Patent Prosecution and Defeating Abstractness: Minimizing the Risk of Sect. 101 Rejection
Lessons From Recent Federal Circuit Court Decisions
Recording of a 90-minute CLE webinar with Q&A
This CLE webinar will examine recent Federal Circuit decisions on patent eligibility for software. The panel will discuss the Court’s different approaches and offer best practices for demonstrating patent eligibility.
- Approaches to defeat abstractness
- Clearly stated problem/solution
- Claim formats to use and avoid
- Well-defined claim terms
- Lessons from recent Federal Circuit decisions
- DDR Holdings v. Hotels.com (Fed. Cir. 2014)
- Enfish v. Microsoft Corp. (Fed. Cir. May 12, 2016)
- BASCOM Global Internet Services v. AT&T Mobility (Fed. Cir. June 27, 2016)
- Rapid Litigation Management v. Cellzdirect (Fed. Cir. July 5, 2016)
- McRO, Inc. v. Bandai Namco Games America, Inc. (Fed. Cir. Sept. 13, 2016)
- Best practices for overcoming patent eligibility challenges
The panel will review these and other key issues:
- How are the courts applying the framework for patent eligibility created in Alice?
- What guidance can be gleaned from the Federal Circuit’s decisions in Enfish, BASCOM, DDR Holdings, Rapid Litigation and McRo?
- What are best practices for patent counsel to avoid patent-eligibility issues?
Joseph M. Casino
Wiggin and Dana
Mr. Casino has 20 years of experience as a lead counsel in patent litigation in more than 100... | Read More
Mr. Casino has 20 years of experience as a lead counsel in patent litigation in more than 100 cases. He has also advised clients on complex licensing matters, patent monetization issues, patent portfolio development and worldwide IP strategic counseling. Mr. Casino has a great deal of experience with high stakes patent cases, including technologies relating to consumer electronics, aerospace, computers, hybrid electric vehicles, semiconductors, cellular phones and systems, medical devices and batteries.Close
Stephen A. Marshall
Fish & Richardson
Mr. Marshall’s practice focuses on complex patent litigation and counseling. He has litigated patent cases across... | Read More
Mr. Marshall’s practice focuses on complex patent litigation and counseling. He has litigated patent cases across a variety of industries and technologies, including Internet software and e-commerce, semiconductors, telecommunications, computer networking, optical data storage, electro-optical/infrared countermeasures systems, fire suppression systems, and medical devices. Mr. Marshall has represented clients before U.S. District Courts around the country, in the Federal Circuit, and in Section 337 proceedings before the U.S. International Trade Commission.Close
James L. Reed
Senior Patent Counsel
Squire Patton Boggs
Mr. Reed focuses his practice on patents in the areas of medical devices, renewable energy, data analytics, automotive... | Read More
Mr. Reed focuses his practice on patents in the areas of medical devices, renewable energy, data analytics, automotive systems, sensors, encryption and cybersecurity. His practice emphasizes patent portfolio management and patenting strategy, due diligence and freedom-to-use, patent litigation and patent licensing. Mr. Reed has a background in industry, degrees in aerospace engineering and applied mathematics, and more than 15 years as a practicing patent attorney.Close