Patent Grants in a Post-Alice Landscape Explored
Since the 2014 US Supreme Court decision on Alice Corp. v. CLS Bank, the U.S. Patent and Trademark Office (USPTO) has become much more strict when evaluating patent eligibility for certain types of computer-implemented inventions. The Alice decision severely affected software patent applications, such that the USPTO began issuing Section 101 rejections based upon Alice where no previous subject matter eligibility rejection had been raised--and the USPTO even withdrew allowances for some applications. The Alice decision created an alarming landscape for the larger patent world as well, calling into question the validity of many existing software-based patents.
Now, more than two-and-a-half years since Alice came down, the USPTO has developed substantive guidance based upon a continuously-evolving body of Section 101 case law, that enables both practitioners and examiners to take a more nuanced approach in determining patent eligibility and arguing matters before the Office. While some pieces of the Alice puzzle have been filled in, the path forward for software-based patent applications and patents remains fraught with uncertainty.
In this two-hour LIVE Webcast, a panel of distinguished professionals and thought leaders assembled by The Knowledge Group will discuss significant and timely developments surrounding patent grants and disputes following the Alice decision. They will provide an in-depth analysis of the innovations and adjustments the software industry has used following the decision with respect to prosecuting software patents at the USPTO. The speakers will also offer best practices for patent holders, applicants, and their counsel to navigate existing Alice rejections, reduce the risk of such rejections for newly-filed applications, and defend against eligibility challenges after issuance.
Key topics include:
- Overview of the 2014 US Supreme Court Decision on Alice Corp. v. CLS Bank
- Analysis of significant post-Alice case law, including the Federal Circuit decisions in DDR, Enfish, BASCOM, McRO, and Amdocs
- Impacts of Alice on:
- Patent Issuance Rates at the USPTO
- Patent Portfolio Strategy & Development
- Protection from Infringers
- Company Value
- Practical Guidance on Drafting Responses and New Applications that Conform To 101 Precedent (PTAB and Courts)
- Steps in Assessing Eligibility for Software Patents
- Trends at the PTAB and District Courts
Joseph A. Capraro Jr., Partner & Boston Office Head
Patrick J. Niedermeier, Patent Counsel
- Alice set forth a two-part test for determining the patent eligibility of software-based inventions: (1) are the claims directed to an abstract idea; (2) if so, do the claims contain an inventive concept sufficient to ensure that the claims amount to significantly more than the abstract idea?
- Subsequent Federal Circuit cases have defined the contours of the Alice test in finding claims patent-eligible:
- DDR found claims directed to generating a composite web page patent eligible under Step 2 of the Alice test.
- Enfish found claims directed to a self-referential database structure patent eligible under Step 1 of the Alice test.
- BASCOM found claims directed to filtering internet content using a remote, customizable filter patent eligible under Step 2 of the Alice test.
- McRO found claims including specialized computer animation transition rules patent eligible under Step 1 of the Alice test.
- Amdocs found claims for a distributed IP network traffic monitoring and billing architecture patent eligible under Step 2 of the Alice test.
- With the list of Federal Circuit cases finding patent eligible subject matter continuing to grow, applicants can use the cases (and PTO guidance on the subject) for new and pending matters.
- New applications:
- Describe invention using a technical problem – solution approach.
- Illustrate how existing art is technically deficient.
- Include hardware/software specifics – algorithms, devices, networking, memory, data structures, pseudocode—and identify corresponding benefits.
- Explain how output or results of software process are applied to or otherwise affect the operation of downstream systems or devices.
- Frame subject matter to avoid buzzwords that may raise eligibility questions.
- Pending applications:
- Try to analogize claims to one or more of the Federal Circuit decisions.
- Time to file appeal? Law on §101 will keep evolving.
- Consider filing a CIP to include additional technology if possible.
- New applications:
James Abe, Senior Attorney
Alston & Bird LLP
- Challenges under 101 at the PTAB
- USPTO’s response to Fed. Cir. cases (e.g. Enfish, McRO)
- PTAB’s interpretation of financial product/service for CBM review
- Common pitfalls for petition
- Challenges under 101 at the district court
- Timing of challenge
- How to define the abstract idea
Who Should Attend:
- Patent Holders
- Patent Applicants
- Software Companies
- Patent Licensing Attorneys
- Patent Consultants
- Patent Litigators
- Corporate Counsel
- In-house Counsel
- Other Related and Interested Individuals
James Abe is a senior associate on Alston & Bird’s Intellectual Property Team. He focuses his practice on patent, trade secret, and trademark disputes. He represents a wide range of cutting-edge technological companies through the full gamut of intellectual property litigation, including patent litigation in federal district court and at the ITC, post-grant Patent Office proceedings, and international patent litigation. James is fluent in Japanese and counsels many Japanese companies about U.S. intellectual property law and regularly represents Japanese companies in court and before the USPTO. James earned his J.D., cum laude, from the University of San Diego School of Law, where he served as a member of the San Diego Law Review and received the CALI award in Patent Law. He earned his B.S. in Chemistry from the University of California, Irvine.
James Abe is a senior associate on Alston & Bird’s Intellectual Property Team. He focuses his practice on patent, trade …
Joseph A. Capraro is a partner in the Patent Law and Intellectual Property Groups. He is an experienced patent prosecutor and strategist, aggressively pursuing patent and trademark protection on behalf of his clients in technology fields often crowded with existing patents. Over the course of his career, Joe has developed broad experience in connection with the protection and enforcement of intellectual property rights. He provides clients with practical legal advice across the entire spectrum of intellectual property areas, including strategic intellectual property portfolio development, patent and trademark prosecution, technology licensing, intellectual property due diligence in corporate transactions, and intellectual property litigation support. His clients include private and public emerging technology companies as well as technology start-ups. Joe spends much of his time working with companies having product offerings in the engineering arts, with particular emphasis on financial services software and systems, plasma devices, semiconductor equipment, medical devices, power supplies, multimedia, and telecommunications.
Joseph A. Capraro is a partner in the Patent Law and Intellectual Property Groups. He is an experienced patent prosecutor …
Patrick J. Niedermeier is Patent Counsel in Proskauer’s Litigation Department and Intellectual Property Group. Patrick assists clients in obtaining and enforcing intellectual property rights both in the U.S. and abroad. He represents clients from large corporations to start-up entities before the U.S. Patent and Trademark Office. He is experienced in all phases of patent prosecution, including prioritized examination, provisional filings, continuation practice, appeal briefing, design patents and foreign patent strategy. He also has prosecuted several trademark filings to registration. In addition, Patrick represents corporate clients throughout the complex patent litigation process, including pre-suit investigations and client counseling; negotiating discovery disputes; drafting claim construction, summary judgment, expert, and pre- and post-trial briefs; assisting with trial preparation; and participating at trial. He also has assisted with preparing appellate briefs for submission to the Federal Circuit. Patrick’s work spans a broad range of technology sectors that include network security, wireless communications, telecommunications and telephony devices, video conferencing, mobile computing, weather and greenhouse gas instruments, optical discs, video compression and on-demand streaming, 3D image processing, machine vision, RFID/NFC technology and financial services software, as well as life insurance annuity products.
Patrick J. Niedermeier is Patent Counsel in Proskauer’s Litigation Department and Intellectual Property Group. Patrick assists clients in obtaining and enforcing …
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About Alston & Bird LLP
Intellectual property is the lifeblood of many businesses in today’s competitive markets. Since the dawn of intellectual property as a specialty legal practice, Alston & Bird has been there to assist clients with identifying, protecting, managing and defending a myriad of intellectual property assets. From patent, trademark and copyright assets to trade secret, data privacy and domain name issues, Alston & Bird’s lawyers are versed in all nuances of intellectual property law today. With a national practice of over 160 attorneys and patent professionals dedicated solely to the practice of IP law, our breadth and depth of expertise have earned us global acclaim for many years. Alston & Bird’s IP practice is recognized as a leader in providing exceptional client value and client service.
Proskauer is a global law firm recognized for its excellence both in practicing law and serving clients. We are trusted advisors to many of the world’s top companies, financial institutions, investment funds, not-for-profit institutions, governmental entities and other organizations across industries and borders. With 700+ lawyers in 13 offices and approximately 50 areas of practice, we have the capabilities, experience and creativity to guide our clients through their most important legal and business challenges.