Mr Schecter's webinar will focus on the aftermath of the Supreme Court decision in the Alice case and potential paths going forward. Mr. Schecter will begin with an examination of how the lower courts and the USPTO have reacted to the Alice decision, and then consider the possibility of additional Supreme Court jurisprudence or legislation.
This version updates the discussion of Inter Partes Review (IPRs) at the Patent Trial and Appeal Board (PTAB), improves some slides for clarity, and fixes some nits and typos.
The patent environment is constantly changing because of new laws, regulations, and court decisions. This updated presentation explains why most US patents are not worth much. The presentation takes into account recent changes while clarifying some of the major challenges in creating a valuable patent portfolio. The presentation goes on to outline the best practices that will often, but not always, overcome many potential roadblocks and impediments to creating patent value. This presentation is directed towards startups, inventors, investors, innovators, and C-level executives.
After explaining the difficulties of building a strong patent portfolio, Best Practices are discussed in some detail:
Some Assumptions Underlying Best Practices
How To Build Patent Value
Searching Matters Because
Keep the File Open at the Patent Office With A Continuation
Avoid Prior Disclosure – The On-sale Bar
File A Provisional Patent Application
Consider Foreign Filings
Work With A Registered Patent Attorney
Disclaimer: The content of this presentation shall not be construed under any circumstances, by implication or otherwise, as the giving of legal advice and/or the practice of law.
The Gannons Intellectual Property Technology seminar brings together respected professionals from the legal and commercial technology sectors.
Our seminar covers:
Tech and Software: Discover how businesses navigate, embrace and compete with the deluge of disruptive technologies.
IP Tech from a Legal perspective: Resolve the major legal challenges faced by tech firms. We share our knowledge and expertise.
IP Insurance: Intellectual property insurance needn't be expensive. We demonstrate the options available for Tech businesses.
The Speakers:
Jimmy Vestbirk - a technologist with a focus on LawTech and works with start ups.
Graham Bell - a technical consultant specialising in product development, and has extensive international experience advising clients in the creation, application and exploitation of technology with a core focus in telecommunications and consumer electronics.
Amardeep Dhillon - a barrister who specialises in IP. Amardeep is regularly instructed in matters in the High Court, Companies Court and has appeared before the Court of Appeal. He will discuss case studies on IP and Technology.
An IP Expert in ATE (after the event) and BTE (before the event) insurance solutions helping businesses to reduce their financial risks in litigation.
Patents on Software and Business Methods: Have the Rules Changed?Karl Larson
The standard for patentable subject matter under Bilski is a “machine-or-transformation test,” which restricts patenting to inventions that are either tied to a particular machine or apparatus, or that transform a particular article into a different state or thing.
This version updates the discussion of Inter Partes Review (IPRs) at the Patent Trial and Appeal Board (PTAB), improves some slides for clarity, and fixes some nits and typos.
The patent environment is constantly changing because of new laws, regulations, and court decisions. This updated presentation explains why most US patents are not worth much. The presentation takes into account recent changes while clarifying some of the major challenges in creating a valuable patent portfolio. The presentation goes on to outline the best practices that will often, but not always, overcome many potential roadblocks and impediments to creating patent value. This presentation is directed towards startups, inventors, investors, innovators, and C-level executives.
After explaining the difficulties of building a strong patent portfolio, Best Practices are discussed in some detail:
Some Assumptions Underlying Best Practices
How To Build Patent Value
Searching Matters Because
Keep the File Open at the Patent Office With A Continuation
Avoid Prior Disclosure – The On-sale Bar
File A Provisional Patent Application
Consider Foreign Filings
Work With A Registered Patent Attorney
Disclaimer: The content of this presentation shall not be construed under any circumstances, by implication or otherwise, as the giving of legal advice and/or the practice of law.
The Gannons Intellectual Property Technology seminar brings together respected professionals from the legal and commercial technology sectors.
Our seminar covers:
Tech and Software: Discover how businesses navigate, embrace and compete with the deluge of disruptive technologies.
IP Tech from a Legal perspective: Resolve the major legal challenges faced by tech firms. We share our knowledge and expertise.
IP Insurance: Intellectual property insurance needn't be expensive. We demonstrate the options available for Tech businesses.
The Speakers:
Jimmy Vestbirk - a technologist with a focus on LawTech and works with start ups.
Graham Bell - a technical consultant specialising in product development, and has extensive international experience advising clients in the creation, application and exploitation of technology with a core focus in telecommunications and consumer electronics.
Amardeep Dhillon - a barrister who specialises in IP. Amardeep is regularly instructed in matters in the High Court, Companies Court and has appeared before the Court of Appeal. He will discuss case studies on IP and Technology.
An IP Expert in ATE (after the event) and BTE (before the event) insurance solutions helping businesses to reduce their financial risks in litigation.
Patents on Software and Business Methods: Have the Rules Changed?Karl Larson
The standard for patentable subject matter under Bilski is a “machine-or-transformation test,” which restricts patenting to inventions that are either tied to a particular machine or apparatus, or that transform a particular article into a different state or thing.
Bill Hulsey Patent Lawyer - Intellectual Property - Reasons for ProtectionBill Hulsey Lawyer
Bill Hulsey Patent Lawyer outlines reasons for and benefits from identifying and protecting intellectual property with patents, trade secrets, trade marks, and company policies.
On November 30, 2010, Woodard, Emhardt attorney John Bradshaw was a featured speaker in a webinar entitled “Summary of Pitfalls and Strategies to Avoid Charges of Inequitable Conduct.” The webinar was part of the Practical Tips for Young Lawyers series sponsored by the Intellectual Property Section of the American Bar Association. Mr. Bradshaw's presentation focused on the development of the doctrine of inequitable conduct and included a summary of specific circumstances where inequitable conduct has been found. Predictions on where the doctrine may be heading and current best practices for patent prosecutors was also discussed.
This is the most common type of search invalidity contentions to determine if there is any area which has been overlooked by competitors or to determine how active the competitors are in this particular area means if a lot of patenting activities are going on in any particular area. If there is any scope to license or get license any particular technology.
Underwater Devices Dries Up - Life After In re SeagateDaniel Kent
Slides from panel discussion in September 2007 re the potential impact of the Federal Circuit\'s In re Seagate decision on opinions of counsel in patent litigation
PGRT Basics (Series: IP 301 Post-Grant Review Trials 2020)Financial Poise
This segment will discuss the statutory and procedural background of post-grant review proceedings. It will discuss the types of proceedings available and provide a high-level discussion of how the proceedings are conducted.
To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/pgrt-basics-2020/
This presentation describes history and impact of Alice decision in 2014. It also lists out key court decisions and important examples in USPTO guideline. Finally, it provides key take-aways and recommendations.
Pros and Cons: PTAB vs. District CourtsPatexia Inc.
PTAB (Patent Trial and Appeal Board) or district court? Where should I bring my patent validity challenge? Hundreds of lawyers and their clients decide every year that the PTAB is their first choice of venue to invalidate a patent. Described as a “death squad,” the PTAB does indeed offer a number of advantages over a traditional invalidity defense in court. The claim interpretation is broader; the evidentiary standard is lower; the PTAB judges are technically trained and understand very well what is legally obvious; PTAB trials are fast and less expensive than traditional court litigation; and district courts are often happy to stay a patent case pending a PTAB trial. It is not surprising that so many opt to have their patent validity challenges decided by the PTAB rather than a lay jury in eastern Texas. Yet, behind the allure of an easy, quick, cheap victory at the PTAB are serious risks for the unwary, and the PTAB is not the best venue for all validity challenges. This webinar will discuss in detail the various pros and cons of the PTAB as an alternative (and sometimes an adjunct) to district court for patent validity challenges.
Software Patents: Trolls and Other Bullies (LCA 2105)freedeb
Lots of small and medium free software projects are staffed by volunteers that don't have any money to tempt a patent aggression entity. There's been plenty of talk about patent trolls, but money isn't the only motive for a patent suit. Even if non-practicing entities are eventually curtailed, ill-intentioned practicing entities may not be affected. The free software community will still have to worry about anti-competitive suits, nuisance suits and suits designed to spread fear, uncertainty and doubt about the adoption of free software. So, what can we as free software builders, promoters and users do to protect the code we care about?
Some solutions are only effective against non-practicing entities, while others may impact all kinds of bad actors. The strengths and weaknesses of proposed legislation, recent and ongoing campaigns and academic writings will be examined. If legislators and international trade negotiators won't take a stand against anti-competitive patent aggression, then we must do so as a community. Find out about some of the community solutions that are underway and how we can combat the threat of anti-FLOSS plaintiffs together.
This document explains the issues associated with obtaining software patent authorization by the United States Patent and Trademark Office as a result of the SCOTUS decision in Alice Corporation versus CLS Bank International.
Patent Prosecution Intelligence Webinar (2019)Patexia Inc.
Adam Novick, Director of Client Solutions at Patexia provides an overview of the 2019 Patent Prosecution Intelligence Report. The webinar covers the following topics: What is in the report? How we Collect and Analyze the Data? Overview of Rankings, Press Kit and Award Badges, How Companies and Law Firms Use this Data? How to leverage your rankings? How to dive deeper into your or competitors data and better understand their business?
IPR Intelligence Webinar adam notes for 2018Patexia Inc.
Adam Novick, Director of Client Solutions at Patexia, provides an overview of the 2018 IPR Intelligence Report. The slides cover the following topics: What is in the report? How we Collect and Analyze the Data? Overview of Rankings, Press Kit and Award Badges, How Companies Use this Data? How to Leverage your Rankings? How to claim your profile?
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Bill Hulsey Patent Lawyer - Intellectual Property - Reasons for ProtectionBill Hulsey Lawyer
Bill Hulsey Patent Lawyer outlines reasons for and benefits from identifying and protecting intellectual property with patents, trade secrets, trade marks, and company policies.
On November 30, 2010, Woodard, Emhardt attorney John Bradshaw was a featured speaker in a webinar entitled “Summary of Pitfalls and Strategies to Avoid Charges of Inequitable Conduct.” The webinar was part of the Practical Tips for Young Lawyers series sponsored by the Intellectual Property Section of the American Bar Association. Mr. Bradshaw's presentation focused on the development of the doctrine of inequitable conduct and included a summary of specific circumstances where inequitable conduct has been found. Predictions on where the doctrine may be heading and current best practices for patent prosecutors was also discussed.
This is the most common type of search invalidity contentions to determine if there is any area which has been overlooked by competitors or to determine how active the competitors are in this particular area means if a lot of patenting activities are going on in any particular area. If there is any scope to license or get license any particular technology.
Underwater Devices Dries Up - Life After In re SeagateDaniel Kent
Slides from panel discussion in September 2007 re the potential impact of the Federal Circuit\'s In re Seagate decision on opinions of counsel in patent litigation
PGRT Basics (Series: IP 301 Post-Grant Review Trials 2020)Financial Poise
This segment will discuss the statutory and procedural background of post-grant review proceedings. It will discuss the types of proceedings available and provide a high-level discussion of how the proceedings are conducted.
To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/pgrt-basics-2020/
This presentation describes history and impact of Alice decision in 2014. It also lists out key court decisions and important examples in USPTO guideline. Finally, it provides key take-aways and recommendations.
Pros and Cons: PTAB vs. District CourtsPatexia Inc.
PTAB (Patent Trial and Appeal Board) or district court? Where should I bring my patent validity challenge? Hundreds of lawyers and their clients decide every year that the PTAB is their first choice of venue to invalidate a patent. Described as a “death squad,” the PTAB does indeed offer a number of advantages over a traditional invalidity defense in court. The claim interpretation is broader; the evidentiary standard is lower; the PTAB judges are technically trained and understand very well what is legally obvious; PTAB trials are fast and less expensive than traditional court litigation; and district courts are often happy to stay a patent case pending a PTAB trial. It is not surprising that so many opt to have their patent validity challenges decided by the PTAB rather than a lay jury in eastern Texas. Yet, behind the allure of an easy, quick, cheap victory at the PTAB are serious risks for the unwary, and the PTAB is not the best venue for all validity challenges. This webinar will discuss in detail the various pros and cons of the PTAB as an alternative (and sometimes an adjunct) to district court for patent validity challenges.
Software Patents: Trolls and Other Bullies (LCA 2105)freedeb
Lots of small and medium free software projects are staffed by volunteers that don't have any money to tempt a patent aggression entity. There's been plenty of talk about patent trolls, but money isn't the only motive for a patent suit. Even if non-practicing entities are eventually curtailed, ill-intentioned practicing entities may not be affected. The free software community will still have to worry about anti-competitive suits, nuisance suits and suits designed to spread fear, uncertainty and doubt about the adoption of free software. So, what can we as free software builders, promoters and users do to protect the code we care about?
Some solutions are only effective against non-practicing entities, while others may impact all kinds of bad actors. The strengths and weaknesses of proposed legislation, recent and ongoing campaigns and academic writings will be examined. If legislators and international trade negotiators won't take a stand against anti-competitive patent aggression, then we must do so as a community. Find out about some of the community solutions that are underway and how we can combat the threat of anti-FLOSS plaintiffs together.
This document explains the issues associated with obtaining software patent authorization by the United States Patent and Trademark Office as a result of the SCOTUS decision in Alice Corporation versus CLS Bank International.
Similar to Getting past alice schecter patexia (2016-02-25) (20)
Patent Prosecution Intelligence Webinar (2019)Patexia Inc.
Adam Novick, Director of Client Solutions at Patexia provides an overview of the 2019 Patent Prosecution Intelligence Report. The webinar covers the following topics: What is in the report? How we Collect and Analyze the Data? Overview of Rankings, Press Kit and Award Badges, How Companies and Law Firms Use this Data? How to leverage your rankings? How to dive deeper into your or competitors data and better understand their business?
IPR Intelligence Webinar adam notes for 2018Patexia Inc.
Adam Novick, Director of Client Solutions at Patexia, provides an overview of the 2018 IPR Intelligence Report. The slides cover the following topics: What is in the report? How we Collect and Analyze the Data? Overview of Rankings, Press Kit and Award Badges, How Companies Use this Data? How to Leverage your Rankings? How to claim your profile?
Posturing ip rs for settlement (2016-03-24)Patexia Inc.
A petitioner has to carefully craft IPR petitions to obtain institution of trial with the PTAB. But another way to “win” an IPR is to posture the petition filing to encourage early settlement with the patent owner. Learn how IPR petitions are perceived by both the petitioner and patent owner at various stages of an IPR and strategies that maximize early settlement potential.
Inter partes review (IPR), post-grant review (PGR), and covered business method (CBM) procedures are focused, speedy vehicles for resolving unpatentability and § 101 issues. IPRs, especially, are quickly gaining traction as the go-to mechanism for invalidating patents. But with new procedures come new (or not-yet-established) law, and a steep learning curve. This webinar provides insights and lessons learned from the PTAB’s first three years of IPRs, PGRs, and CBMs.
John Callahan, partner in the Washington, D.C., law firm Sughrue Mion PLLC, provides a review of key aspects of successful practice before the PTAB – what do the statistics show and what does the PTAB require from a petitioner and patent owner.
Negotiating and Closing Patent Purchase Transactions in the post-Alice/PTAB R...Patexia Inc.
Attendees will learn what the buzz words “patent monetization” actually mean and what entities in fact monetize patents (operating companies/NPEs).
Attendees will further hear different reasons for the buying and selling of patents.
The webinar will then present a few of the changes that have occurred in the market over the last couple of years (including, the Alice decision, PTAB/IPR proceedings, fee shifting) and the effects these changes have had on the market.
In particular, we will discuss how such changes have affected the way patent purchase transactions are sourced, negotiated and drafted.
Lastly, we will offer up some tips for how to successfully buy/sell patents in today’s market.
Overview of IP Landscape & Opportunities in Hong KongPatexia Inc.
With the growing prominence of Asian markets, IP protection has become a critical issue. This webinar will cover the opportunities and process for US companies to tap into the Hong Kong, China and Asian markets with a specific focus on technology and product licensing.
Suggested Audience: IP professionals interested in Asia, Professionals working in exporting companies, Companies considering expansion, export, or manufacturing in Asia.
Outline of the Talk
-IP in Asian markets
-Introduction of HKTDC
-Information for the Asia IP Exchange Portal
-Upcoming IP events
The ins + outs of crowdsourcing presentationPatexia Inc.
The “Ins + Outs of Crowdsourcing” webinar offers a look at the role of crowdsourcing in addressing the fundamental challenge facing intellectual property - access to high-quality technical information. Attendees will learn about the complete crowdsourcing process and how to harness the collective power of the model to help their stakeholders or constituents make better IP decisions.
Patent Monetization Strategies - Patexia IP Matters WebinarPatexia Inc.
There's A LOT to learn about how to best monetize patents. How do you decide between either selling or licensing patents? How should a patent owner think about this important decision? What are the most current strategies for this issue?
Peter Kim is an expert in monetizing patents. He's is a principal at Irvine Pointe and former Director of IP Strategy at Rambus. In this installment of the IP Matters web series, he'll provide 20-minute coverage of key issues in patent monetization.
Car Accident Injury Do I Have a Case....Knowyourright
Every year, thousands of Minnesotans are injured in car accidents. These injuries can be severe – even life-changing. Under Minnesota law, you can pursue compensation through a personal injury lawsuit.
ALL EYES ON RAFAH BUT WHY Explain more.pdf46adnanshahzad
All eyes on Rafah: But why?. The Rafah border crossing, a crucial point between Egypt and the Gaza Strip, often finds itself at the center of global attention. As we explore the significance of Rafah, we’ll uncover why all eyes are on Rafah and the complexities surrounding this pivotal region.
INTRODUCTION
What makes Rafah so significant that it captures global attention? The phrase ‘All eyes are on Rafah’ resonates not just with those in the region but with people worldwide who recognize its strategic, humanitarian, and political importance. In this guide, we will delve into the factors that make Rafah a focal point for international interest, examining its historical context, humanitarian challenges, and political dimensions.
WINDING UP of COMPANY, Modes of DissolutionKHURRAMWALI
Winding up, also known as liquidation, refers to the legal and financial process of dissolving a company. It involves ceasing operations, selling assets, settling debts, and ultimately removing the company from the official business registry.
Here's a breakdown of the key aspects of winding up:
Reasons for Winding Up:
Insolvency: This is the most common reason, where the company cannot pay its debts. Creditors may initiate a compulsory winding up to recover their dues.
Voluntary Closure: The owners may decide to close the company due to reasons like reaching business goals, facing losses, or merging with another company.
Deadlock: If shareholders or directors cannot agree on how to run the company, a court may order a winding up.
Types of Winding Up:
Voluntary Winding Up: This is initiated by the company's shareholders through a resolution passed by a majority vote. There are two main types:
Members' Voluntary Winding Up: The company is solvent (has enough assets to pay off its debts) and shareholders will receive any remaining assets after debts are settled.
Creditors' Voluntary Winding Up: The company is insolvent and creditors will be prioritized in receiving payment from the sale of assets.
Compulsory Winding Up: This is initiated by a court order, typically at the request of creditors, government agencies, or even by the company itself if it's insolvent.
Process of Winding Up:
Appointment of Liquidator: A qualified professional is appointed to oversee the winding-up process. They are responsible for selling assets, paying off debts, and distributing any remaining funds.
Cease Trading: The company stops its regular business operations.
Notification of Creditors: Creditors are informed about the winding up and invited to submit their claims.
Sale of Assets: The company's assets are sold to generate cash to pay off creditors.
Payment of Debts: Creditors are paid according to a set order of priority, with secured creditors receiving payment before unsecured creditors.
Distribution to Shareholders: If there are any remaining funds after all debts are settled, they are distributed to shareholders according to their ownership stake.
Dissolution: Once all claims are settled and distributions made, the company is officially dissolved and removed from the business register.
Impact of Winding Up:
Employees: Employees will likely lose their jobs during the winding-up process.
Creditors: Creditors may not recover their debts in full, especially if the company is insolvent.
Shareholders: Shareholders may not receive any payout if the company's debts exceed its assets.
Winding up is a complex legal and financial process that can have significant consequences for all parties involved. It's important to seek professional legal and financial advice when considering winding up a company.
Responsibilities of the office bearers while registering multi-state cooperat...Finlaw Consultancy Pvt Ltd
Introduction-
The process of register multi-state cooperative society in India is governed by the Multi-State Co-operative Societies Act, 2002. This process requires the office bearers to undertake several crucial responsibilities to ensure compliance with legal and regulatory frameworks. The key office bearers typically include the President, Secretary, and Treasurer, along with other elected members of the managing committee. Their responsibilities encompass administrative, legal, and financial duties essential for the successful registration and operation of the society.
In 2020, the Ministry of Home Affairs established a committee led by Prof. (Dr.) Ranbir Singh, former Vice Chancellor of National Law University (NLU), Delhi. This committee was tasked with reviewing the three codes of criminal law. The primary objective of the committee was to propose comprehensive reforms to the country’s criminal laws in a manner that is both principled and effective.
The committee’s focus was on ensuring the safety and security of individuals, communities, and the nation as a whole. Throughout its deliberations, the committee aimed to uphold constitutional values such as justice, dignity, and the intrinsic value of each individual. Their goal was to recommend amendments to the criminal laws that align with these values and priorities.
Subsequently, in February, the committee successfully submitted its recommendations regarding amendments to the criminal law. These recommendations are intended to serve as a foundation for enhancing the current legal framework, promoting safety and security, and upholding the constitutional principles of justice, dignity, and the inherent worth of every individual.
How to Obtain Permanent Residency in the NetherlandsBridgeWest.eu
You can rely on our assistance if you are ready to apply for permanent residency. Find out more at: https://immigration-netherlands.com/obtain-a-permanent-residence-permit-in-the-netherlands/.
4. Patexia Webinar
Quotes From Law360, June 17, 2015
“Where Do We Stand One Year After Alice”
“No U.S. Supreme Court patent case has ever had so large an effect in so short a time…”
Ken Adamo, Kirkland & Ellis
“[P]ublic companies…will have to consider writing down the value of their portfolios…”
Richard Baker, New England IP
“[R]adically changed patent litigation…” Maya Eckstein, Hunton & Williams
“[W]e remain in a confusing state where validity under §101 is unclear…”
Barry Goldsmith, Miles & Stockbridge
“[S]parked a fire that continues to rage…” John Jarosz, Analysis Group
“The destructive wake of Alice…” Dr. Scott Kamholz, Foley Hoag
“[A] game changer…” Patricia Martone, Law Office of Patricia Martone
“[A]nimated a defense to patent assertions…” Paul Roeder, HP
“[A] very blunt instrument…” Gary Rosen, Law Offices of Gary Rosen
“[T]remendous value was destroyed…” Jaime Siegel, Acacia Research
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Full Disclosure: IBM Amicus Brief
5
In the
Supreme Court of the United States
________________
ALICE CORPORATION PTY.LTD., Petitioner,
v.
CLS BANK INTERNATIONAL AND CLS SERVICES LTD., Respondents.
________________
On Writ of Certiorari to the United States Court of Appeals
for the Federal Circuit
________________
BRIEF OF AMICUS CURIAE INTERNATIONAL BUSINESS
MACHINES CORPORATION IN SUPPORT OF NEITHER
PARTY
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IBM Amicus Brief
§ Uncertainty regarding patent-eligibility of computer-
implemented inventions endangers critical part of
our economy
§ Abstract idea doctrine unworkable in the computer-
implemented invention context
§ Concerns generally better addressed under other
sections of statute
6
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Supreme Court’s Decision in Alice (2014)
§ Unanimous decision: all claims ineligible abstract
ideas
§ “[W]e need not labor to delimit the precise contours
of the abstract ideas category…”
§ “[W]e tread carefully in construing this exclusionary
principle lest it swallow all of patent law.”
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The Crux of the Problem
If all inventions rely on an abstract idea,
how do we determine whether an invention
is significantly more than an abstract idea
we do not know how to delimit?
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General Acknowledgement of Legitimacy of
Computer Implemented Inventions
§ Did not find software and/or business methods to
be generally ineligible
§ “There is no dispute that a computer is a tangible
system…, or that many computer-implemented
claims are formally addressed to patent-eligible
subject matter.”
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Need to Recite More Than Mere Computer
§ “Stating an abstract idea while adding the words
‘apply it’ is not enough for patent eligibility. Nor
is limiting the use of an abstract idea to a
particular technological environment.”
§ “[T]he mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea
into a patent-eligible invention.”
§ “The introduction of a computer into the claims
does not alter the analysis at Mayo step two.”
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Examples of Abstract Ideas from Alice
§ Fundamental economic practice long prevalent in
our system of commerce
§ Certain methods of organizing human activities
§ An idea of itself
§ Mathematical relationships/formulas
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Significantly More Than Abstract Idea Itself
§ Improvements to another technology or technical field
§ Improvements to function of computer itself
§ Application with or via particular machine
§ Transformation to different state or thing
§ Limitation not well-understood, routine, conventional
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0
10
20
30
40
50
60
2004 2005 2006 2007 2008 2009 2010 2011 2012 2013 2014 *2015
District court 101 invalidity findings by termination date
(*through 8/13/15)
Source: Lex Machina, district court cases with at least one finding of invalidity under 101, filed on or after January
1, 2000.
Bilski
Mayo
Alice
Increasing §101 Invalidations
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Lower Court Results
§ Lower courts since Alice: ~65-75% invalidity rate
on §101 grounds
§ Federal Circuit since Alice: ~90-95% invalidity rate
on §101 grounds
§ DDR is the only computer implemented invention
case since Alice in which the Federal Circuit
upheld subject matter eligibility
§ More dispositions on motion
Source: Robert Sachs, Fenwick & West, Bilskiblog/Alicestorm
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Are the Lower Court Results Deceptive?
§ Computer implemented invention optimists argue
technical patents are upheld in 2/3 of district court
§101 decisions
§ Higher rate of invalidity for business methods
§ But what about the other 1/3 – why are those
patents invalid?
Source: D. Bartley Eppenauer, Shook, Hardy & Bacon in Law360,
June 17, 2015
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None!
21
Rovi v Netflix
Media Synch
Across Devices
Synopsis v Mentor Graphics
Circuit Logic Synthesis
for EDA
Thales Visionix v USA
Helmet Mounted Inertial
Tracking
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Thales Visionix v. USA and Elbit Systems
(Ct. Fed. Clm. 2015)
“[Regarding Alice Step 2] the system claim fails to transform the
method claim into a patent-eligible invention. The plain language of
Claim 1 describes generic, fungible inertial sensors that admittedly
have already gained “widespread acceptance” in the field of motion
tracking. Like the computer elements in Alice, these inertial trackers,
when considered as an ordered combination in the claimed system,
add nothing transformative to the patent. Although the concept of
tracking the motion of a moving object relative to a moving reference
frame may have been novel and nonobvious, the claimed system does
nothing to ground this abstract idea in a specific way. The claims allow
for the application of the navigation equation in almost endless
environments, and are not limited to a fighter jet and a pilot’s helmet.”
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Lingering Case Law Issues
§ Conflation of 35 USC §101 v. §102/103/112
§ Preemption v. parsing v. as a whole
§ Hindsight
§ Consistency
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Patent Trial & Appeal Board (PTAB)
§ Glass half full or half empty?
§ Same aggressive results used by
both optimists and pessimists
§ Demonstration of prevalence of
bad patents v. hostile patent
environment
§ Not necessarily the product of
Alice
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Rate of §101 Rejections in
Patent Examination Over Time
Source: Robert Sachs, Fenwick & West, Bilskiblog/Alicestorm
26
0%
5%
10%
15%
20%
25%
30%
35%
40%
45%
Jan-12 Oct-12 Aug-13 May-14 Jul-14 Feb-15 Mar-15 Apr-15 May-15
2100-Comp. Arch 3600-Trans, E-Comm
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USPTO Patent Subject Matter Eligibility Guidelines
§ Focus on each individual claim as a whole
§ Prima facie case must be clearly articulated
§ Ineligibility conclusion may be supported by
general knowledge (examiner notice) – rejection
must include reasons but not necessarily evidence
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Lingering Issues in Patent Examination
§ Examiners just as confused as everyone else
§ Examples focus on what is not eligible
§ Form paragraph rejections lack specificity
(and lack evidence and consistency)
§ Just how is ineligibility properly demonstrated?
§ After Alice
– IBM survey indicates modest examination improvement
– OPQA indicates no increase in examiner errors
§ Lack of clarity in Alice will likely impact efficiency
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Where Are We Now?
§ Warning: USPTO interpretation does not have force
of law!
§ Greater uncertainty
§ §101 defense to assertions nearly automatic in
impacted technologies
§ More difficult to obtain and enforce patents
– Reduced filing in most impacted technologies
– Higher quality and lower volume of assertions and litigation
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Computer ease of use working against patent eligibility?
Inflection point on relative strength of geo patent systems?
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Claiming Tips
§ Focus claim language on technology, not business
§ Avoid mere economic claim language
§ Include more technical content and hardware in apps
§ Emphasize improvement to computer
§ Technical preambles? Bare bones preambles?
§ Include dependent claims covering valuable specific
embodiments
§ M+F claims to incorporate disclosure into claims?
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38. Patexia Webinar
Prosecution Tips
§ Interview early
§ Delay prosecution
§ Distinguish abstract idea from claims
§ Ask for proof in response to examiner notice
§ Leverage prior similar and desired results
§ Consider reissue/reexamine to improve claims
§ Keep pending continuations (hard to amend during PTAB
challenge)
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39. Patexia Webinar
Litigation Tips
§ Defendants
– Alice adds significantly more to your defense!
– Early PTAB challenges stay litigation
§ Plaintiffs
– Vet patents before assertion
– Consider success of §101 defense in potential jurisdictions
§ What if you are a defendant with a significant patent
portfolio?
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40. Patexia Webinar
Remediation?
§ Never-ending search for clarity goes on
§ Other forms of IP are inadequate
§ Alice cannot simply be ignored
§ Another (clarifying) Supreme Court case?
§ Legislation to clarify 35 USC §101?
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41. Patexia Webinar
Legislation?
§ Better to do nothing?
§ Codification of worst fears?
§ Elimination of judicial exception never fully assured
§ Need for community consensus
§ Intersection with pending patent reform legislation and
current Congressional climate
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42. Patexia Webinar
Principles For Potential Legislation
§ Technology neutral
§ Claim considered as a
whole
§ Independent of 35 USC
§102, 103, and 112
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