As the financial services sector continues adopting new technologies to address the growing needs of its customer base, the risk of patent litigation will continue to increase. Fortunately, due to recent developments in case law and the availability of new administrative procedures before the US Patent and Trademark Office (USPTO), financial services companies have a variety of tools at their disposal for protecting themselves.

By way of example, a trio of cases from the Supreme Court between 2010 and 2014—CLS Bank v. Alice Corp., Mayo Collaborative v. Prometheus Labs and Bilski v. Kappos—significantly tightened the standard for patent eligibility under 35 U.S.C. § 101. Financial services companies and other defendants have used this new standard to their advantage, invalidating patents under § 101 at a substantial rate (particularly “business method” patents, which financial services companies frequently find themselves the target of). Similarly, following the Supreme Court’s 2014 ruling in Octane Fitness v. ICON Health & Fitness, which broadened the standard for awarding attorneys’ fees for “exceptional” cases under 35 U.S.C. § 285, patent holders now have reason to pause before asserting, or maintaining assertion of, questionable patent claims. Likewise, defendants continue to have considerable success challenging patents under the USPTO’s inter partes (IPR) and cover business method (CBM) review procedures and using these administrative processes to obtain stays in district court proceedings.

These are but a few examples of recent trends and developments that financial services companies can leverage in defending themselves when facing patent infringement allegations.

Please join moderator Stephen Baskin and William Barrow, Dara Kurlancheek and Saqib Siddiqui as they analyze recent trends, including:

  • Continued evolution of 35 U.S.C. § 101 challenges in various jurisdictions, including an update on the DataTreasury case
  • An overview of the USPTO’s CBM and IPR procedures for challenging the validity of patents outside of district court
  • Recent developments in case law that financial services companies can leverage in litigation and early motions to dismiss under Rule 12 of the Federal Rules of Civil Procedure (or for avoiding it altogether)
  • Other tips for financial services companies to consider, including using indemnity provisions to ensure intellectual property protection for use of third-party technology

CLE credit is pending.

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For additional information, please contact Jeremy Fegley at jfegley@mayerbrown.com or +1 202 263 3019.

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