Nearly every patent practitioner has been impacted by the U.S. Supreme Court’s decision in Alice Corp. v. CLS Bank International, 134 S.Ct. 2347 (2014). Alice applied the two-part eligibility test set forth in Mayo Collaborative Services v. Prometheus Labs, 132 S.Ct. 1289 (2014), i.e., is the claim directed to ineligible subject matter and, if so, is there an inventive concept in the claim that amounts to something significantly more than the mere ineligible subject matter? In Alice, the answer was no on both counts. GT attorneys James DeCarlo, Nicholas Martin, and James Ryerson discuss this and other recent decisions as well as strategies patent litigators and prosecutors should consider in dealing with eligibility challenges in their recent article “Patent Eligibility After ‘Alice.’

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Photo of James J. DeCarlo James J. DeCarlo

Jim DeCarlo is a Shareholder in Greenberg Traurig’s Intellectual Property and Technology Practice. A registered patent attorney and electrical engineer, he is actively involved in virtually all aspects of intellectual property counseling. Jim started his career in the computer industry, and since transitioning

Jim DeCarlo is a Shareholder in Greenberg Traurig’s Intellectual Property and Technology Practice. A registered patent attorney and electrical engineer, he is actively involved in virtually all aspects of intellectual property counseling. Jim started his career in the computer industry, and since transitioning to law has spent over 25 years litigating, licensing and procuring patents in the software, hardware, internet and networking spaces, among many others. Jim’s experience includes litigating patent matters in District Courts around the country, handling matters before the PTAB, counseling clients on the strategic use and management of intellectual property assets, and drafting infringement, validity and freedom to operate opinions.

He also counsels clients on the drafting and negotiating of complex technology agreements and directs the prosecution of patent applications in areas such as networking, artificial intelligence, cloud computing, virtual and augmented reality, IoT, streaming media, electronic commerce, Internet search engines, search advertising, client/server systems, mobile and land based telecommunications, and computer software and hardware.

Photo of James L. Ryerson James L. Ryerson

James L. Ryerson focuses his practice on intellectual property litigation and counseling. He has litigated cases in federal courts around the country, and been involved in post-grant patent proceedings before the United States Patent and Trademark Office’s Patent Trial and Appeal Board. A…

James L. Ryerson focuses his practice on intellectual property litigation and counseling. He has litigated cases in federal courts around the country, and been involved in post-grant patent proceedings before the United States Patent and Trademark Office’s Patent Trial and Appeal Board. A registered patent attorney, Jamie’s experience has involved a wide array of industries and technologies, including electronics, pharmaceuticals, medical devices, manufacturing, computer technology, toys, search engines, automotive technology, and eCommerce.

In addition to his litigation experience, Jamie has experience conducting due diligence for intellectual property transactions, providing opinions of counsel on patent validity and infringement, and prosecuting patent applications.