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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

    Intermediate

  • work Practice Area

    Patent

Date & Time
  • event Date

    Thursday, June 22, 2023

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

This CLE webinar will guide patent counsel on Alice motions at the pleading stage in patent infringement litigation. The panel will discuss key considerations when filing these motions. The panel will address Section 101 and the Mayo/Alice test, discussing steps 1 and 2 of the test for abstract ideas. The panel will also use a recent Federal Circuit decision as a case study and discuss best practices for patentees and alleged infringers.

Faculty

Justin J. Hasford
Partner
Finnegan Henderson Farabow Garrett & Dunner LLP

Mr. Hasford has experience in all areas of intellectual property law. His practice focuses on complex patent litigation at the trial and appellate levels on behalf of pioneer pharmaceutical companies. He has particular experience with cases arising from Abbreviated New Drug Applications (ANDAs) under the Hatch-Waxman Act. Justin also has litigated antitrust cases and business method patent cases. He counsels clients on issues of infringement, validity, enforceability, unfair competition, licensing, due diligence, and IP portfolio management. He has extensive experience advising clients regarding the interplay between patent and regulatory laws, including Orange Book listing of patents for drugs approved by the FDA.

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Stefan O. Ochiana
Attorney
Finnegan Henderson Farabow Garrett & Dunner LLP

Mr. Ochiana prosecutes and provides strategic counseling on U.S. and foreign patent portfolios in the chemical and pharmaceutical arts. His experience also includes assisting with Abbreviated New Drug Application (ANDA) litigations under the Hatch-Waxman Act, inter partes review (IPR) proceedings at the U.S. Patent and Trademark Office (USPTO), and disputes in district courts across the country.

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Description

In February 2023, the Federal Circuit issued a precedential opinion in Hawk Technology Systems v. Castle Retail, affirming the granting of the defendants' Rule 12(b)(6) motion to dismiss. The court found that the patent in question claimed ineligible subject matter under Section 101. The Federal Circuit concluded the claims were directed to an abstract idea and failed to transform the abstract idea into patent-eligible subject matter.

The Federal Circuit's opinion demonstrates the application of the Alice test and emphasizes the role of written descriptions and claim language in a Section 101 analysis. Whether an abstract idea is changed into patent-eligible subject matter often depends on the particular subject matter included in the claims and written description.

Listen as our authoritative panel of patent attorneys examines Alice motions at the pleading stage in patent infringement litigation hearings. The panel will discuss key considerations for filing these motions. The panel will address Section 101 and the Mayo/Alice test, discussing steps 1 and 2 of the test for abstract ideas. The panel will also use a recent Federal Circuit decision as a case study. The panel will offer best practices for patentees and alleged infringers.

Outline

  1. Mayo/Alice test and Section 101
  2. Mayo/Alice test for abstract ideas
    1. Step 1
    2. Step 2
  3. Case study: Hawk Technology Systems v. Castle Retail (Fed. Cir. Feb. 17, 2023)
  4. Best practices for patentees and alleged infringers

Benefits

The panel will review these and other key issues:

  • What are the key considerations for Alice motions at the pleading stage in patent infringement litigation?
  • How is strong claim language and written description important to avoiding a dismissal?
  • What guidance does case law provide on filing Alice motions at the pleading stage?