Intellectual Property Litigation

Trends in Section 101 Patent Litigation


This course examines the state of patent eligibility under 35 U.S.C. § 101 after two recent Supreme Court rulings: Mayo Collaborative Services v. Prometheus Laboratories, Inc., whose framework led to the two-part test for eligibility described in Alice v. CLS Bank. The course includes a discussion of litigation trends across the country under § 101, and provides practical advice for patent litigators and in-house counsel facing or contemplating a challenge to an asserted patent under § 101. The presenters also take an in-depth look at the patent litigation arena in the Eastern District of Texas, providing insight into the patent litigation process there as well as what the future may hold.


I. Section 101 Trends
    A. What's It All About?
    B. The Statute
        1. Sections 101, 102, 103 and 112
        2. Exceptions from Eligibility
    C. Case Law
        1. Mayo v. Prometheus
        2. Alice Corp. v. CLS Bank
    D. Litigation Strategies
        1. Section 101 Motions
        2. Patent Trial and Appeal Board
        3. Motions to Dismiss
        4. Motions for Summary Judgment, Post-Trial Motion for JMOL and Mini-Trials
        5. How the Courts Handle These Motions
    E. Reversal of Federal Circuit Decisions
    F. Trends in Non-Practicing Entity Litigation
        1. Staggering Statistics
        2. Five Districts Handle Most of the Litigation
        3. Experience After Alice
        4. EDTX - A Hotbed of Litigation
        5. Determining Which Judge Gets the Case
        6. Current State of Eastern District
    G. Venue Proposal for Patent Act


Content Provided

With influence and presence on both U.S. coasts and abroad, Pillsbury Winthrop Shaw Pittman LLP enjoys an expansive international platform. The firm has 14 offices in global centers for capital markets, energy and technology and provides its clients with the strength of this reach and a commitment to cross-border service and responsiveness. Pillsbury is a leader in its core areas of focus: capital markets and finance, energy, global sourcing, litigation, real estate, technology, life sciences, and communications.

Learning Objectives:

Prerequisites/Advanced Preparation:

Speakers / Authors:

Photo of Michael Chibib

Michael Chibib
Pillsbury Winthrop Shaw Pittman LLP

Michael Chibib is a partner in Pillsbury Winthrop Shaw Pittman LLP’s Intellectual Property practice and is located in the Austin office. His practice involves all aspects of intellectual property litigation, with an emphasis on district court and ITC patent litigation, as well as Inter Partes Review proceedings, in the areas of semiconductors, telecommunications, electronics, and software. Michael also has experience in IP portfolio counseling.

Prior to joining Pillsbury, Michael was a partner at another major law firm. He also served as vice president and general counsel of Active Power, Inc., a publicly-traded, environmentally friendly backup power solution provider. Active Power develops and manufactures electromechanical energy storage systems utilizing flywheels and high-speed turbines.

Mr. Chibib received his J.D. in 1995 from The University of Texas School of Law, and his B.S. in Electrical Engineering in 1991 from The University of Texas at Austin.

Photo of Barry K. Shelton

Barry K. Shelton
Pillsbury Winthrop Shaw Pittman LLP

Barry K. Shelton is a partner in the law firm’s Intellectual Property practice and serves as head of the Intellectual Property group for the Austin office. He is a trial and appellate lawyer with more than a dozen patent trials before the U.S. International Trade Commission and district courts across the country, and has argued several appeals before the Court of Appeals for the Federal Circuit. Mr. Shelton is lead counsel in cases across all disciplines of electrical engineering, focusing on processor and computer architecture, software, networks and communication protocols, and semiconductors. In addition, he is a registered patent attorney, and has prosecuted patents, performed due-diligence analysis of patent portfolios, and authored pre-litigation and freedom to operate opinions.

Prior to joining Pillsbury, Mr. Shelton was a partner and co-chair of IP Litigation at another major law firm. In addition to seventeen years as a lawyer, he has several decades of experience as an electrical engineer, inventor, and software developer. Other legal and engineering experience includes working with Wireless Knowledge, a joint venture of Microsoft and QUALCOMM, as vice president, corporate counsel; vice president, operations and intellectual property counsel. He was also president and founder of Performance Consulting Group, LLC, a technical instructor at Vortex Data Systems and an electronics engineer for the U.S. Navy at the Naval Aviation Depot in San Diego, California.

Mr. Shelton received his J.D., The Order of the Barristers, in 1998 from the University of San Diego School of Law, his M.S. in Electrical Engineering in 1994 from San Diego State University, and his B.S. in 1990 from Chapman University.


Price (USD)

Standard Rate: $99.00
Subscribers: FREE
Pillsbury U Online: FREE


Course Code : 775556

Release Date: 08/05/2016

Length: 1hr
Recorded Date: 11/4/2015

Format Type: eLearning
Mobile Compatible

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