Drafting Patents to Ground Electric Power: AI and Section 101 (RECORDING)

The Federal Circuit’s reasoning in Electrical Power Group v. Alsom has zapped more than twenty software patents since 2016, invalidating them as abstract under Alice. Particularly at risk are inventions in the booming area of artificial intelligence (“AI”). Our panelists, two in-house counsel at technology companies and a law firm expert, will analyze the Electrical Power Group line of cases and provide patent prosecutors with practical advice on how to avoid its pitfalls for AI related inventions. 

In Electric Power, the Federal Circuit found that collecting information, analyzing it, and displaying results constitute an abstract idea. Many software-related inventions in AI technologies do exactly that. Recently the Federal Circuit has even expanded its analysis to find that “entering, transmitting, locating, compressing, storing, and displaying data” and “capturing and transmitting data from one device to another” are abstract ideas. 

Our panel will also consider more than a year’s experience with the USPTO’s 2019 patentable subject matter guidelines for software inventions. The guidelines aim to incorporate the Federal Circuit’s § 101 jurisprudence, but there is daylight between the two.  This forces prosecution practitioners and PTAB practitioners to use both the guidelines and Federal Circuit case law when arguing at the USPTO. Otherwise, an attorney may win in the Office only to lose on appeal.

In addition, the panelists will share lessons from six PTAB ex parte decisions on this issue that were recently deemed precedential or informative, including both affirmances and reversals of examiner rejections.

Thomas Burton

Siemens Corp.

is a senior IP attorney at Siemens Corp. He provides “full service” IP support to Siemens Industry, Inc. Smart Infrastructure businesses in the US, including IP counseling, preparing and negotiating IP related transactions (with expertise in software licensing), IP patent portfolio development, M&A IP due diligence, and IP litigation enforcement/defense. Tom is a member of IPO’s Software Related Inventions Committee, where he leads a subcommittee on patent subject matter eligibility.  

Michael Kiklis

Bass, Berry & Sims PLC

is a member of Bass Berry & Sims, where his practice focuses on patent litigation and PTAB trials. He also handles appeals to the Federal Circuit from his cases, having now been involved in over 20 appeals. He is an expert in section 101 patent eligibility issues.

Christine Lam

NetApp

Christine Lam is director of IP at NetApp. She is a legal executive experienced in IP protection, transactions, and litigation and an expert in patent eligibility, open source licenses, and complex litigation. Christine also specializes in developing patent strategies to protect cloud-related and open source technologies. She often advises on the intersection of three different areas of laws – patents, open source, and standards organization.

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Drafting Patents to Ground Electric Power: AI and Section 101 (RECORDING)
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