Bryan Hart and Charlie Bieneman will provide an update on some very current developments in § 101 practice. Our discussion will include the following:

- The Federal Circuit’s recent modification of its decision, and denial of en banc review of that decision, holding claims ineligible in American Axle & Manufacturing v. Neapco Holdings, raises concerns that many mechanical inventions could be held ineligible. We will explore how to address these concerns in patent prosecution and litigation.

- How the USPTO has implemented its January 2019 patent-eligibility guidance which refines application of the well known two-part Alice/Mayo patent-eligibility test. In Cleveland Clinic Foundation v. True Health Diagnostics LLC (April 2019), the Federal Circuit declined to defer to USPTO guidance. We will explore selected recent PTAB decisions to illustrate that the USPTO’s new (as of January 2019) approach to patent-eligibility may not be consistent with the Federal Circuit’s approach, and consider practice tips to use the USPTO’s guidance while at the same time promoting consistency with the Federal Circuit’s application of the patent-eligibility test.