Patentability of Software Patents: Emerging Strategies for Attorneys in 2015
The Supreme Court has unanimously invalidated a patent on a computer-implemented method of financial hedging. Although this type of software patent is common, the Supreme Court stated that many other such claims are eligible for patenting; albeit without clear elaboration of which and why. Disturbingly, the ruling is riddled with conceptual confusion that has bedeviled the courts since the early years of the software patent debate, perhaps reflecting their somewhat limited understanding of such technological issues. In support of this contention, three justices wanted to eliminate business method patents altogether. Hence, software development companies need to be aware that the courts will place stricter limits on software patents in the future.
In a two hour, live webcast, a panel of thought leaders and practitioners assembled by The Knowledge Group will discuss The Impending Death of Software Patents and the significance of the latest court decisions for the future.
Key issues include that will be covered in this course are:
- Software Patentability Framework
- Court Challenges to Software Patents
- Mayo Collaborative Services v. Prometheus Laboratories, Inc.
- Regulatory Issues and Best Practices for Patent Protection
- Patent Validity for Lawyers
- Consequences of Software Patent Restriction
- Potential Lawsuits Against Patent Infringements
- Increased Regulation
Fenwick & West LLP
- We’re in the midst of #Alicestorm: Since Alice, the courts have invalidated 78 patents, and upheld 21. In particular, courts are granting motions to dismiss—which suggests little actual respect for the presumption of validity. There are over 40 patent eligibility motions now pending (and certainly more to follow). Expect more district courts going against software and business methods.
- That this is the trend does not mean it’s correct. The Supreme Court did not hold that software or business methods were unpatentable per se. Indeed, the Court was cautious to constrain the zone of ineligibility in two ways. First, abstract ideas are not just any idea that underlies a claim, but only those that fundamental to a technology domain, and two requiring that the claim preempt the full scope of the idea. The district courts and the Federal circuit are not following this guidance. McRo (C.D. Cal) and Ultramercial (Fed. Cir) are examples.
- The majority of the Fed Cir is opposed to business method and software patents. Expect more patents to be invalidated.
- The USPTO is also acting aggressively against business method and software patents. The new Eligibility Guidance in Dec 2014 did not fundamentally address the many comments that the public submitted in response to the initial guidance memo in June. In particular, the USPTO is not requiring examiners to provide factual evidence in support of findings that a claim is not eligible.
- All that said: software patents are not dead. Patents that are being filed now will not be examined for 2-3 years. By that time, we may well have another Supreme Court case correcting the excess of the Federal Circuit. In addition, there are numerous efforts underway to address the problem through legislation. If packaged with litigation reform that makes patent troll litigation less attractive, Congress may be willing to preserve the broad scope of 101.
Masuda, Funai, Eifert & Mitchell, Ltd
- Traditional patentability analysis and why it does not apply to software patents
- Federal Circuit guidance as to what types of software claims are patentable
- Framework for determining if a software claim is patent eligible
- Pitfalls for software eligible patents
Burns & Levinson LLP
- The courts have slowly started not to invalidate some patens due to 101 problems
- The PTAB has started not to accept patentability as a reason for invalidating patents
- There is a life after ALICE
- The Alice (Mayo) Two Step
- Step One
- In step one, we look at the claim as a whole
- ask, does the claim as a whole preempt the use of a non-patentable concept
- Ask, does the claim as a whole compare to the examples given in Alice and in Bilsky
- Step 2
- Even if you feel you have argued thoroughly step one, go on and argue step two
- a claim that supplies a new and useful application is patent eligible
- Even if the claim solves a business problem, SCOTUS in Bilsky stated that business methods can be patentable. A solution of a business problem is directed to a new and useful end. By the definition of technology, it is an improvement in technology
- A computer programmed to perform a specific task is not a generic computer or general-purpose computer (see Alappat or WMS Gaming)
- MOT test (Ultramercial v. Hulu-Fed. Circ. But see Mayo-SCOTUS)
- Step One
- Ending Thoughts
Who Should Attend:
- Patent Attorneys
- Patent Consultants
- Software Developers
- IT Heads
- Technology Firms Other Related/Interested Professionals or Organizations
Robert Sachs concentrates his practice on strategic patent counseling and prosecution for software technologies. Bob has extensive experience in developing patent portfolios for companies of all sizes.
One of Bob’s areas of expertise is patentable subject matter: the question of what kinds of inventions, such as software and business methods are eligible for patent protection
He is the primary evaluator for patent pools on important audio and communications standards, including LTE, 802.11, and MPEG-4 Audio. He conducts and supervises patent evaluations in US, as well as in Europe, Asia and Latin America.
Bob received his J.D. from Yale Law School (1990), and his M.S. in software engineering from National University (1996). He earned a B.A. in philosophy and a B.A. in psychology from the University of California, San Diego (1987), where he graduated summa cum laude.
Robert Sachs concentrates his practice on strategic patent counseling and prosecution for software technologies. Bob has extensive experience in developing …
Joseph Saltiel is a registered Patent Attorney and Vice Chair of the Masuda Funai's Intellectual Property and Technology Practice Group. Repeatedly recognized as a "Rising Star" in intellectual property, clients seek his counsel on a wide range of intellectual property matters. Mr. Saltiel is also an experienced patent litigator who has achieved success at every phase of litigation. His litigation expertise extends beyond the courtroom to tribunals such as the ITC and PTO. Mr. Saltiel's practice involves counseling clients on a variety of different technologies, including network and software related technologies. Mr. Saltiel's educational background is in electrical engineering and computer science, and, prior to law school, Mr. Saltiel worked as a member of the technical staff at Bell Labs (AT&T/Lucent Technologies) developing telecommunication software.
Joseph Saltiel is a registered Patent Attorney and Vice Chair of the Masuda Funai's Intellectual Property and Technology Practice Group. …
Dr. Orlando Lopez has over twenty five years of experience at various high technology companies, including Polaroid, Data General, Control Data, and Science Applications. He concentrates his practice 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. Dr. Lopez holds a Ph.D. in electrical engineering from the University of Colorado – Boulder, and a J.D., cum laude, from the New England School of Law.
Dr. Orlando Lopez has over twenty five years of experience at various high technology companies, including Polaroid, Data General, Control …
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Specialized Knowledge and Applications
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Areas of Professional Practice
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About Fenwick & West LLP
Fenwick & West provides comprehensive legal services to ground-breaking technology and life sciences companies at every stage of their lifecycle. We craft innovative, cost-effective and practical solutions for established and emerging companies on issues ranging from venture capital, public offerings, joint ventures, M&A and strategic relationships, to intellectual property, litigation and dispute resolution, taxation, antitrust, and employment and labor law. For more than four decades, Fenwick has helped some of the world's most recognized companies become and remain market leaders.
About Masuda, Funai, Eifert & Mitchell, Ltd
Founded in 1929, Masuda Funai has grown to more than 50 legal professionals in three offices, located in downtown and suburban Chicago, Illinois and Los Angeles, California. The firm's practice focuses on representing international companies operating and investing in the United States. Whether the clients are small corporations locating in the U.S. for the first time, or established global entities, Masuda Funai's attorneys have the knowledge and experience to represent them successfully. The firm has expertise in every aspect of business, including establishing, acquiring, and financing operations; ownership, development and leasing of real estate; transfer of overseas employees to the U.S.; employment, labor, and benefits counseling; dispute resolution; intellectual property; business litigation; creditors' rights and business risk management; and structuring the distribution and sale of products and services throughout the U.S.
About Burns & Levinson LLP
Burns & Levinson is a full-service law firm with more than 125 attorneys based in Boston, with additional offices in Providence and New York, as well as in the Merrimack Valley/North Shore, Metrowest and South Shore areas of Massachusetts. The firm has grown steadily and strategically throughout the years and has become a premier law firm with regional, national and international clientele. The firm has experience in corporate law, finance, venture capital, private equity, intellectual property, labor and employment, tax, bankruptcy, real estate, design and construction, public-private partnerships, energy, environmental, business litigation, government investigations and white collar crime defense, and a large private client group, including estate planning, probate and trust litigation, divorce and other family law issues. In addition, the firm has a wholly owned subsidiary office in Montreal, Quebec, to service its Canadian clients. For more information, visit Burns & Levinson at www.burnslev.com.