessons from Recent Court Decisions
- §101 Inquiries
- Identifying Patent-Eligible Inventions
- Best Practices in Addressing Patent Eligibility Issues
Jo Dale Carothers, Ph.D., Shareholder
- Summary of the recent cases addressing section 101 in the high-tech, business and related fields—Alice, etc. (history up to date)
- Patentability analysis of high-tech and related inventions under the current law
- Strategies for litigation of section 101 issues from the plaintiff’s perspective and from the defendant’s perspective
Jordan Becker, Partner
Perkins Coie LLP
- DDR Holdings
- PTO Guidance on 101 issues, including useful claim examples applicable to high-tech
- Experiences with the USPTO since Alice and its progeny
- post-Alice statistics on 101 rejections
- what prosecution strategies have been working
- what prosecution strategies have not been working
Ksenia Takhistova, Attorney
Kenyon & Kenyon LLP
- Summary of the recent cases addressing section 101 in the biotech space—Myriad, Mayo, Sequenom (history up to date)
- How-to perform patentability analysis of a biotech invention under the current law
- Why the Mayo test and its current application by the Federal Circuit is damaging for the biotech industry (e.g. Sequenom, other CAFC recent examples)
- How we plan to change it going forward (see Sequenom cert petition, amicus support, Supreme Court’s decision to take/not to take the case)
Christopher L. Wight, Of Counsel
Snow Christensen & Martineau
- Practice tips from Federal Circuit and Supreme Court cases
- USPTO Guidance on Subject Matter Eligibility
- Claim drafting tips for diagnostics
Who Should Attend:
- Patent Attorneys
- Patent Consultants
- Patent Owners
- Patent Litigators
- Private and Public Companies
- In-house Counsel
- Legal Advisers
- Other related/interested Professionals and Organizations
Jo Dale Carothers is a shareholder and chair of the firm’s Intellectual Property group and a member of the Litigation group. She is an intellectual property litigator and registered patent attorney. Jo Dale advises clients on a wide range of intellectual property issues, including patents (ownership, infringement/non-infringement, validity/invalidity, patentability, and proceedings before the United States Patent and Trademark Office (USPTO)), trade secrets and copyrights. Her practice emphasizes patent and trade secret litigation, licensing, contract disputes, and issues related to proceedings before the USPTO in all fields, with a special emphasis on electronics, embedded systems and high performance computing, Wi-Fi enabled devices, energy management, microprocessors/microcontrollers, memory devices, wireless communications devices and protocols, smartphones and smart TVs (along with applications), in-home networking for computing and entertainment, consumer electronics, semiconductor process and fabrication technology, packaging, power conversion, and software for numerous applications. Jo Dale has represented companies in litigation in numerous federal district courts and state courts across the country, the Federal Circuit Court of Appeals, and in Section 337 investigations in the United States International Trade Commission (ITC).
Jo Dale Carothers is a shareholder and chair of the firm’s Intellectual Property group and a member of the Litigation …
Jordan Becker is a registered patent attorney and a partner in Perkins Coie LLP’s Intellectual Property (IP) practice. With over 20 years of experience as an attorney built upon his prior engineering experience, he counsels cutting-edge technology companies and entrepreneurs in all aspects of IP protection. He has written and prosecuted hundreds of US and foreign patent applications and focuses on developing IP protection strategies and building IP portfolios.
Jordan represents clients ranging from individual entrepreneurs and startups to multinational corporations. His experience and knowledge span numerous industries and technologies, including software, electrical/electronic hardware and mechanical devices. He has significant experience with medical devices, computer network technologies, wireless communications, virtual reality (VR) and augmented reality (AR), computer games, big data, cloud computing, storage technologies, image processing, speech recognition, geo-positioning and navigation, and IC design/fabrication.
Jordan Becker is a registered patent attorney and a partner in Perkins Coie LLP’s Intellectual Property (IP) practice. With over …
Ksenia Takhistova’s practice focuses on patent litigation. She represents clients before federal district courts, in inter partes review (IPR) proceedings at the USPTO, and at the International Trade Commission. She also handles trademark (false advertising) and trade secret disputes in federal and state courts. Drawing on her educational and professional background in both mechanical and chemical engineering fields, she represents diverse clients in automotive, mechanical device, electrical and computer, life sciences, chemical, materials, and medical device industries. Ms. Takhistova’s client representation also extends to settlement and licensing negotiations, technology transfer transactions, and internal IP evaluations in the context of due diligence and opinion work. She is an active member of New York Intellectual Property Law Association, and participated in drafting NYIPLA’s amicus brief to the Supreme Court in the patent-eligibility case Sequenom, Inc. v. Ariosa Diagnostics, Inc., No. 15-1182.
Ksenia Takhistova’s practice focuses on patent litigation. She represents clients before federal district courts, in inter partes review (IPR) proceedings …
Christopher Wight’s law practice focuses primarily on patent prosecution and strategic counseling in the life sciences and chemical sciences, specifically in the pharmaceutical, biotechnology, diagnostic/personalized medicine and medical device fields. He has practiced law for over 30 years with prominent law firms and highly successful biotechnology companies. As former Director of Intellectual Property of Immunex Corporation (acquired by Amen in 2002), Chris was responsible for Immunex’s patent portfolios covering LEUKINE and ENBREL, which is now one of the world’s highest grossing biologic drugs, with current world-wide annual revenues of approximately $8 billion. Immunex’s ENBREL product (and the strength of its patent portfolio) was the principal economic driving force behind Amgen’s $16 billion acquisition of Immunex. Chris also previously served as Vice President, General Counsel, of Myriad Genetics, where he was responsible for the development and enforcement of intellectual property relating to Myriad’s genetic testing business, including Myriad’s patents covering its BRACANALYSIS breast cancer predisposition test, which positioned Myriad to become one the preeminent genetic testing companies in the world. Chris has also spent a significant part of his career assisting internationally recognized generic drug companies evaluate and prepare legal opinions relating to the invalidity, unenforceability or non-infringement of innovator patents in support of paragraph IV patent certifications.
Christopher Wight’s law practice focuses primarily on patent prosecution and strategic counseling in the life sciences and chemical sciences, specifically …
Print and review course materials
Method of Presentation:
NASBA Field of Study:
Specialized Knowledge and Applications
NY Category of CLE Credit:
Areas of Professional Practice
Unlock All The Knowledge and Credit You Need
Leading Provider of Online Continuing Education
It's As Easy as 1, 2, 3
Get Your 1-Year All Access Pass For Only $199
About Weintraub Tobin
Great ideas take many shapes and are the impetus for great commercial endeavors. Weintraub Tobin’s Intellectual Property team works with national and global companies, start-up ventures, and individuals in all aspects of intellectual property. Experienced in a broad range of industries, including electronics, communications, software, digital media, entertainment, biotechnology, chemistry, mechanical systems, and fashion, Weintraub Tobin handles litigation and transactions involving protection, ownership, acquisition, licensing, infringement, and validity of patents, trademarks, and copyrights. The attorneys file and prosecute patent and trademark applications in the U.S. and internationally, handle disputes in the USPTO, and litigate cases in courts throughout the country.
Weintraub Tobin has a reputation for structuring cutting-edge transactions and resolving IP disputes. Large and diverse enough to deliver a powerful punch both inside and outside the courtroom, Weintraub Tobin is nimble enough to provide innovative strategies to help their clients thrive in the global marketplace. Efficient and cost-effective, Weintraub Tobin is the go-to firm for creative minds and inventive businesses.
In addition to its IP practice, Weintraub Tobin specializes in business, corporate and securities law; labor and employment law; real estate finance and transactional work; entertainment and new media; and business litigation. With offices strategically located in five cities across California, Weintraub Tobin is one of the most dynamic, fastest-growing law firms in California.
About Perkins Coie LLP
With more than 1,000 lawyers in 19 offices across the United States and Asia, Perkins Coie LLP represents great companies across a wide range of industries and stages of growth, from startups to FORTUNE 50 corporations. Perkins Coie was named Patent Law Firm of the Year for two consecutive years and National Tier 1 in IP Litigation per U.S. News - Best Lawyers® (2013, 2014). With more than 250 lawyers focused on IP litigation, patent and trademark prosecution, technology licensing, copyrights, and trade secret and unfair competition counseling, our IP practice group was also ranked by Law360 as one of the largest IP law practices in the country. Our clients benefit from our interdisciplinary approach to matters, which combines extensive legal and technical experience with strong corporate and litigation resources in a leading technology law firm.
About Kenyon & Kenyon LLP
At Kenyon & Kenyon, we partner with our clients to provide the full range of intellectual property services. We represent clients in a broad range of industries and technologies, including automotive, chemicals, computer hardware and software, financial services, food and beverage, interactive entertainment, life sciences, mechanical, media and sports, pharmaceuticals, retail, universities and research institutions, and venture capital. From our offices in New York, Washington and Silicon Valley, we serve clients in a cost-effective and efficient manner across the globe in such areas as federal court litigations; U.S. Patent Office post grant proceedings; trademark oppositions and cancellations; International Trade Commission proceedings; patent prosecution, counseling and portfolio management; trademark prosecution, counseling and portfolio management; trademark clearance; copyright counseling and licensing; trade secrets and unfair competition; brand and technology licensing and development agreements; and social media counseling. Our IP practice has received widespread recognition, having been named a Top IP Firm by such publications as Chambers USA, Legal 500, IAM 1000 – The World’s Leading Patent Practitioners, Managing Intellectual Property and World Trademark Review.
About Snow Christensen & Martineau
Founded in 1886, ten years before Utah became a state, Snow, Christensen & Martineau is among Utah’s most reputable and long-standing law firms. Among its distinguished alumni is U.S. Supreme Court Justice George Sutherland, the only attorney from Utah to serve on the U.S. Supreme Court. Currently, SCM has over 55 attorneys in a variety of legal disciplines, including intellectual property prosecution and litigation, cyber defense, business law, trials and litigation, and insurance defense.