Jeffrey Lefstin

Associate Academic Dean and Professor of Law UC Hastings College of the Law

  • San Francisco CA

Contacts: lefstinj@uchastings.edu / 415-565-4682 / Office 355-200

Contact

UC Hastings College of the Law

View more experts managed by UC Hastings College of the Law

Biography

Professor Jeffrey Lefstin graduated from Brown University, Sc.B., Biology, magna cum laude (1989); University of California, San Francisco, Ph.D., Biochemistry (1997); and StanfordLaw School , J.D., Order of the Coif (2000). He teaches and writes about patent and intellectual property law. He joined the UC Hastings faculty in 2003 after serving as a law clerk to Judge Raymond C. Clevenger, III, at the U.S. Court of Appeals for the Federal Circuit in Washington, DC. Prior to his clerkship, he practiced patent and antitrust law with the biotechnology and litigation groups at Townsend, Townsend & Crew in San Francisco.

In his previous life he was a molecular biologist, studying mammalian gene regulatory mechanisms and DNA-protein interactions. His scientific papers appeared in Nature, Genes & Development, and the Journal of Molecular Biology. His current research focuses on the intellectual architecture of patent law and problems of interpretation in patent litigation. He has served as an expert witness on patent law matters, and lectured for Patent Bar Review courses.

Media

Social Media

Areas of Expertise

Patent Law
Patent Litigation
Biotechnology
Contract Law
Intellectual Property Law

Education

Stanford Law School

J.D.

Law

2000

University of California, San Francisco

Ph.D.

Biochemistry

1997

Brown University

Sc.B.

Biology

1989

Affiliations

  • State Bar of California : Member (Since 2000)
  • United States Court of Appeals for the Nine Circuit : Bar Member (Since 2000)
  • United States Court of Appeals for the Federal Circuit : Bar Member (Since 2003)

Media Appearances

Ariosa v. Sequenom and the Path Ahead for Subject-Matter Eligibility

PatentlyO  online

2015-06-14

The Federal Circuit has issued its decision in a closely-watched biotechnology case, Ariosa Diagnostics v. Sequenom. The opinion clarifies several aspects of the patent-eligibility inquiry in the wake of Mayo v. Prometheus, and has significant long-term implications for patent-eligibility not only in biotechnology, but in other fields where invention is based primarily on discovery...

View More

Are Specific Information - Processing Claims Abstract Ideas?

PatentlyO  online

2015-05-05

The Supreme Court’s decision in Alice v. CLS Bank resolved the easy cases: claims that merely recite a mode of organizing activity coupled with a generic instruction to “do it on a computer” or “do it on the Internet.” The key question left open by Alice is whether claims to specific information-processing techniques represent ineligible abstract ideas or eligible applications. Answering that question will be critical to resolving cases like California Institute of Technology v. Hughes Communications, Inc., and McRO v. Activision, discussed in Robert Stoll’s Patently-O post last month...

View More

Giving Deference to the Supreme Court in Teva v. Sandoz

PatentlyO  online

2015-01-21

In Teva v. Sandoz, the Supreme Court raised the standard of appellate review of a district court’s factual conclusions regarding extrinsic evidence relied upon during claim construction proceedings. Although the decision represents a relatively small change in procedural law, it is important, both because claim construction has become such a major element of patent litigation and because the Court of Appeals for the Federal Circuit has a history of reversing a high percentage of claim construction decisions...

View More

Show All +

Event Appearances

Legal Indeterminacy and the Path-Dependence of Claim Interpretation

9th Annual Property Symposium  Austin, TX.

2008-02-08

The Formal Structure of Patent Law and the Limits of Enablement

Intellectual Property Scholars Conference  Stanford, CA.

2008-08-01

The Limits of Enablement

MSU Intellectual Property & Telecommunications Workshop  East Lansing, MI.

2008-02-16

Show All +

Selected Articles

The Three Faces of Prometheus: A Post-Alice Jurisprudence of Abstractions

North Carolina Journal of Law and Technology

2015-04-11

While Alice v. CLS Bank has confirmed that patent claims require a further “inventive concept” beyond an underlying abstract idea or law of nature for patent-eligibility, there is little agreement on what defines either an “abstract idea” or an “inventive concept.” Resolving that uncertainty is critical to determining the patent-eligibility of software claims beyond the simple “do it on a computer” type invalidated in Alice. This Article argues that the rationale and two-step analysis articulated in Mayo and Alice represent a fundamental reorientation of the Supreme Court’s jurisprudence, and provide a principled reason to transcend the Court’s earlier § 101 cases. Based on the structure of the Mayo/Alice test, this Article argues for a differentiated framework of “inventive concept,” requiring inventive application for most abstract ideas, but only non-generic application for most laws of nature. Under this framework, two key classes of subject matter remain patent-eligible: claims that do more than reveal the results of an underlying law of nature, and claims to specific and inventive information-processing techniques.

View more

Inventive Application: A History

Florida Law Review

2014-03-31

The Supreme Court’s recent cases on patent-eligible subject matter have struggled to draw the line between unpatentable fundamental principles, such as laws of nature and abstract ideas, and patentable inventions. In Mayo v. Prometheus, the Court suggested that only “inventive applications” of fundamental principles fell within the domain of the patent system. Both Mayo and its intellectual forebear, Parker v. Flook, anchored this doctrine in Neilson v. Harford, the famous “hot blast” case decided by the Court of Exchequer in 1841. But the Supreme Court has founded the inventive application doctrine on a basic misapprehension. Neilson’s patent on the hot blast was sustained not because his application was inventive, but because it was entirely conventional and obvious. In both England and the United States, the hot blast cases taught that inventors could patent any practical application of a new discovery, regardless of the application’s novelty or inventiveness. And for over one hundred years, American authority consistently maintained that practical application distinguished unpatentable discovery from patentable invention. The inventive application test in fact originated in 1948, in Funk Brothers v. Kalo Inoculant, which departed radically from the established standard of patent eligibility. In the wake of Funk Brothers, the lower courts struck down a series of patents unquestionably within the technological arts — arguably the precise innovations the patent system sought to promote. This history is largely forgotten today, but it should serve as a cautionary tale of the patents that could be invalidated if the Court maintains inventive application as the test for patent eligibility.

View more

Rethinking Patent Eligibility for the Modern Scientific Age

UC Berkeley Public Law Research Papers

2014-02-28

As reflected in the Federal Circuit’s fractured opinion in CLS Bank v. Alice Corp., there is no greater confusion in contemporary patent law than that surrounding the scope of patent eligibility limitations. This Supreme Court amicus brief in that case traces the roots of the court-made doctrines excluding patents on laws of nature, physical phenomena, and abstract ideas. It argues that a test of inventive application neither serves the underlying purposes of the patent system nor comports with the process of modern technological advance. As a result of advances in scientific understanding and methods over the past 150 years, many if not most inventions today explicate, manipulate, and control physical, chemical, biological, and digital phenomena at elemental, molecular, algorithmic, and systemic levels. Doctrines that treat conventional application of even newly discovered computer algorithms, molecular pathways, and chemical synthesis as unpatentable threaten to exclude much of the inventive thrust of modern research. Mayo’s requirement for unconventional application shifts scientists’ efforts from the valuable scientific and technological advances that society seeks toward surmounting an amorphous test of non-obvious implementation. Specific and practical application, in conjunction with the technological arts limitation explicated in Justice Stevens’s concurrence in Bilski, would better serve as the test for patent eligibility in the modern scientific and technological age. Particularly in light of past experience, setting inventive application as the test for patent eligibility threatens to undermine invention incentives, hamper patent prosecution, and greatly complicate patent litigation. While recognizing that the problems posed by patents on software and other computer-implemented inventions are real, this brief contends that patent eligibility doctrines beyond requiring specific application and categorical exclusion of business methods and other non-technological processes are poorly suited to address those concerns. It therefore concludes that the Supreme Court should turn away from the Funk Brothers/Flook/Mayo paradigm, and instead focus on elucidating the statutory requirements of patentability. By clarifying the constitutional and jurisprudential foundation for subject matter exclusions, the Court can promote legislative and administrative solutions that more directly address the evolving needs of the patent system.

View more

Show All +