Tech Transfer Central

Alice Corp. vs. CLS Bank: What’s Eligible, What’s Not, and What’s Still to be Determined?

Format: On-Demand Video/Transcript, or DVD
Originally presented: Thursday, August 28, 2014
Price: $197
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Recently, the Supreme Court of the United States issued its long-awaited opinion in Alice Corp. v. CLS Bank Int’l  (No. 13-298). While this case was highly anticipated by high-tech companies and NPEs, university TTOs have been keeping a watchful eye as well.

At the heart of the case are the long-debated and interpreted issues of subject matter eligibility, business method patents, and what sort of “inventive step” is required to transform an abstract idea into a patentable technology. In the software industry in particular, these questions and how they are addressed by the courts could well be the tipping point for billions of licensing dollars and in the ability of companies and universities to protect their software innovations and other business method patents.

In the SCOTUS unanimous decision, the Justices struck down all of Alice’s method, device, and system claims as being patent-ineligible under 35 U.S.C. § 101. In finding Alice Corp.’s patent invalid, the Court affirmed a Federal Circuit judgment.  

So, what now?

The decision did not kill all software patents, but rather it provides some guidance — and raises even more questions — for future Section 101 challenges to computer-implemented claims. The court has also left room for eligibility of software patents, but patents that merely take an abstract idea and use a computer to implement the idea will not stand up to the Court’s ruling.

To offer insight and clarify the decision as well as the PTO’s recently issued guidelines stemming from the case, Technology Transfer Tactics has tapped two experts from the law firm McDonnell Boehnen Hulbert & Berghoff LLP to lead this one-hour webinar. Please join Kevin E. Noonan, PhD, and Michael S. Borella, PhD, for this critical program:

Alice Corp. vs. CLS Bank:
What’s Eligible, What’s Not, and What’s Still to be Determined?

Our two attorney experts will delve into the Alice Corp. decision and address all the key issues it raises, clarifies, or leaves open to future interpretation. Here’s a quick look at the agenda:

  • How the Alice Corp. decision impacts the future of:
    • Software patents
    • Other business method patents
    • Patent troll (NPE) activity
  • How to conduct a test for patentability according to the Court’s ruling
  • Determining if your patent claim describes an “inventive step”
  • How claims must be drafted to achieve eligibility
  • Detailed review of the PTO’s recent Alice-based guidelines for examinations

PLUS: Consult with our attorney experts in the live Q&A portion of the program!

Meet Your Expert Presenters:

Kevin E. NoonanKevin E. Noonan, PhD, Partner, McDonnell Boehnen Hulbert & Berghoff LLP. An experienced biotechnology patent lawyer, Dr. Noonan brings more than 20 years of extensive work as a molecular biologist studying high-technology problems in serving the unique needs of his clients. His practice involves all aspects of patent prosecution, interferences, and litigation. He represents pharmaceutical companies both large and small on a myriad of issues, as well as several universities in both patenting and licensing to outside investors. He has also filed amicus briefs to district courts, the Federal Circuit and the Supreme Court involving patenting issues relevant to biotechnology. He has authored amicus curiae briefs in landmark patent and other cases in U.S. Courts of Appeals and the U.S. Supreme Court. Dr. Noonan is a frequent speaker, commentator and author on a variety of intellectual property law topics. He is a founding author of the Patent Docs weblog, a site focusing on biotechnology and pharmaceutical patent law.

Michael S. BorellaMichael S. Borella, PhD, Associate, McDonnell Boehnen Hulbert & Berghoff LLP. Dr. Borella conducts legal research and provides technological advice in support of validity, infringement and patentability analyses, and litigation matters. His subject matter expertise includes networking, Internet telephony, wireless communication technologies, telecommunications, cloud computing, routing, TCP/IP, and mobile applications. Dr. Borella has drafted or been involved in the prosecution of hundreds of patents in the U.S., as well as in other jurisdictions. He has experience in numerous phases of patent litigation, including invalidity analysis, discovery, motion practice, and claim construction. His practice also includes patentability, validity, and infringement analyses, as well as client counseling with respect to the procurement of all types of intellectual property rights. Dr. Borella has written extensively on the patent-eligibility of computer-implemented inventions.

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