Intellectual Property Litigation

Software and Business Method Claims, Then and Now: Perspectives and Strategies for Surviving the Courts and Hurdling Through Examinations


There are many hurdles to overcome when dealing with patent validity of software and business method claims. The presenters of this course dive into various sections of U.S. Code and how the Courts have addressed issues in dealing with patent validity. In addition, they take a thorough look at the means-plus-function element, what the trends seem to be for filing patent claims, and provide some insightful tips and techniques for claim drafting strategy.

**iPad Compatible


I. The Courts and Software and Business Method Claims
    A. Introduction of Topic
    B. Hurdles to Software Claim Patentability and Validity
        1. 35 U.S.C. § 101
        2. Case Law Associated with § 101
        3. 35 U.S.C. § 112(b)
        4. 35 U.S.C. § 112(f)
    C. Patent Applications for Software-Related Inventions
        1. Means-Plus-Function Elements
        2. What's the Problem with § 101?
        3. Practical Tips
        4. Divided Infringement
    D. In-house Perspectives on Claim Drafting Strategies
        1. Is Patent Application Worth It?
        2. Defining the Class
        3. Understanding Your Client's Strategy
        4. Mismatch Between Business and IP Strategy
        5. Best Practices
        6. More Practice Tips
    G.  More Questions Answered
        1. Is Means-Plus-Function Language Narrower in Scope?
        2. File Narrower Claims: Is It Really the Answer?

Content Provided

The American Intellectual Property Law Association (AIPLA) is a national bar association constituted primarily of lawyers in private and corporate practice, in government service, and in the academic community, with approximately 13,500 members. AIPLA represents a wide and diverse spectrum of individuals, companies and institutions involved directly or indirectly in the practice of patent, trademark, copyright, and unfair competition law, as well as other fields of law affecting intellectual property. Our members represent both owners and users of intellectual property.

AIPLA was formed in 1897 to maintain a high standard of professional ethics, to aid in the improvement in laws relating to intellectual property and in their proper interpretation by the courts, and to provide legal education to the public and to its members on intellectual property issues.

AIPLA is governed by a Board of Directors and has a staff of 25, headed by an Executive Director, located in Arlington, Virginia. AIPLA has more than 50 administrative and substantive committees which provide education to their members and formulate proposed positions for the Board of Directors to consider adopting as Association policy.

AIPLA is also actively involved in shaping US intellectual property policy through its work on legislation, federal regulations, and intellectual property cases in the US courts. Internationally, AIPLA has spearheaded a worldwide campaign to reduce the costs of procurement and enforcement of patents and trademarks, regularly participates in meetings of the Word Intellectual Property Organization, and maintains close relations with foreign IP officials and practitioners.

To qualify for membership, applicants must be members in good standing of the Bar of a court of record of the United States or any State. Foreign affiliate members must be able to practice in a court of general jurisdiction in their countries, or registered to practice before the Patent or Trademark Office in their country of citizenship or practice, to be considered for membership. AIPLA also has student affiliate memberships available for those regularly enrolled in a law school approved by the Association of American Law Schools and affiliate membership is available to patent agents who are registered with the USPTO. Approximately 63% of the regular members are in private practice, 33% in corporate practice, with the remainder in the government or academia. See our membership application for more information.

AIPLA conducts three regularly scheduled conferences a year, mid-winter, spring, and fall, at which the Association offers educational seminars on the latest developments in intellectual property law. In addition, AIPLA conducts several stand-alone seminars on specialized areas of intellectual property law throughout the year around the country, as well as online educational programs.

The Association produces a number of informative publications including the AIPLA Quarterly Journal (a scholarly law journal published four times a year), the AIPLA Bulletin (an overview of AIPLA meetings published electronically three times a year, and meeting papers from the regularly scheduled conferences and nationwide seminars. The Association also provides its members online access to a membership directory. Finally, AIPLA biennially publishes the Report of the Economic Survey, providing a significant benchmarking tool for compensation and charges in the intellectual property law field.

Speakers / Authors:

Photo of Michael Chernoff

Michael Chernoff

Michael Chernoff is Chief Intellectual Property Officer for MDB Capital Group, where he oversees patent portfolio development for the IP Development Services division, Wall Street's only intellectual property investment bank.

Prior to MDB, Mr. Chernoff was the Director of Legal Services, Patent Operations, for Accenture, where he led the global patent legal team of the $28.6 billion, 280,000 employee company. He also served as an Associate Patent Counsel for WorldCom, where he managed patent prosecution for their Voice over IP (VoIP), SkyTel, and UUNET patent portfolios.

Mr. Chernoff began his career as a Patent Examiner at the U.S. Patent and Trademark Office, examining mobile phone and hybrid video/communication patent applications. He is continuously sought after for high-profile IP speaking engagements, and is a Registered Patent Attorney.

Mr. Chernoff has a J.D. from George Mason University and a B.S., Electrical Engineering from Carnegie Mellon University.


Photo of John F. Murphy

John F. Murphy

John Murphy if a partner in the firm of Baker & Hostetler LLP. He focuses his practice on patent, copyright, trademark, trade secret, and other intellectual property litigation. In spite of the prevalence of patent litigation brought by non-practicing entities, the great majority of John's experience is in disputes between business competitors. Consequently, John frequently goes beyond the courtroom to advise on the strategic business uses and implications of IP litigation.

Mr. Murphy represents both plaintiffs and defendants in district courts and before the U.S. Court of Appeals for the Federal Circuit, as well as the U.S. International Trade Commission, arbitration panels, and mediators. His representations have involved a variety of technologies, including orthopedic medical devices and materials, chemical and biological therapeutics, semiconductor manufacturing, commercial packaging, cryptographic and other software, as well as proprietary business information.

Mr. Murphy teaches Patent Litigation as an adjunct professor at Rutgers Law-Camden, using the patent litigation and strategy casebook that he co-authored along with Federal Circuit Judge Kimberly A. Moore and Emory Law Associate Dean and Professor Timothy Holbrook. He also speaks and writes regularly on developments at the Federal Circuit and in patent law.

Mr. Murphy received his J.D. in 2007 from Harvard Law School, his Ph.D, in 2004 from California Institute of Technology, and his B.S. in 1999, summa cum laude, from Cornell University.

Photo of E. Robert Yoches

E. Robert Yoches

E. Robert Yoches is a partner in the firm of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. He has extensive experience in patent infringement litigation, especially in the Northern District of California, the Eastern District of Texas, and the International Trade Commission. He also has a great deal of experience representing clients from Asia, particularly, Taiwan, China, and Japan, often in complex cases involving electronic and computer technologies.

Mr. Yoches also counsels clients in intellectual property matters including portfolio management, licensing, trade secret protection and copyright protection of software. He writes frequently on patent-related topics, and speaks before academic, business, and legal communities in the U.S. and Asia on intellectual property issues.

Mr. Yoches is admitted to practice in the District of Columbia and before the U.S. Court of Appeals, Federal Circuit, the U.S. Supreme Court, and the U.S. Patent and Trademark Office.

Mr. Yoches received his J.D. in 1980 from the University of Pennsylvania Law School, and his B.S. in 1974 from the University of Boulder.


Price (USD)

Standard Rate: $124.00
Subscribers: FREE
Pillsbury U Online: $124.00
Metro State Univ: $124.00


Course Code : 772511

Release Date : 07/29/2014

Length : 1hr 14min
Recorded Date : 5/15/2014

Format Type : eLearning
Mobile Compatible

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