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Patent Prosecution and Defeating Abstractness: Minimizing the Risk of Sect. 101 Rejection

Lessons From Recent Federal Circuit Court Decisions

Recording of a 90-minute premium CLE webinar with Q&A

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Conducted on Thursday, November 10, 2016

Recorded event now available

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This CLE course 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.


The Supreme Court’s decision in Alice implemented a two-step test, the first of which focuses on abstractness. Since Alice, the Federal Circuit has issued decisions that provide guidance on determining whether a claim is directed to an abstract idea. The Enfish, BASCOM, DDR Holdings, Rapid Litigation and McRO rulings help bring clarity to the Alice test.

In DDR Holdings and BASCOM, the Federal Circuit discussed a problem-solution approach to finding patent eligibility, despite abstractness. In Enfish and McRO, the Court emphasized the Specification’s teachings vis-à-vis the prior art. These cases provide guidance on how to successfully navigate the post-Alice minefield of 35 U.S.C. § 101 abstractness rejections in the absence of a clear guideline on what is considered abstract.

Listen as our authoritative panel of patent attorneys examines the different approaches taken by the Federal Circuit to determine patent-eligibility. The panel will offer best practices for evaluating and applying these approaches and addressing patent eligibility challenges.



  1. Approaches to defeat abstractness
    1. Clearly stated problem/solution
    2. Claim formats to use and avoid
    3. Well-defined claim terms
  2. Lessons from recent Federal Circuit decisions
    1. DDR Holdings v. (Fed. Cir. 2014)
    2. Enfish v. Microsoft Corp. (Fed. Cir. May 12, 2016)
    3. BASCOM Global Internet Services v. AT&T Mobility (Fed. Cir. June 27, 2016)
    4. Rapid Litigation Management v. Cellzdirect (Fed. Cir. July 5, 2016)
    5. McRO, Inc. v. Bandai Namco Games America, Inc. (Fed. Cir. Sept. 13, 2016)
  3. 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
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

Stephen A. Marshall
Stephen A. Marshall

Fish & Richardson

Mr. Marshall’s practice focuses on complex patent litigation and counseling. He has litigated patent cases across...  |  Read More

James L. Reed
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

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