SFIPLA Monthly Programs

Please join the San Francisco Intellectual Property Law Association in welcoming 
Michael E. Dergosits, Brent K. Yamashita, and Douglas C. Limbach as they discuss:

Deciphering Bilski

In its long awaited decision in Bilski v. Kappos, the Supreme Court rejected the “machine-or-transformation test” as the “sole test” for determining which “processes” are patentable under 35 U.S.C. § 101, and also held that business method patents are not categorically unpatentable.  At the same time, the Court held that the “machine-or-transformation test” was “a useful and important clue, an investigative tool, for determining whether” a process is patentable, and that the Patent Act “does not suggest broad patentability” of business methods. 

What does the Court’s equivocal decision mean?

Our panelists will explore the uncertainty that remains on what business method and other process patents the Courts and the Patent Office will allow under Bilski.  Their discussion will focus on: 

• The patentability of business methods after Bilski
• Litigation challenges to process patents after Bilski
• What to expect from the Patent Office
• How the Federal Circuit is likely to react to the Supreme Court’s invitation that it “develop other limiting criteria” on process patents “that further the purposes of the Patent Act and are not inconsistent with its text.” 

Michael E. Dergosits possesses more than 25 years of legal experience and focuses on handling trials, trial preparation, and counseling regarding patent matters.  Since 1993, Mr. Dergosits has taught patent law as an adjunct professor of patent law at the University of San Francisco School of Law.  In 2005, he was honored as the Distinguished Adjunct Professor of the Year. He frequently speaks and authors publications on intellectual property topics. Mr. Dergosits has held a number of leadership positions in the legal community, including President of the SFIPLA (1993-1994).

Brent K. Yamashita specializes in patent litigation, prosecution, and counseling.  Mr. Yamashita's clients range from Fortune 100 companies such as HP, Sun Microsystems and Samsung to technology startups such as mSpot.  In both 2005 and 2006, Mr. Yamashita was named one of "The Best Lawyers in the Bay Area" in the area of patent litigation by Bay Area Lawyer magazine. He frequently publishes articles on topics relevant to patent litigation and has been quoted by InsideCounsel, CNET News, IP Law360 and the BNA Patent, Trademark & Copyright Journal on new developments in patent law.

Douglas C. Limbach has nearly 20 years of experience in the area of patent law and is a partner at Shay Glenn LLP where he counsels technology companies and investors, primarily in the medical device industry.  Mr. Limbach’s expertise has been shaped by his time as a design engineer in the fields of automated and medical equipment development, a patent agent, an attorney at Limbach & Limbach, LLP and Shay Glenn LLP, and Director of Intellectual Property at TheraSense Inc./Abbott Diabetes Care, a medical device company.  Mr. Limbach is a Past President (2008-2009) and currently sits on the Board of Directors of the SFIPLA.  He frequently writes articles on various patent law topics for medical device periodicals such as MX Magazine and In Vivo Diagnostics Technology, and distributes an electronic newsletter, Medtech Briefs.

Registration is required, as space is limited. 

To RSVP, contact the SFIPLA Administrator at info@sfipla.com . Please include name, firm/company, state bar number, telephone number and e-mail address.

The SFIPLA certifies that this activity has been approved for 1.0 MCLE credit hours by the State Bar of California.  The SFIPLA is a State Bar of California approved MCLE provider (#04052).

QUESTIONS?  Please e-mail us at info@sfipla.com, or contact Monthly Program Chairs
 Alica Del Valle at adelvalle@owe.com or Mike Carlson at MCarlson@schnader.com

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