Blog

Subject Matter Eligibility Developments
Moderator: Michele Connors, Cirrus Logic, Inc., Austin, TX

Latest Tips for Eligible Subject Matter Drafting: Best Practices and Special Issues for AI, Computer and Biotech Industries
Erica Bruno, Steinfl+Bruno, LLP, Pasadena, CA
James Stein, Lee & Hayes, Atlanta, GA

Why Aren’t District Courts Following the USPTO’s Eligibility Guidelines? An
Examination of the Reasons Behind this Development, the Seeming Adoption of the Problem-Solution Test, and the Possible End of Berkheimer
Ellisen Shelton Turner, Kirkland & Ellis, LLP, Los Angeles, CA

A Deep Dive on How the Federal Circuit is Handling Eligibility Cases: What Patent Litigators and Prosecutors Need to Know, Including the Seeming Split Between Taranto and Moore Opinions
Jeffrey Lewis, Norton Rose Fulbright US LLP, New York, NY

Presented by: Patent/Subject Matter Eligibility Committee

Speakers

• Bruno, Enrica

  Steinfl+Bruno, LLP | Founder and Partner

  Enrica Bruno is an EPO-Qualified U.S. Patent Attorney, Founder and Managing Partner of the firm Steinfl + Bruno LLP. Enrica is past Co-Chair of the AIPLA Harmonization Committee, and AIPLA IPP in Europe Committee as well as Liaison of the California Lawyers Association to the US Bars EPO Liaison Council, and CEIPI tutor. Enrica has extensive professional experience in the U.S. and Europe in drafting prosecuting and managing world-wide patent portfolios as well as developing intellectual property strategies to protect innovations, in biotechnology, chemistry and other technical fields.
• Connors, Michele

  Cirrus Logic, Inc. | Assistant General Counsel

• Lewis I.D., Jeffrey

  Foley Hoag | Partner

  Jeffrey I. D. Lewis is a partner at Foley Hoag, resident in the firm’s New York office, and an AIPLA Past President. A chemical engineer and registered patent attorney, Jeff concentrates on patent and trademark litigation, counseling and licensing, as well as other intellectual property and general litigation. He regularly represents plaintiffs as well as defendants – both at trial and on appeal – in a range of technology-related sectors with a focus on pharmaceuticals, chemicals, mechanical/medical-device, biotechnology and life sciences. He also has represented pharmaceutical innovators in numerous Abbreviated New Drug Application (ANDA) patent litigations. Jeff has appeared in several dozen cases before the U.S. federal district courts, and has argued numerous appeals before the U.S. Court of Appeals for the Federal Circuit.
• Stein, James

  Lee & Hayes | Patent Attorney/Partner

  With nearly 15 years of experience, James has a diverse practice spanning all areas of patents, including post-grant proceedings (e.g., inter partes review and reexamination), strategic counseling, prosecution, litigation, and transactions.
• Turner, Ellisen Shelton

  Kirkland & Ellis, LLP | Partner

  Ellisen Turner is an Intellectual Property partner at Kirkland & Ellis LLP. He is a well-known IP strategist and litigator who combines business acumen with a deep knowledge of intellectual property law to support his clients’ business goals and maximize the value of their technology. He has helped clients secure victories in patent and trade secret litigations that have led to billions in total client compensation, and has successfully defended matters with billions in revenue at stake.