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IP + Technology Law
Russell Jeide - Partner - Orange County

Russell Jeide

Partner
Orange County
russell.jeide@knobbe.com
949-760-0404
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Overview

Russell M. Jeide is a partner in our Orange County office. He focuses on several areas of intellectual property law, including patent prosecution, due diligence, legal opinion work, and licensing.

Mr. Jeide has prosecuted patent applications in a variety of technologies including computer software, Internet business methods, data processing, artificial intelligence, neural networks, IOT, fintech, blockchain, telecommunications, computer architecture, network monitoring and computer security. Mr. Jeide works closely with Patent Office examiners via frequent trips to the Patent Office to secure the most cost effective and valuable patent protection available for his clients. In addition to being skilled in the intricacies of patent prosecution for utility patents, Mr. Jeide has counseled clients regarding, and prosecuted, design patents and trademarks for software clients.

Mr. Jeide works closely with several Southern California business incubators and investment groups, and enjoys counseling entrepreneurs and start-up companies regarding how to cost-effectively develop an intellectual property portfolio.

Prior to joining the firm, as part of his educational background in electrical engineering, Mr. Jeide focused on implementation of logic circuits, microcomputer design and applications, and digital system interface design. Mr. Jeide joined the firm in 2001 and became partner in 2007.

Education

  • University of San Diego School of Law (USD) (J.D., 2001), Patent and Trade Secret Law CALI Award
  • Brigham Young University (B.S. Electronics Engineering and Technology, 1998)

Bar Admissions

  • State Bar of California
  • U.S. District Court - Southern District of California
  • U.S. Patent and Trademark Office

Affiliations

American Bar Association

Computer Law Association

News & Insights

Speeches & Seminars

  • “When and Where to File for Patents,” InSoCal CONNECT IP Series, February 2016

  • “Software Patent Eligibility – A Post-Alice Landscape Discussion” Knobbe Martens Hosted Webinar, November 2015

  • “Why is Intellectual Property Important,” Innovate. Grow. Connect., Temecula Valley Entrepreneur’s Exchange, November 2014

  • “IP Strategies for Software Tech Companies”, IP Impact Seminar, September 2014 (San Francisco, CA)

  • “Can I Still Get a Patent on That? Best Practices for Protecting Innovations in the Software, High Technology and Biotech Industries”, IP Impact – Silicon Valley Seminar, September 2013 (Palo Alto, CA)

  • “How to use copyrights, trademarks, and trade secrets to your advantage”, Temecula Valley Entrepreneur’s Exchange Seminar Series, June 2013 (Temecula, CA)

  • “The Meaning of Patent Infringement and Patent Litigation”, Temecula Valley Entrepreneur’s Exchange Seminar Series, May 2013 (Temecula, CA)

  • “How to file for a patent”, Temecula Valley Entrepreneur’s Exchange Seminar Series, May 2013 (Temecula, CA)

  • “What Intellectual Property Is, and Why It May Be Important to Your Startup”, Temecula Valley Entrepreneur’s Exchange Seminar Series, May 2013 (Temecula, CA)

Latest Updates and News

Blog - Section 101
Feb 2019
2019 Eligibility Guidance Leads to Unpredictable Results at the PTAB
In January of 2019, the Patent Office, under Director Iancu, issued new guidance to all USPTO personnel evaluating patent subject matter eligibility under the requirements of 35 USC Section 101.  The guidance sought to add certainty to what has been widely recognized as an unpredictable area of law.  (See more about the new guidance at our prior post on the subject.)  The view of most practitioners appears to be that the new guidance is positive for applicants, particularly for patent applications directed to software‑related inventions.  But seasoned patent applicants will recognize that many examiners have their own interpretations of examination guidelines—often not in line with that of the applicant.  And when an applicant is unhappy with a rejection, the next step is generally an appeal to the Patent Trial and Appeal Board.    
Blog - Section 101
Nov 2018
The USPTO’s Director Iancu Discusses Options for § 101 Reform
For both patent Applicants and Patent Office Examiners, the Supreme Court’s 2014 Alice Corp. v. CLS Bank International decision has created ongoing uncertainty as to the proper scope of subject matter that should be excluded from patent protection.  Since the Alice decision, there have been over 40 relevant decisions at the Court of Appeals for the Federal Circuit (and many more at the lower courts) that each attempt to interpret Alice in applying 35 U.S.C. §101.  However, many examiners in the business method art units have allowed only a handful of application since the Alice decision, and many patent applicants have abandoned their patent applications after repeated rejections under section 101.   
Blog - Section 101
Jun 2017
AIPLA Legislative Proposal to Overrule Recent §101 Caselaw
With the continuing uncertainties regarding application of the subject matter eligibility standard enumerated in 35 U.S.C. §101 by both courts and the U.S. Patent Office, organizations that have an interest in clarifying the law are making their views more widely known.[1]  For example, the American Intellectual Property Law Association (AIPLA) recently introduced a proposal to amend 35 U.S.C. §101, “expressly overrul[ing] the current judicially-created framework.” 
Blog - Section 101
Mar 2017
U.S. Patent Office Provides Additional Examples of Eligible Subject Matter
After the Supreme Court case of Alice v. CLS Bank in 2014, the Patent Office has issued a series of examination guidelines and examples to guide examiners and patent practitioners in determining patent eligible subject matter. On December 15, 2016, the Patent Office issued its latest set of example inventions and corresponding patent claims, along with guidance on application of current §101 case law in determining subject matter eligibility of the claims.
Blog - Section 101
Oct 2016
Federal Circuit Distinguishes its Recent McRO Decision
Less than a month after reversing the lower court’s determination of invalidity in McRO, Inc. v. Bandai Namco Games America, Inc., the Federal Circuit has now upheld the invalidity of claims in FairWarning IP, LLC v. Iatric Systems, Inc. that, like McRO, recite computer-implemented application of rules.  The court’s rationale in distinguishing the claims of these two patents, resulting in the different outcomes, is instructive to both patentees and patent challengers.
Blog - Section 101
Sep 2016
Boilerplate – New Consideration in View of Patent Subject Matter
Can boilerplate language describing possible variations to an invention ever impact validity of a patent?  Many software patents include standard “boilerplate” text describing many ways to implement an invention, such as by discussing execution of the software on a smart phone, laptop, mainframe, PDA, audio player, or even a refrigerator!  Often, such boilerplate language is added to patent applications with consideration of broadening the potential scope of the recited terms or providing additional support for recited claim terms.