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Surviving Alice with Big Data

Level: Advanced
Runtime: 92 minutes
Recorded Date: October 16, 2018
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  • Applying Data Science to Post-Alice Filing Tactics
  • Surviving Alice with an Allowance Cloud
  • Trends in Eligibility Analyses at the USPTO
Runtime: 1 hour and 32 minutes
Recorded: October 15, 2018


This program will discuss big data analyses of Alice 101 rejections in both prosecutions and litigation settings, providing practitioners with insights on recent trends.

Patent practitioners have struggled since the Supreme Court's decision in Alice Corp. v. CLS Bank Int’l to understand what qualifies as patentable subject matter and to convince adjudicating parties that borderline subject matter is properly patentable under guiding precedent. Simply applying knowledge of the relevant case law and the USPTO’s official examination guidance is often not enough, particularly given the perceived lack of uniformity in how patent eligibility law is applied.

Big data solutions provide an opportunity for creative practitioners to more effectively understand and address Alice 101 rejections, increasing the likelihood that a tactically successful approach is taken. In this program, panelists will offer thoughtful observations on successful and unsuccessful tactics shown through the data and provide guidance that practitioners can use in their day-to-day practice.

This program was recorded on October 16th, 2018.

Provided By

American Bar Association
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Eli Mazour

Harrity & Harrity LLP

Eli Mazour’s practice focuses on helping large technology companies build valuable, high-quality patent portfolios in an efficient manner. Eli has extensive experience in all aspects of patent prosecution, including preparing and prosecuting hundreds of patent applications related to computer software, Internet and e-commerce, telecommunications, networking devices, electronic consumer products, and medical devices.

Eli has particular expertise in developing and implementing innovative patent prosecution strategies for reaching favorable results at the U.S. Patent and Trademark Office. He also helps clients evaluate existing patent portfolios, identify strategic areas for patenting, and create processes for harvesting disclosures of patentable inventions.

In addition, he has been involved with patent litigation, patent infringement investigations, clearance of products (freedom to operate opinions), and licensing negotiations. As a result, he is keenly aware of the pitfalls to avoid and opportunities to grasp during patent prosecution.

Eli is the creator of the Clause 8 podcast, which features interviews with prominent members of the IP community.

Eli started his patent law career at the law firm of Finnegan, Henderson, Farabow, Garrett, & Dunner.

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Ed White

Clarivate Analytics

Ed White is a Director at Clarivate Analytics.

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Katherine Gaudry, Ph.D.

Kilpatrick Townsend

Kate Gaudry, Ph.D., focuses her practice at Kilpatrick Townsend on data-driven and strategic patent prosecution. Specifically, she routinely performs empirical analyses of general, portfolio-level or application-level prosecution techniques to inform her clients’ selection amongst various prosecution strategies. Through this research, she identifies probabilities and predictive factors of success for various approaches. She has authored over fifty publications sharing results of generally applicable analyses. Dr. Gaudry also frequently consults with legal-services companies to help avail big-data, statistical and artificial-intelligence tools to prosecution professionals. Most of her clients are in the software, computers, and quantitative-biology technical areas.

She holds a J.D. from Harvard Law, a Ph.D. in Computational Neurobiology from UCSD, and a B.S. in Physics from Fort Hays State University.

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Mark Nowotarski

Markets, Patents & Alliances, LLC

Mark Nowotarski is the President of Markets, Patents & Alliances L.L.C. and is a registered U.S. patent agent specializing in business method patents. He currently serves clients in the insurance, financial services, medical devices and manufacturing industries.

Mark is also co-editor of the Insurance IP Bulletin. The Insurance IP Bulletin is dedicated to providing useful information to innovators in the insurance industry regarding the protection of their inventions with patents and ways to effectively promote their innovation.

Mark is a former Associate Director of R&D for Praxair. There he was responsible for the development and successful worldwide introduction of new products into the health care, electronics, and manufacturing industries. His initiatives generated over $300 million in sales. He established successful licensing programs with a number of Universities and Health Care institutions including Stanford University, Carnegie Mellon University, and the Children’s Hospital of Pittsburgh. He was a leader in the reengineering of Praxair’s patent system, and was responsible for technology planning for their home health care division.

Mark is an inventor on 17 US patents. He was appointed Corporate Research Fellow for the commercial impact of his inventions.

Mark has a Master’s degree in Mechanical Engineering from Stanford and a Bachelor’s degree with honors in Aerospace, Mechanical Sciences and Engineering Physics from Princeton. His academic awards include the Sigma Xi award for most outstanding Mechanical Engineering research at Princeton and the Union Carbide Award for Academic Excellence and Leadership in Mechanical Engineering, also at Princeton.

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