Navigating Patent Eligibility: Leveraging New USPTO Guidance and the Enfish and TLI Communications Decisions

In May 2016, the Federal Circuit issued two decisions that provide guidance on patent eligbility. In Enfish v. Microsoft Corp. (May 12, 2016), the Federal Circuit held the claims of software patents directed to a logical structure for a computer database were patent-eligible under 35 U.S.C §101. The court gave long-awaited direction regarding the application of step one of the Alice test regarding whether a claim is abstract.

The Federal Circuit also issued its decision in TLI Communications LLC v. AV Automotive LLC (May 17, 2016), explaining the importance of computer hardware elements to the §101 analysis. The court differentiated the claims in TLI Communications from those in Enfish.

In addition to these decisions, the USPTO published a subject matter eligibility update on May 4, 2016, and issued a memorandum (Bahr memo) on May 19, 2016, breaking down the impact of the two decisions. Patent counsel should take note of the instructive opinions and guidance that provide insight into the application of the standards and the analysis that will be done to evaluate patent eligibility.

Listen as our authoritative panel of patent attorneys discusses the new USPTO guidance for patent eligibility and examines the impact of the recent Federal Circuit decisions and the Bahr memo on software patent eligibility. The panel will discuss patent prosecution strategies to leverage the new guidance and Federal Circuit decisions.

1. Review of recent Federal Circuit decisions
   1. Enfish v. Microsoft (Fed. Cir. May 12, 2016)
   2. TLI Communications LLC v. AV Automotive LLC (Fed. Circ. May 17, 2016)
2. Recent guidance
   1. USPTO guidance
   2. Bahr memo
3. Best practices for patent eligibility

The panel will review these and other key issues:

• How are the courts applying the framework for patent eligibility created in Alice Corp.?
• How can patent litigation defendants take advantage of the guidance for Section 101 challenges?
• What are best practices for patent counsel to demonstrate patent eligibility?