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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

  • work Practice Area

    Patent

Date & Time
  • event Date

    Thursday, April 15, 2021

  • 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

This course is $0 with these passes:

CLE
ALL

This CLE course will provide guidance on patent eligibility for manufacturing patents. The panel will discuss recent court treatment of Section 101 as applied to manufacturing patents. The panel will also examine the challenges and strategies to overcome them. The panel will discuss practical considerations for patent eligibility, including USPTO guidance and alternatives to patent protection. The panel will offer best practices for protecting methods of manufacturing.

Faculty

Michael S. Borella
Partner; Co-Chair Software and Business Methods Practice Group
Mcdonnell Boehnen Hulbert & Berghoff LLP

Dr. Borella provides legal and technological advice in support of validity, infringement, patentability analyses, and litigation matters. His expertise includes networking, internet telephony, wireless communication technologies, telecommunications, financial transactions, cloud computing, routing, TCP/IP, artificial intelligence and machine learning, computer graphics and imaging, voice and facial recognition, robotics, 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 and has been a featured presenter for several seminars on the topic as well. He is a former adjunct professor at Northwestern University, and has lectured on patent law at the Chicago-Kent College of Law.

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Steven Reid
Senior Counsel
Schwegman Lundberg & Woessner, PA

Dr. Reid’s practice entails the procurement of patents and related counseling in the chemical arts, particularly in the area of small molecules and pharmaceuticals. He also conducts and advises clients on intellectual property due diligence investigations. Dr. Reid is a former patent examiner in the chemical and pharmaceutical arts for the USPTO. Dr. Reid’s scholarly contributions span eight years of undergraduate, graduate, and postdoctoral research, and are published in leading academic journals. Some of his efforts resulted in new synthetic routes to highly reactive organopalladium complexes. Others concerned the development and evaluation of organohafnium complexes as living olefin polymerization catalysts. His forays into bioinorganic chemistry led to several metalloporphyrin derivatives that served as models for intermediates in heme catabolism.

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Description

Over the past several years, software and biotech/pharma patents have seen Section 101 rejections climb since the Alice Corp. decision [CLS Bank v. Alice Corp. (Fed. Cir. 2013)]. Method of manufacturing patents have seemed to be immune from patent eligibility challenges under Alice. This is no longer the case.

In American Axle, the Federal Circuit determined method of manufacturing claims were ineligible [Am. Axle & Mfg. Inc. v. Neapco Holdings L.L.C. (Fed. Cir. 2020)]. Further, in a split decision denying a request for rehearing en banc, the court showed how divided it is on post-Alice patent eligibility.

Before the American Axle decision, the Federal Circuit held method of manufacturing claims related to a garage door controller were ineligible [The Chamberlain Group Inc. v. Techtronic Industries Co. (Fed. Cir. 2019)]. The court concluded the claims were invalid as directed toward the abstract idea under the Alice two-step test. Recently, in Illumina v. Ariosa, (Fed. Cir. 2020), the court found the claimed method of concentrating cffDNA is a patent-eligible process. Also, a federal district court held a company's manufacturing patent was invalid under Alice [Palomar Techn. Inc. v. MRSI Sys. L.L.C. (D. Mass. 2020)].

Patent counsel must understand how the courts are applying Alice and questions of eligibility to the method of manufacturing patents to offer guidance on protecting manufacturing methods.

Listen as our authoritative panel of patent attorneys examines patent eligibility for method of manufacturing patents. The panel will discuss how courts are treating patent eligibility under Section 101 and applying it to the method of manufacturing patents. The panel will also examine where the challenges are being raised and strategies to overcome them. The panel will discuss practical considerations for patent eligibility and offer best practices for protecting methods of manufacturing.

Outline

  1. Patent eligibility for manufacturing patents
  2. Court treatment
  3. Overcoming common challenges
  4. Practical considerations
  5. USPTO guidance
  6. Best practices for protecting methods of manufacturing

Benefits

The panel will review these and other key issues:

  • Application of Alice to manufacturing patents
  • Recent court treatment, including American Axle and Palomar decisions
  • Best practices for protecting methods of manufacturing