David Vondle Quoted on Governance Implications for Companies

Akin Gump intellectual property partner David Vondle was quoted by Corporate Secretary magazine in the article “Managing intellectual property assets: a governance assessment,” which addresses governance implications for companies following recent developments in legislation and court rulings in the area of intellectual property.

The article notes that recent court cases have changed the balance of power between patent holders and accused patent infringers, and companies need to be aware of these developments to be able to manage such risk and protect themselves. Vondle said, “Patent eligibility has been a big trend for the last five years or so, and it’s been difficult to figure out what framework people should use in figuring out patent eligibility.” He added that the Supreme Court’s decision in Alice Corp vs CLS Bank “put a fine point on the test for patent eligibility” and crystallized the test courts should use to determine whether a business process is eligible for patent protection in the future.

Vondle added that the few cases since Alice that have been decided in favor of patent holders are those found to have patent-eligible subject matter, which tend to involve very specific features or functions of an Internet-based system. As an example, he cited DDR Holdings LLS v. Hotels.com, in which the patent related to methods of generating a composite web page that combines some visual elements of a ‘host’ website with content from a third-party merchant. The Federal Circuit, Vondle noted, ruled that this is acceptable under Alice because the system created by the patent holder is rooted in Internet-based technology.