Clause 8 - SoundSage

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PTO 'whistleblower' Julie Burke and patent prosecution guru Clint Mehall join Eli on the season finale of Clause 8 to break down what’s happening at the USPTO—and what’s still left to be done.

On this episode, they discuss:

Insights from the Reddit r/patentexaminer thread*

Previous and current plans to reduce the record patent application backlog*

Should the USPTO withdraw patent eligibility example 47* for AI?

Previous administration’s decision to end AFCP program* and ideas for variation of AFCP program to help reduce the backlog

*Misguided priorities and personnel decisions during last administration

*Improving morale and performance of examiners

*Adjusting credit system & improving culture to help examiners identify allowable subject matter

Choice of Valencia Wallace Smith as Acting Commissioner for Patents*

*USPTO’s decision to deprioritize examination of continuation patent applications

USPTO rescinding memorandum for discretionary denials at PTAB* and Director taking over handling of the requests for discretionary denials

*Aligning post-grant proceedings at PTAB with mission of USPTO

*Suggestions about switching to a registration system for patents that does not require examination

And, much more!

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What is the actual value of patents? Inventors and companies invest millions in obtaining patents, believing they are valuable assets. Yet, their true worth is rarely quantified.

For this episode of Clause 8, Eli Mazour brings together three of the most insightful experts in the patent valuation space: Michal Malkovich, Vice President at Charles River Associates; Alejandra Loaiza Delgado, Co-Founder and Managing Director at Econ Edge; and Mike Pellegrino, President and Founder of Pellegrino & Associates.

Throughout this discussion, you’ll notice that despite their different experiences and perspectives, they share one goal: getting to the truth about patent valuation.

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Host Eli Mazour talks with Heath Hoglund, President of Via LA, to break down the role of patent pools in today’s innovation landscape.

Tune in as they discuss:

*The balance between licensors and licensees—and how Via LA acts as a bridge between them

*Merger of Via Licensing and MPEG LA in 2003 to form Via LA

*How Dolby’s strong brand helped it succeed with technology licensing

*The challenges of starting a new patent pool program and what makes one successful

*Future of patent pools

*Heath’s story of founding Puerto Rico’s first IP boutique before becoming head of IP & standards at Dolby

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Kathy Duda is the President of The Patent Office Professional Association (POPA), which is the union representing USPTO patent examiners. On this episode, she discusses why she remains hopeful amidst current uncertainty around new return to office policies.

In the episode, she also discusses:

*Positive collaboration with Acting Director Coke Morgan Stewart

Getting first involved with POPA after it helped her during her pregnancy

Negotiating the first collective bargaining agreement (CBA) with the USPTO in 40 years

Why she’s not getting a whole lot of sleep recently

Examiners waiting for finality regarding decisions about being able to continue to work remotely

Record backlog reached at the USPTO during last administration & work to bring it down

Impact of AI & what examination might look like in 30 years

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Join Eli Mazour as he explores the vital role of the U.S. patent system in fostering innovation. Entrepreneur Patrick Murray shares his journey from ideation to patent acquisition with Radium Payments, emphasizing the importance of intellectual property in business validation. Lisa Mueller, host of the AUTM on the Air podcast, delves into tech transfer, revealing how universities push innovations from labs to marketplaces. This episode underscores patents as essential drivers of American entrepreneurship and academic innovation, providing a nuanced look at their ongoing impact on business and technology.

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In this special episode of Clause 8, Eli shares why Coke Morgan Stewart is the perfect person to lead the USPTO. Eli discusses why her selection excites him and the broader implications for the intellectual property field. Reflecting on past directorships and the challenges faced by the USPTO, Eli explores issues such as patent backlogs, Section 101 rejections, and PTAB policies. Highlighting Stewart's experiences and skills, Eli shares his optimism for positive changes under her leadership.

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What better way to wrap up 2024 than a conversation around the future of the USPTO with David Boundy.

David is one of the sharpest minds at the intersection of administrative law and intellectual property. Plus, during his tenure at Cantor Fitzgerald, David worked closely with its visionary CEO, Howard Lutnick, who is leading Trump’s transition team and Trump’s pick for Commerce Secretary.

This episode includes David’s thoughts on:

Why the next USPTO Director should prioritize examination quality, efficiency, and public interest-driven rule-making.
Advocating for administrative practices that serve innovators better rather than prioritizing bureaucratic processes.
His time at Cantor Fitzgerald and what it’s like to work with Howard Lutnick.
Where he gets his personal passion for justice and belief in the patent system as a crucial engine for innovation and economic success.

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Earlier this year, Eli had the opportunity to spend a day in Israel with Ariel Dubinsky, the founder and owner of Ariel Dubinsky Law Firm. While there, Eli learned that Ariel is at the heart of Israel’s dynamic intellectual property ecosystem. Ariel mainly focuses on trademarks and copyright, which is increasingly important for the so-called “Startup Nation” which saw a record breaking $10.5 billion in startup acquisitions just this year.

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In this special episode of Clause 8, host Eli Mazour takes us behind the scenes of the Consero IP Forum, where he spoke with IP leaders about common pain points and solutions. Guests include:

Dimitri Kirimis, Lead Counsel at Cruise
Scott Miller, Chief IP Counsel at Zoetis
Joel Meyer, VP of IP and Innovation Strategy at Digimarc
Praveer Gupta, Director of Patents and Innovation Strategy at Uniphore

This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

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This week’s Clause 8 episode features Bridget Smith, Assistant General Counsel and Director, Intellectual Property at Relativity Space—the first company to successfully create and launch a 3D-printed rocket. 🚀

Bridget, who previously made waves as a top PTAB practitioner, is now at the helm of IP strategy at Relativity Space, where she’s implementing an innovative approach to IP by using a trade secrets registry. In an industry that moves at light speed, Bridget’s focus on tracking and protecting proprietary know-how is as critical as her work with patents.

In this episode:

How Bridget established a trade secrets registry that captures and protects a vast amount of innovation efficiently.
How the specific needs and exposure of the space industry affects Relativity Space’s balance of trade secrets and patents.
Why Bridget thinks of IP management as understanding what keeps business leaders up at night.
How she maintains adaptability and foresight when working with groundbreaking tech.

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Jerry Ma, Director of Emerging Technologies and Chief AI Officer, and Charles Kim, Deputy Commissioner for the USPTO tell story of co-chairing USPTO's AI working group - sharing insights on USPTO's AI tools guidance, applying §101 for AI-related inventions, and leveraging AI for examination.

Together, the two co-lead a group working on AI efforts and according to Jerry are focused on “a human first vision for AI at the agency.”

In the episode, host Eli Mazour explores how Jerry and Charles led USPTO’s efforts to deal with AI advancements on the policy front & leverage AI technology to improve USPTO’s own operations before ChatGPT was even a thing. The two leaders come from diverse backgrounds—Jerry with deep experience in Silicon Valley’s tech sector, and Charles with decades of IP and regulatory expertise at the USPTO.

Selected Topics

Start of USPTO’s AI working group, originally co-chaired by Charles Kim and Deputy Director Coke Morgan Stewart, to tackle §101/patent eligibility issues related to AI

Expansion of AI working group to coordinate AI related activities across the USPTO, including exploring leveraging AI technology for patent examination

Jerry Ma’s story of joining the USPTO from Silicon Valley to be Director of Emerging Technologies and taking on role as co-chair of working group

How AI implementation at the USPTO relies on cross-disciplinary teams drawing expertise from law, technology, and policy

Working groups’ efforts to engage with outside stakeholders through the AI/ET Partnership Series to create informed policies around AI and patent eligibility

USPTO’s guidance on (1) use of AI-based tools, (2) AI-assisted inventions, and (3) AI subject matter eligibility and responses to related push-back

USPTO’s current use of AI technology & future plans to further leverage AI technology to empower examiners

Role of AI working group as AI becomes widely used within USPTO

Advice for other organizations exploring implementation of AI

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In the ever-evolving world of retail, where technology and innovation are reshaping the industry, managing intellectual property has never been more important. Sri Atluri, Walmart’s Chief IP Counsel, knows this all too well.

In this episode of Clause 8 with host Eli Mazour, Sri emphasizes the critical balance between protecting innovations and fostering strategic growth within Walmart’s technological initiatives. She argues for the necessity of continual IP enforcement, detailing how both protection and litigation play essential roles in maintaining Walmart’s competitive advantage. Sri also discusses the evolving landscape of e-commerce and the challenges posed by Section 101 and patent eligibility.

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In this special episode of Clause 8, host Eli Mazour speaks with Ann Cathcart Chaplin at the Qualcomm Museum, which is right at the heart of Qualcomm’s headquarters in San Diego. Ann shares her journey from being an IP litigator to in-house counsel and from GM to Qualcomm.

As General Counsel of Qualcomm, Ann oversees all legal matters for the world’s leading innovator of connectivity solutions. Before Qualcomm, she served in a variety of deputy general counsel roles at General Motors (GM). Ann spent most of her career prior to that focused on IP litigation, including as litigation practice group leader at one of the world’s biggest IP firms.

Her leadership experience at a major auto company before joining Qualcomm provides her with a unique vantage point about the role of standard essential patents (SEPs), the relationship between cellular innovators like Qualcomm and auto companies, and the surrounding debates.

From her beginnings in Minnesota, initial aspiration to become a public defender as a Harvard Law student, and eventual transition into IP litigation, Ann shares her unlikely journey. Now at Qualcomm, she touches on the challenges and opportunities of navigating IP issues in one of America's most significant and innovative tech companies, which relies heavily on a functioning IP system that promotes innovation.

Ann Chaplin's transition from IP litigation at a law firm to in-house counsel at GM is a significant highlight of this episode. She discusses adapting her IP litigation skills to address GM's pressing legal concerns, including for diverse fields such as product liability, class actions, and corporate governance,. Ann's role at Qualcomm involves overseeing IP and licensing, emphasizing its critical role in driving innovation. Her key concerns include attacks on the patent system and the need for policies that support sustainable R&D investments.

Check out the full VIDEO Interview on Voice of IP

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Laurie Fitzgerald joins Eli to tell the story of how she led Avanci to an 8-year overnight success. Avanci’s pioneering efforts to provide an efficient, simpler option for the automotive industry to license cellular SEPs are now widely heralded as one of the greatest stories of successful innovation in the patent world. Laurie, who has been with Avanci since 2018, shares her journey and the strategic decisions behind the one-stop shop licensing platform that now boasts participation from 70 licensors and 100 automotive brands.

The discussion highlights how Avanci navigated the complexities of linking cellular innovators with automotive manufacturers, detailing how they established a uniform licensing fee and why this model works efficiently for both licensors and licensees. They discuss the role of independent patent evaluations, the challenges of negotiating acceptable agreements among varied stakeholders, the process for determining royalty allocations, and what others can learn from Avanci about how the private sector can provide efficient solutions for SEP licensing.

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What is the value of protecting intellectual property (IP)?

That’s the fundamental question that most Chief IP Counsel need time to answer to help their companies succeed. However, they’re often bogged down by the daily demands of leading teams that are doing what’s necessary to make sure that they’re obtaining the necessary IP protection. When they do have a chance to pose and answer that question to business executives, they quickly realize that those business executives are concerned with more pressing issues. When they succeed and those business executives start getting excited about the potential value of protecting IP, in-house counsel has the added responsibility of making sure they can follow-through.

In this episode of Clause 8, Eli sits down with the founder & CEO of Tradespace, Alec Sorensen, to discuss potential strategies for in-house counsel facing these challenges. Alec talks about how he first discovered these challenges of in-house IP counsel while being asked to wade through messy IP portfolios of acquired companies as a management consultant. He explains how he was able to facilitate over $250 million in commercialization deals in that role and how that led him to found Tradespace to help in-house counsel set up their companies for similar success.

Eli and Alec explore the complexities of IP development and the potential to unlock hidden value in patent portfolios, how and when to communicate with the C-suite about IP, how IP teams can get other parts of the company become champions for its role, the role that commercialization plays for Tradespace tools, and much more!

Selected Topics

How lean, efficient IP teams are able to contribute to business success
IP team demands leading to lack of business relationships
Handling analysis paralysis in IP with analytics
Strategic IP questions for a new CEO
Successful IP strategies for universities
Role of AI in empowering IP decision-making
Risk of AI diminishing human judgement
Advice for tech entrepreneurs in the IP space
Customers using Tradespace to create better processes

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We’re looking forward to sharing new episodes from this season starting next Tuesday, including special video episodes on www.VoiceOfIP.com and a series of interviews with the most significant corporate IP leaders in America.

In the meantime, we wanted to share episodes released this summer:

Former USPTO Director Andrei Iancu and HTIA’s David Jones found a surprising amount of agreement regarding Section 101 on the first ever Clause 8 debate

Iancu & Jones Debate Section 101 and Find Common Ground

Federal Circuit Judge Timothy Dyk shed light on what’s going on at the court by discussing his memoir, Timothy B. Dyk: The Education of a Federal Judge

Judge Dyk Defends Today's Federal Circuit

RNA Law’s cofounders - Rob Rodriguez and Tatiana Alves - discussed everything you need to know about Brazil’s booming patent system

Brazil Becoming the Mecca for Patent Enforcement & Chief IP Counsel Seeking Valuable Patents

Erich Spangenberg shared the secrets to his success - "very few people want to start out wearing the black hat. I just embraced it" . . . and his plans for IPwe

Erich Spangenberg on How to Succeed in Patent Monetization

Chief IP Counsel at Dana-Farber Cancer Institute and former General Patent Counsel at Eli Lilly - revealed why Eli Lilly slashed its patent filings and talked about how the administration’s march-in proposal is already scaring away pharma companies from pursuing promising treatments

Moneyball for Pharma Patents with Chief IP Counsel Steve Caltrider

Florian Mueller - currently of IP Fray and formerly of FOSS Patents blog - kicked of this season by sharing his remarkable journey from leading a major fight against pro-software patent legislation in Europe to becoming one of the most influential voices in the IP world

IP Fray's Legendary Publisher on What Will Happen with EU's SEP Regulation & AI’s Impact on Patent Law

*Disclaimer: This podcast is provided for general informational purposes only and is intended as a general overview. The podcast does not constitute legal advice nor solicitation to provide legal services. It is not meant to convey a legal position, nor is it intended to convey specific legal advice. The opinions expressed are solely my own and those of any guests and do not express the views or opinions of any organization with which I or the guests are affiliated. In some jurisdictions, the contents of this podcasts may be considered Attorney Advertising.

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Federal Circuit Judge Timothy Dyk discusses his memoir and provides priceless insights into how the Federal Circuit is operating today - 42 years after it was created in 1982 and 24 years after Dyk was confirmed to serve on it in 2000.

This episode explores Dyk's perspectives on judges serving together at the Federal Circuit. His reflections and anecdotes offer a unique glimpse into the workings of the Federal Circuit, the decision-making process of a seasoned appellate judge, and various debates surrounding the Federal Circuit and judges retiring.

Dyk was nominated to the Federal Circuit in 1998 by President Bill Clinton after clerking for Earl Warren at the Supreme Court and a distinguished career as an appellate attorney at the law firms of Wilmer Cutler and Jones Day.

Selected Topics:

First introduction to patent law: office linoleum floors & yacht named Pat Pending
Role of chief judges setting court dynamics
Collegiality, dissents, and importance of individual personalities & relationships among judges
Judge Dyk's process for considering cases before oral arguments
Dyk’s defense of Rule 36 decisions and insights into other Federal Circuit practices
Panel dependency & skepticism of empirical scholarship related to judicial decisions
Former clerks arguing cases before judges they clerked for
Providing additional jurisdiction to Federal Circuit
Cameras in federal courtrooms & privacy in intra-court deliberations
Judicial retirement decisions and importance of humility
Advice for effective oral and written advocacy before the Federal Circuit, including for amicus briefs

Notable, Quotable:

Biggest challenge

"I think the biggest challenge for any Federal Circuit Judge in patent cases in particular is is dealing with the technology . . . getting the help that you need to understand the technology. It’s really hard. And we need help from the bar, we need help from our clerks, and we need to be willing to spend a lot of time to wade through it."

Role of collegiality

"Collegiality makes for better decision making, first of all. And second of all, it makes it a nicer place to be. You get along with your colleagues. The job is a lot better."

Qualities of best written briefs

"A brief that is candid about what's going on, that recognizes that there's another side to it, that's nothing shrill, that's statesman like, that's objective. Those are the qualities that we value most."

On Judge Pauline Newman

“I always enjoyed sitting with Judge Newman. I enjoyed having Judge Newman as a colleague and occasionally we did panels together. I remember we went to NYU and presented ourselves as being close colleagues even though we disagreed a lot of the time. Judge Newman was a terrific colleague, and I enjoyed being her friend.”

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Clause 8 Podcast Show Notes

Rob Rodriguez and Tatiana Alves - Brazil’s go-to attorneys for strong patent protection and effective enforcement - join Eli to talk about founding RNA Law and offer insider perspectives on successfully navigating the Brazilian patent system.

Rob discusses how Brazil’s large market size and the predictability of obtaining injunctions is attracting foreign businesses looking for robust patent protection. He also talks about how Brazil is becoming an even more favorable venue for patent litigation because, with more cases being filed, the knowledge level of judges and the predictability of court rulings are also improving.

The discussion also provides a comprehensive overview of:

the examination process at the Brazilian patent office,
the possibility of leveraging European and US patent grants for faster approval,
opposition proceedings,
the nuances of securing injunctions, and
pursuing patent protection in Brazil as part of a broader global IP strategy.

**Bonus segment at the end: Eli ruminates on the founding of RNA Law coinciding with the rising significance of patents in Brazil. He then discusses the related trend of sophisticated chief patent counsel focusing on obtaining valuable patents that actually meet their companies’ strategic goals in the US.

Selected Takeaways:

Integrated legal-technical strategies significantly enhance the success rate in patent litigation within Brazil.
The Brazilian patent office is becoming more efficient, though the examination process can still be lengthy, particularly in the telecom sector.
Pharma patent applications face more scrutiny in Brazil but that can be navigated effectively with the right strategy.
Obtaining injunctions - including ex-parte injunctions - in Brazil is feasible and can be a powerful tool in patent enforcement, though it is highly dependent on the specifics of each case.

Notable, Quotable

"Judges in Brazil are very much concerned about getting it right. They understand the importance of patents for innovation." – Rob Rodriguez

"The biggest expense for a company in obtaining a patent is actually asking for their inventors’ time." – Eli

Resources:

RNA Law Website
Voice of IP on launch of RNA Law

To explore these insights and leverage them for your IP strategy, don’t miss the full episode.

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Clause 8 favorites - former USPTO Director Andrei Iancu and HTIA’s David Jones - return for the first ever Clause 8 debate!

They debate Section 101, find common ground, and discuss possible paths forward for improving the state of patent eligibility in America.

Selected Topics

Impact of Federal Circuit’s State Street decision: "golden age of business method patents”
Supreme Court’s Section 101 decisions: Bilski, Mayo, Myriad, and Alice
Iancu’s role & thoughts about Ariosa v. Sequenom
Why Jones was concerned after Alice and what changed his mind
Federal Circuit’s handling of Section 101 after Alice
Agreement regarding the USPTO’s 2019 Revised Patent Eligibility Guidance
77% Rate of Section 101 Rejections in USPTO's AI Tech Group
Whether the Patent Eligibility Restoration Act (PERA) is a step toward a successful compromise in Congress
Possible adoption of EPO’s approach to patent eligibility

Notable, Quotable

"Patents are not just any other area of law. Patents are legal instruments, of course, but they're also commercial instruments." - Iancu

"What I think we disagree on is you don't think that the sky is falling when it comes to 101 . . . as is in the United States now, I do think the sky is falling." -Iancu

"Let's make the law clearer. Clearer law is always better." -Jones

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His critics have called him “one of the most notorious patent trolls in America.” Many others have tried and failed to emulate his success. However, it’s hard to deny that Erich Spangenberg is in many ways a singular visionary in the world of patents. As the founder of IPNav, he completed over 1000 licensing transactions - worth billions of dollars.

To the surprise of many, he then joined forces with hedge fund manager Kyle Bass to challenge pharma patents under the AIA. More recently, he founded IPwe - a blockchain-based platform for patent transactions. If there are celebrities in the patent world, its’ Erich Spangenberg.

On this episode, Erich shares the story of how being sued for patent infringement by Ronald Katz led him to embrace the patent monetization field. He also shares his strategies for successful patent assertion, his candid perspective on being labeled a “patent troll,” why big corporations wanted him to work for them, what he thinks the role of generative AI will be for IP, his plans for IPwe after its bankruptcy, and much more!

Key Takeaways:

Innovative Approach to Patent Assertion: Erich Spangenberg's strategies involve early information sharing and comprehensive presentations to inform and engage potential infringers.
Learning from the Best: Insights gained from industry veterans like Ron Katz and applying asset management principles, rather than merely advocating, have been keys to Erich’s success in patent monetization.
Impact of America Invents Act (AIA): Addressing the ramifications of AIA, Erich explains how his collaboration with Kyle Bass aimed to showcase its flaws and its current role in pharma patent challenges.
Future of Patent Transactions: Despite challenges, Erich remains optimistic about utilizing blockchain and AI for creating an efficient marketplace for patents.

Notable Quotable:

"Not every patent asset is a great one. As a matter of fact, the vast majority of them aren't."

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Why does an $850 billion pharma company obtain only 50 patents per year?

Steve Caltrider, Chief IP Counsel at Dana Farber Cancer Institute, brings over 35 years of experience building valuable pharma patent portfolios and championing patent policies that promote innovation. Before Dana Farber, Steve rose to the role of General Patent Counsel at Eli Lilly. Steve has also served on the USPTO's Public Patent Advisory Committee and is currently the Chair of the ABA Section of IP Law.

In this episode, Steve shares the story of why and how he relied on data to reduce Eli Lilly’s patent portfolio, and explains why obtaining less patents is likely the better strategy for many large companies.

He also discusses the critical role of IP in getting medical innovations to patients, the potentially catastrophic impact of the administration’s march-in proposal, and his take on various developing patent policy issues.

Selected Topics

IP’s indispensable role in commercialization
Section 101 mess hindering development of diagnostics & potentially reducing drug costs
Data-driven patent strategies in the pharmaceutical industry
Impact of excessive USPTO fees on start-ups and smaller companies
How IP strategy differs at academic research institutions versus major pharmaceutical companies
Successfully navigating a career in patent law as in-house counsel
Role of outside counsel
Why all patent attorneys should pay attention to patent policy developments

Notable, Quotable

On the role of IP in ensuring that medical research reaches patients

“It’s roughly a billion dollars to develop that drug and actually make it accessible to patients as a drug. No one’s going to make that investment without IP. My role at the institute is to protect that discovery so that somebody will make that investment. Without the investment, it’s just going to sit in the laboratory and it’s not going to go anywhere and it won’t reach patients.”

On the impact of march-in proposal on non profits like Dana-Farber

“I’ve already had partners tell us: I’m willing to sponsor your research, I’m willing to help fund your research, but it can’t have any federally funded funding associated with it. Well, that can be catastrophic to us.”

ABA-IPL Chair’s Town Hall: Planning a Better Patent System

Register for “Session 6: How Far Can, And Should , USPTO Rulemaking Proceed in Addressing Issues of Double Patenting”: https://www.americanbar.org/groups/intellectual_property_law/events_cle/aba-ipl-chairs-town-hall/

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Florian Mueller shares his remarkable journey from leading a major fight against pro-software patent legislation in Europe to becoming one of the most influential voices in the IP world. For over a decade, his FOSS Patents blog became the go-to destination for anyone who wanted to follow developments related to standard-essential patents (SEPs). After a brief hiatus, Florian recently reemerged as the publisher of ip fray, which is quickly starting to play the role for all of IP that FOSS previously played for SEPs.

Drawing on his extensive background, Florian provides fascinating insights about what led to the European Union’s controversial SEP proposal, the potential outcomes, and the burgeoning influence of AI on patent law. He also shares the story of why and how Real Madrid came to him asking for help along the way.

Key Topics:

How German court decisions and other alleged dynamics led to EU’s pending SEP proposal
Problems with EU’s pending SEP proposal
How the rest of the process is likely to play out at the EU & related strategies
Why innovators are at a disadvantage in the debate
Shifting views of different tech companies regarding SEPs over time
Role of patent pools/platforms in the SEP battles
Impact of AI

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For almost 30 years - under the leadership of giants like Marshall Phelps, David Kappos, and Manny Schechter, IBM led in obtaining the most patents per year. However, in 2020, IBM made the decision to no longer pursue the goal of “numeric patent leadership.” It went from obtaining over 8500 patents in 2021 to, by some counts, less than 5000. Nonetheless, IBM remains one of the top American patentees.

Mark Vallone joins Eli to discuss how he stepped into one of the most significant roles in the patent world last year while this dramatic shift in IBM’s patent strategy was taking place.

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On this episode, Mark talks about how IBM's heritage of innovation and patent leadership informs its decisions. He also provides an in-depth perspective on why and how IBM transitioned away from numeric leadership goals and toward a more balanced, quality-focused approach.

The episode provides thought-provoking insights into the challenges of growing and managing a vast IP portfolio, including the value of incentive programs for inventors and the mechanics behind strategic patent portfolio pruning decisions.

Key Topics:

Succeeding as in-house counsel
IBM's Strategic Shift - departing from their numeric patent leadership goal to focus on patent quality and aligning with their current business model.
Portfolio Management - detailed advice on pruning patent portfolios, including strategies for maintenance fees and monetization.
Hybrid Model - how and why IBM uses both in-house and outside counsel for patent preparation and prosecution work
Harnessing AI in Patenting - the future role of generative AI in improving quality of patent applications and the productivity of patent drafters, and the importance of cautious adoption considering legal and ethical implications

Notable, Quotable

On continued role of numeric goals

"I don't think you abandon numbers. I think they're certainly a part of the calculus, and you have to look at that in order to adequately protect your business."

The one change he’d make to America’s patent system

"I would love to see us fix subject matter eligibility. I would love to see us restore that certainty to the system."

Please share with others!

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J. John Lee is the Chief Counsel for IP in the US House of Representatives and helms the House Subcommittee on Courts, Intellectual Property, and the Internet, which is chaired by Congressman Darrell Issa. In that role, he is one of only four staffers in Congress who focus on IP issues and help set the agenda for what happens with America’s IP system.

John joins Eli on this lively episode to discuss how he ended up in that role after serving as a Lead Judge on the PTAB, how he is currently working closely with the other IP staffers in Congress to advance legislation to fix Section 101 and the PTAB, what it will take for Section 101 legislation to pass, why broad consensus is necessary for IP legislation, what’s driving the bitter disagreements over IP issues, and much more! The episode was recorded at the end of last year.

If you know anyone else who might be interested to learn what changes might be in store for patent law or how the patent policy sausage is made in Washington, please share with others:

Selected Timestamps

| 0:04:52 | How John Lee became Chief Counsel for IP in the House of Representatives |

| 0:08:05 | John Lee's role as Chief Counsel for IP and his relationship with Issa and Judiciary Chair Jim Jordan |

| 0:10:18 | John Lee's experience stepping into his role on the Hill |

| 0:12:13 | Making positive impressions on IP staffers in Congress |

| 0:16:04 | Trajectory of patent system over last 20 years |

| 0:24:52 | Proposal to exercise march-in rights under the Bay-Dole Act |

| 0:31:27 | Administration’s failure to build consensus on - and widespread congressional opposition to - proposals to waive & seize IP rights|

| 0:33:26 | Uncertainty and lack of administration policy on standard essential patents (SEPs)|

| 0:38:08 | The need to protect US leadership in technology and innovation |

| 0:39:19 | Concerns about the state of Section 101 and the weaknesses of the patent system |

| 0:44:04 | How patent system creates an innovation engine by encouraging disclosure of innovations |

| 0:45:12 | Importance of consensus for significant changes in IP law |

| 0:49:54 | Cooperation between Republicans and Democrats on IP, AI, and other related issues |

| 0:53:39 | Heated opposition in House on USPTO’s ANPRM proposing changes for the PTAB |

| 0:57:12 | Optimism for patent bills and substantial progress in the House and Senate. |

| 1:02:28 | Possibility of introducing companion bills for Patent Eligibility Restoration Act (PERA)|

| 1:05:13 | Pain points that might drive agreement on Section 101: third party litigation funding, discretionary denials at PTAB, and standard essential patents (SEPs) |

| 1:06:26 | Negative impact on Federal Circuit from suspension of Judge Pauline Newman |

| 1:07:57 | Role of lobbyists in development of IP policy |

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In this special two-part episode, we delve into the creation, implementation, and strategic importance of Europe's Unified Patent Court (UPC) with UPC Judge Michael Fleuchaus and Dr. Benjamin Grau. The first part of the show highlights Judge Fleuchaus' experience as a newly appointed technical qualified judge at the UPC. Judge Fleuchaus discusses the motivations behind the UPC's establishment and overarching goal to streamline patent litigation across the European Union. He also discusses his role as a technical judge working alongside experienced legally qualified judges and shares the perspective they bring to handling cases together at the UPC. This segment provides priceless insights about how UPC proceedings differ from patent litigation within and outside of Europe and how litigants can maximize their chances of success at the UPC. In the latter part of the episode, Dr. Grau provides a distinct viewpoint as a European patent attorney closely observing the UPC. Dr. Grau casts light on the myths and practicalities surrounding opting in or out of the UPC and gives valuable advice on how to leverage the UPC to obtain the best possible patent protection in Europe. Dr. Grau's perspective is crucial for those interested in understanding the strategic considerations that come into play with the UPC's inception.

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This year, the U.S. Chamber of Commerce brought together a diverse group of stakeholders and thought leaders in support of a framework of IP Principles. These IP Principles are part of an initiative to help America overcome a sustained effort to demonize intellectual property rights over the last 15-20 years.

Patrick Kilbride and Brad Watts, from the U.S. Chamber’s Global Innovation Policy Center (GIPC), join Eli to talk about leading this initiative, the current narrative on IP rights and the forces that shaped it, the themes of the IP Principles document, and what they hope to accomplish. They also discuss why the U.S. Chamber cares so much about IP issues, whether patents are underappreciated compared to other IP rights, and much more!

IP Principles: https://www.uschamber.com/assets/documents/A-Principled-Approach-to-a-New-Narrative-on-IP.pdf

This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

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Matteo Sabattini is well known in DC patent policy circles from his previous role as Director of IP Policy at Ericsson. He now joins Eli from Italy to discuss his new role as President and Chief Licensing Officer of Convida, what he learned from his time in DC, keys to building a successful licensing program, why recent attempts to regulate licensing of standard essential patents (SEPs) are misguided, and much more!

Selected Timestamps

| 0:11:03 | How shifting value from devices to services & platforms impacts who should license patents |

| 0:17:46 | Licensing fueling further innovation |

| 0:18:56 | Successful licensing means getting to point where both sides are equally unhappy

| 0:19:20 | Importance of communicating the value of R&D for a successful licensing program |

| 0:21:17 | Feedback loop between licensing and prosecution departments is crucial |

| 0:25:41 | Why litigation is not always an indication of bad faith|

| 0:26:30 | Unwilling licensees posing a toll on innovation |

| 0:32:35 | Lessons learned from working at Sisvel |

| 0:34:38 | Avanci and others proving that markets are functioning efficiently because of industry-led, licensing solutions and that new government regulations aren’t necessary |

| 0:38:57 | IEEE's patent policy change sparking Matteo’s interest in policy|

| 0:40:44 | Taking on policy role at Ericsson at low point of America's patent system|

| 0:44:03 | Need for coalescing between different pro-patent interest groups |

| 0:48:14 | Impact of issuance and withdrawal of SEP policy statements in the US |

| 0:51:11 | European Commission's draft SEP proposals to supposedly help SMEs |

| 0:56:22 | Idea to actually help SMEs with licensing of SEPs instead of unworkable regulation |

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Ed Murgitroyd joins Eli Mazour to tell the stories of building Murgitroyd into one of Europe’s biggest IP law firms and his disruptive new venture Hexos IP. Murgitroyd was founded by Ed’s father Ian Murgitroyd in Scotland in 1975. Ed eventually joined his father and became the CEO of Murgitroyd before it was acquired by a private equity firm, Sovereign, in 2019.

On this episode, Ed talks about:

Story of his father, Ian Murgitroyd, starting Murgitroyd in Glasgow in 1975 thanks to a loan from a mysterious benefactor
Growing into one of the world’s biggest hubs for IP services
Expanding into Europe and all over the world through acquisitions & why some of those acquisitions failed
Murgitroyd becoming the first and only law firm to go public on the London Stock Exchange
Lessons learned sitting across from his father
How moving to the states with his American wife led to a hard-won windfall for Murgitroyd
Why Sovereign’s acquisition for £63 Million left a bitter taste
Non-attorney ownership of law firm & why “who’s pulling the strings” is what ultimately matters
Hexos IP disrupting the global renewals and annuity services industry

Mentioned article: “Ian Murgitroyd pens a Letter to my Younger Self” https://www.insider.co.uk/special-reports/ian-murgitroyd-pens-letter-younger-17680540

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Ofinno’s founder Esmael Dinan and CEO Kavon Nasabzadeh join the Clause 8 podcast to tell Ofinno’s unique story of succeeding in the patent monetization space and talk about its plans for the future.

After spending years as an inventor at a large operating company, Esmael came to the conclusion that most such companies aren’t good at obtaining valuable standard essential patents (SEPs) on their own. This spurred him to found Ofinno in 2011, an R&D lab that would obtain such patents. He almost quit after spending his savings and initially failing to find any buyer for Ofinno’s patents. Instead, Ofinno went on to sell patents to companies like Samsung, Comcast, Huawei, and Honda. Ofinno recently joined Avanci’s 5G Connected Vehicle licensing program and is executing on plans to start its own licensing programs in a wide variety of other technology areas, including next generation Wi-Fi, video compression, and semiconductors.

Esmael and Kavon also discuss:

Kavon joining Offino as its first in-house patent attorney and becoming CEO earlier this year
How Ofinno structures its patent development program to obtain valuable patents
And, much more!

This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

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Amit Soussana is an IP attorney at one of Israel’s leading IP firms, Luzzato and Luzzatto. She is also one of more than 240 people – including babies, children, women, the elderly, and the disabled - who were brutally taken hostage by terrorists from Gaza on October 7th. More than 40 days later, almost all of them are still being held hostage.

Kfir Luzzatto, the senior partner of Amit’s law firm, joins Clause 8 to talk about the story of that horrific day, Amit, the ongoing horror that the hostages’ families are experiencing, and the urgent efforts to increase awareness.

Please share this story.

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Clause 8 is back for a new season! To start the season, Eli – for the first time on Clause 8 - shares his own thoughts at length about the hottest debates in the patent world.

On this episode, Eli discusses:

The horrific October 7 terrorist attacks on Israel and more than 240 Israelis still being held captured by the terrorists
His “first IP interview” with then Israel Patent Office Director Asa Kling
ChatGPT spurring changing attitudes towards potential of AI compared to when he interviewed DABUS’ legal mastermind Ryan Abbott
Patent practitioners failing to embrace new software tools & skepticism regarding using AI
How USPTO’s first Director of Emerging Technologies Jerry Ma & rest of USPTO have led on AI
Future of using AI for patent practice
Big Tech’s current view of state of America’s patent system and impact on patent policy debates
Takeways from moderating IPWatchdog LIVE panel with previous Clause 8 guest David Jones, AIA’s “author” Joe Matal, and John Lee – Rep. Darrell Issa’s Chief Counsel for IP
Impact of patent eligibility stress disorder (PESD) on debates regarding PERA’s
Why patent community should embrace PERA to fix Section 101 mess
Massie going MIA on patent issues
Why Senator Thom Tillis is inventors’ best hope to pass meaningful legislation
And, much more!

This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

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When Judge Pauline Newman helped create the U.S. Court of Appeals for the Federal Circuit in 1982 to have exclusive jurisdiction over patent cases, no one could’ve guessed the drama that would follow almost 40 years after she joined the court herself.

In April, Gene Quinn broke the news on IPWatchdog about a complaint filed by the Chief Judge of the Federal Circuit against Newman for being unable to effectively discharge the duties of her office. Days later, Newman showed up and spoke at Fordham Law School’s annual IP conference in New York in a way that completely undermined the foundation of that complaint. Recently retired Federal Circuit Judge Kathleen O’Malley sat right next to Newman and looked towards her with admiration and affection. Even if Hollywood’s writers weren’t on strike, they couldn’t have scripted it better.

However, recent media interviews with Newman revealed that those events were only the tip of the iceberg of this drama. Newman only discovered something was afoot when the Chief Judge - along with two other Federal judges of a Special Committee formed to investigate Newman – confronted Newman with demands that she resign or take senior status. “Just go quietly or we’ll make your life miserable,” Newman was told.

A short time later, 88-year old Federal Circuit Judge Alan Lourie showed up at Newman’s Watergate (yes, that Watergate) apartment to also try to convince her to resign. By that point, he told her, the Chief Judge already managed to convince the rest of their colleagues that Newman was “totally disabled physically, and mentally incompetent.” When Lourie said he “had no reason to disbelieve” that, Newman signaled for Lourie - her Watergate complex neighbor and colleague for over 30 years on the court– to leave.

The news of the complaint and Newman’s appearance at Fordham crushed the plan for Newman to “just go quietly.” Since that time, former Federal Circuit Chief Judge Michel and Rader have publicly sided with Newman. Michel highlighted “the conflicted process” where “the Chief Judge and the Special Committee [ ] continuing to act as accuser, investigator, prosecutor, and judge” by requesting a request to transfer the investigation to another federal court of appeals.

Yet, noticeably, all of judges on the Federal Circuit and most of her former clerks have remained silent and are avoiding getting publicly involved.

The one notable exception: Newman’s former clerk Greg Dolin. In his role as Senior Litigation Counsel at New Civil Liberties Alliance (NCLA), he is leading the legal fight against ousting Newman from the Federal Circuit. After Dolin filed a lawsuit in district court claiming that the Federal Circuit’s efforts are unconstitutional and convinced Newman to take a cognitive test, both sides agreed to U.S. District Judge Christopher Cooper’s call for mediation.

On this episode, Eli talks to Greg shortly before that mediation is to take place in August with retired D.C. Circuit Judge Thomas Griffith. They talk about how and why this drama got to this point, how Newman has been able to emotionally deal with the fallout, why this fight is important beyond the Federal Circuit, what a potential resolution might look like, whether Greg and Judge Newman are preparing for impeachment proceedings, and much more!

This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

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Will Twitter's meager patent portfolio doom Elon Musk’s hopes of “strictly enforcing” Twitter’s IP rights? Eli is joined by return guest Gaston Kroub on this special episode to discuss how an unprecedented IP dispute between two of the world’s richest men might play out.

In response to Meta successfully launching Threads, Musk’s go to lawyer Alex Spiro sent a letter to Mark Zuckerberg expressing "serious concerns that Meta...has engaged in systematic, willful, and unlawful misappropriation of Twitter's trade secrets and other intellectual property" and intention to "strictly enforce its intellectual property rights." Although the letter focuses on trade secrets, Spiro’s colleagues are likely busy mining Twitter's patent portfolio.

Unfortunately for them, Twitter’s patent program last made news in 2012 when it launched the Innovator’s Patent Agreement. The IPA was meant to show Twitter’s commitment to “employees that their patents would “only be used for defensive purposes” (if you didn’t read the fine print). Unsurprisingly, this attitude led to Twitter barely obtaining any patents. However, it has managed to keep some foundational families of patents - that make Twitter founder Jack Dorsey as an inventor - alive.

Will any of this matter? What will it take for Twitter to file a credible claim suit? If Twitter does file suit, what will happen next? What will it take for these billionaires - who previously challenged each other to a jiu-jitsu-match - to settle? Is this IP dispute just a scheme by Musk to make Twitter someone else’s problem?

You don’t want to miss this episode to find out.

This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

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USPTO Director Kathi Vidal’s decision to issue the Advance Notice of Proposed Rulemaking (ANPRM) is the latest major controversy surrounding the Patent Trial and Appeal Board (PTAB). The American Invents Act (AIA) created the PTAB to supposedly provide a cheaper, faster alternative to district court patent litigation. However, the PTAB quickly gained a reputation for being a patent “death squad” that allows defendants to repeatedly challenge the same patents until those patents are invalidated.

During the last administration, former USPTO Director Andrei Iancu tried to correct that by limiting when patents could be challenged at the PTAB. Because those changes never finished going through the federal government’s rulemaking process, Vidal was able to quickly roll them back. The ANPRM now presents a litany of its own proposals for fixing fix how the PTAB operates and heated opposition on all sides.

Nicholas Matich joins Eli to talk about the ANPRM and what’s likely to happen with its proposals. Nick, who is now Principal at the patent litigation powerhouse McKool Smith, served as USPTO’s general counsel under Iancu after working at the White House and as Deputy GC of the OMB. This provides him with an unmatched understanding of how the rulemaking process actually works for proposals emanating from the USPTO.

Nick and Eli also discuss:

What Nick learned from working with Viet Dinh and/or Paul Clement at Bancroft PLLC
How the OMB reviews & approves agency rules
Serving as USPTO’s GC
Advice for influencing USPTO’s rules
Iancu’s Fintiv factors & how to explain swift reversal
Why the ANPRM was a mistake
Advice for future USPTO Directors

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Eli is joined by colleague Shawn Lillemo, Head of Software Development at their firm Harrity, to talk about the firm’s tech journey. Shawn and Eli talk about why and how the firm started its own software development team to create tools to improve how it handles its patent preparation and prosecution work, Shawn’s superstar team in Ukraine, the future role of AI, and much more:

The slow embrace of technology by patent firms
United States Patent and Trademark Office (USPTO)’s adoption of technology and where they are now
How Shawn’s background as an attorney, patent examiner, and creating software for his college’s facilities department led him to his current role
First macro created for Harrity
Creation of Patentprufer - a tool for tracking information about patent examiners
Lessons learned from building an enterprise software team at a law firm
Stories about Shawn’s team building its first software tools
How Shawn’s team in Ukraine has managed to continue to successfully develop software during the war
Funneling and prioritizing endless amount of ideas to create valuable software patent tools
Five year journey of creating and launching PatentHub, Harrity’s enterprise task management system
Whether AI will replace patent attorneys

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Thank you for listening to the Clause 8 podcast. We hope you’ve enjoyed the episodes so far this season.

We’re on a short break but we’ll be back next week with more episodes.

Please consider subscribing and taking a few moments to share this podcast with others and giving us a rating in your favorite podcast app. It helps this podcast reach new audiences.

Eli is always welcome to hear any thoughts or ideas for the podcast. You can find him @EliMazour on Twitter.

Or visit voiceofip.com for more information. And if you’d like to learn more about Eli’s firm, visit HarrityLLP.com

This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

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Joff Wild on Founding IAM for Chief IP Officers & EU Commission’s anti-SEP Crusade

“It became obvious to me that IP was a lot more than laws and court decisions and regulations. IP was becoming a fundamental business asset, one that people could use to generate profits, build partnerships, go out into the markets, and raise cash. But no one was writing about that there was no coverage of that. So that said to me, there was an opportunity to create something new.”

IAM’s founding editor Joff Wild joins Eli from ‘across the pond’ to talk about starting a media company to cover the business of intellectual property (IP), the barrage of recent news about the European Commission’s misguided standard essential patents (SEPs) proposals, and much more:

Joff’s journey from tabloids to IP
Editing Managing Intellectual Property (MIP)
How legacy IP media failed to appreciate/cover IP as a fundamental business asset
Founding IAM in 2003
Willing Chief IP Officers into existence with Rob Sterne (of Sterne Kessler) and Ron Laurie
“If you create, they will come” – creating the idea of Chief of IP Officers
What Chief IP Officers care about: danger & opportunity
Strength & weakness of Chief IP Officers
Why forward-thinking companies were willing to tell IAM their IP secrets
Importance of sharing information for growing IP ecosystem
How partnering with Ocean Tomo to host Europe’s first patent auction led to IAM’s event business
Concerns about conflicts with IAM’s event business
How patents are a clear force for good
Why so many new patent-related ventures, business models have failed
Difficulty of leveraging IP value
Lessons from Nokia & Ericsson about importance of investing in patents over a long period of time
EU Commission’s power & failure to take patent policy seriously
How EU Commission’s evidence-free SEP proposals risk destroying EU’s global leadership on SEP/FRAND issues
Extensive lobbying that led to the SEP proposals
Will the EU Commission’s SEP proposals become law?
Unified Patent Court’s potential to become the de facto global patent court
Opportunity for Brexit UK to become a pro-patent jurisdiction
Is it time for IAM to close down its China office in Hong Kong?
Japan’s slow patent revolution
India’s huge potential
Why Brazil & Colombia have become hotbeds for protecting patent rights & why Sub-Saharan Africa might be next
Advice for Chief IP Officers

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Eli is joined by the legend of the patent bar, the virtuoso of Federal Circuit decisions – Tom Irving. They discuss the rise of the pharmaceutical patent practice, the creation and current state of the Federal Circuit, why and how Tom mentored 1000s of patent attorneys, best practices for patent prosecution, and much more!

Chief Judge Moore’s efforts to oust Judge Newman
How Tom ended up practicing patent law
Why there are so many patent attorneys from and in Utah
Joining Finnegan, Henderson in the 70s
How general patent practice firms getting into patent law spurred the growth of the pharma patent practice
Working on the first Hatch-Waxman litigation
Stories about helping pharma start-ups build multibillion dollar patent portfolios
Advice for building valuable patent portfolios
Why pharma patents generally manage to survive PTAB proceedings
The cost of drugs
How Tom predicted issues raised by Salazar v. AT&T Mobility LLC
Whether the Federal Circuit should issue more en banc decisions
Should the Federal Circuit be responsible for uniformity in decisions?
Being law firm partners with Judge Kara Stoll
Being mentored by PJ Federico and others
Advice for mentoring others
Who should consider retiring
Tom’s retirement plans in 2054

This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

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Tim Pohlmann is the founder and CEO of IPlytics, which provides software analytics tools for standard essential patents (SEPs). Tim is also one of the world’s leading economists that focuses on the subject of SEPs, and was recently commissioned by the EU Commission to provide empirical studies for their work regarding SEPs.

Tim’s podcast, The SEP Couch, features discussions with a very diverse group of industry leaders, prominent attorneys, academics, and policy makers on the subject of SEPs).

On this episode, Tim and Eli discuss:

The SEP Couch Podcast, including Eli’s favorite interviews with Carlos Olarte and Kirti Gupta
How, as an economist, Tim became interested in patents, and specifically SEPs
Founding IPlytics, the evolution of patent data, and keeping customers engaged
Advice for starting and growing a software company in the legal/patent space
Incentivizing through SEPs and the ideal system for innovation related to standards
Weighing transaction costs & role of actors purposefully increasing those costs
The limits of data and media simplification
Lobbying on SEPs issues
Lexis Nexis’ acquisition of IPlytics

This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

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David Jones is the Executive Director of the High Tech Inventors Alliance (HTIA), which advocates on patent policy issues on behalf of some of the largest tech companies in the world.

When Dave became the head of HTIA in 2019, it seemed that DC was finally turning against the “patent troll” narrative driving patent policy in Congress and the executive branch. However, that did not last long: efforts to pass Section 101 reform failed to gain traction in Congress; the current administration rolled back efforts to restrain the role of the PTAB under the previous administration; and an unprecedented lobbying effort spurred the Chief Judge of the Western District of Texas to randomly reassign new patent cases filed in Judge Alan Albright’s division. All outcomes that members of the HTIA supported.

This episode features a wide-ranging and super fun conversation about if (and how) Dave has been so effective as head of HTOA over the last few years and/or if he’s just that lucky.

Prior to taking the helm at HTIA, Dave was assistant general counsel for IP policy at Microsoft and worked for Senator Orrin Hatch on IP issues for many years. Dave is able to draw on those experiences to provide priceless – and often surprising - insights about how patent policies are shaped.

This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

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Former Patent Commissioner Robert Stoll joins the Clause 8 podcast to talk about working his way up from being an examiner to being the commissioner over his 30+ year-long career at the USPTO. As commissioner, Bob helped former USTPO Director David Kappos implement the American Invents Act (AIA) and transform how the USPTO’s patent examiners operate. Before that, he served as USPTO’s head of the Office of Legislation and International Affairs under Director John Dudas. Now out of government, he freely shares what he thought about what happened at the USPTO during his time there as an executive, why he stayed, and what he thinks about the current state of America’s patent system.

He also talks about what it’s like to be part of the “first family” of IP law, which includes Federal Circuit Judge Kara Stoll.

In this episode, Eli and Bob also discuss:

How so many of Bob’s family members ended up serving in senior IP roles in every branch of US government and internationally
Bob’s secrets for longevity & success at the USPTO
How he became Commissioner
Relationship with David Kappos
Whether the USPTO Director is really in charge of an administration’s patent policy
Creation of the Patent Trial and Appeals Board (PTAB) and post-grant proceedings
Role of “patent troll” narrative
Whether there is a “patent quality” problem
Director Vidal’s exercise of her Director review power
Proposals to record examiner interviews
Importance of IP bar organizations in shaping policies

This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

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If you’ve come across a national news story about some brash character making lots of money from patent deals, chances are that the person making those deals happen behind the scenes was an unassuming lawyer in Israel. Her name is Lillian Shaked.

On this episode, Lillian tells the story of how she went from being a commercial attorney in Israel to working with who’s who of patent monetization legends around the world and likely working on more major patent deals than any other attorney in the world. Lillian also talks about her relatively recent transition from being the lawyer to acquiring and monetizing the patents herself. This is likely only the beginning of that story….

In this episode, Eli & Lillian discuss:

How moving from Canada to Israel set her apart as Israel’s high tech sector boomed
How Lillian made a patent transaction career from one patent deal
Working with Erich Spangenberg
Advantage of working from Israel on American patent deals
Importance of ongoing, positive relationships between parties involved in patent transactions
Monetization strategies based on reasonableness of infringers/potential licensees
Impact of course correction in patent market after the boom years in the early 2000s
Rise of litigation funding
Why patent litigation funding companies moved from taking passive role to taking active role
How and why patent litigators prevent win-win outcomes
Terms to avoid in patent deals
Why and how deals fall apart
Importance of momentum for patent transactions
Why the BlackBerry patent deal fell apart
Transitioning from handling the transactions as a lawyer to acquiring patents from beginning
Advice for building valuable patent portfolios
Efforts to shame patent assertion entities

This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

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Kathi Vidal returns to the Clause 8 podcast to talk about her first year as the Director of the US Patent and Trademark Office (USPTO). In an expansive conversation, Director Vidal talks about what she hopes to accomplish, explains and defends the current process for exploring and making changes to the patent system, and responds to criticisms regarding the state of the system. Even close observers of her time as Director are bound to be surprised by many comments she offers on this episode.

On this episode, Director Vidal and Eli discuss:

Offer to become Director & preparation for role
Big-picture vision & importance of listening to all stakeholders
How stakeholder input drove administration’s decision regarding standard essential patent (SEP) policy statements
Healthy state of America’s patent system & need for improvements on the margins
Negative impact of information that discourages use of patent system
Reliance of American companies on other jurisdictions to enforce their patent rights
Efforts to increase diversity of patent applicants, including efforts to expand pro bono programs
Weighing stability of patent system v. implementing change
USPTO’s willingness to pivot, pause, and extend
Are requests for comments (RFCs) destabilizing patent system?
Correct way to view USPTO’s RFCs – why you shouldn’t read too much into individual questions
Proposal to record examiner interviews
Coordination with USPTO labor unions
Indispensable role America’s patent system played in creation of the COVID-19 vaccines
How lack of patent eligibility for diagnostic tests impeded innovation for COVID-19 tests
Efforts of drug companies to make sure that those who needed COVID 19 vaccines got them
Message to independent inventors (who hear Molly Metz’s story)
Upcoming plan to solve for problems faced by independent inventors
“Patent troll” narrative – are there too many “bad patents”?
Reputation of the PTAB & desire of PTAB judges to get it right
Has the PTAB worked out as intended?
Purpose of new guidance & rulemaking regarding Fintiv discretionary denials
Approach to Director review & importance of independence of PTAB judges
Plan to solicit input regarding role of 3rd parties in PTAB proceedings
Need for more clarity regarding Section 101
Providing examiners with ability to do pattern recognition for Section 101 analysis
Selection of Commissioner for Patents Vaishali Udupa
Surprising alignment with America’s allies on innovation & IP issues
Advice on overcoming career setbacks

This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

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Five-time world jump rope champion Molly Metz and her husband Dirk Tomsin talk about the highs and lows of innovation, entrepreneurship, and relying on America’s patent system. A serious car accident spurred Molly to invent a new type of jump rope that revolutionized jump roping and the use of jump roping for CrossFit. Thanks to patents that were awarded to her by the US Patent Office (USPTO) for the invention, Molly’s company – JumpNrope – started making the jump ropes completely in America and licensing the patents to various fitness companies that eagerly relied on her jump roping technology.

It should’ve been the perfect story that the USPTO could tout about how America’s economy benefited from a woman inventor taking advantage of the patent system. Instead, Rogue Fitness - the largest fitness distributor for CrossFit –challenged Molly’s patents at the USPTO’s Patent Trial and Appeal Board (PTAB). Molly and Dirk are now dealing with the aftermath of that and fighting for a better future for other inventors.

On this episode, Molly, Dirk, and Eli discuss:

Molly’s start in the world of jump roping in Boulder, Colorado
How a car accident spurred her to invent
Decision to file patent applications
Examination process at the USPTO & rewarding feeling of obtaining a patent
Decision to manufacture the jump ropes in Colorado and not China
Experience of successfully licensing the patented jump rope technology to other companies
When the patent system worked for Molly
Rogue Fitness’ initial interest in selling Molly’s jump rope, licensing negotiations, and decision to infringe
Negative impact of Rogue Fitness’ refusal to license the technology
Working with patent litigation attorneys to enforce patents
Rogue Fitness challenging the patents at the PTAB based on two patents from 1978 and 1979
Molly and Dirk’s experience with the subsequent PTAB proceedings and Federal Circuit appeal
Prof. Dennis Crouch’s analysis of the PTAB decision
Supreme Court petition to secure pre-cancellation damages
USPTO’s effort to increase number of women patentees
Advice for other women and small business inventors

This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

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Bruce Berman is the PR guru of the IP world. As CEO of Brody Berman Associates, he has implemented marketing and business development programs on behalf of more than 200 IP portfolios and businesses. And, in 2016, he founded the Center for Intellectual Property Understanding, an independent non-profit that raises awareness of the use and impact of intellectual property on individuals and businesses. He is also the host of the Understanding IP Matters podcast. In this episode of the Clause 8 Podcast, Berman delves into the who, what, when, and how of telling IP stories to help promote causes in the patent world.

On this episode, Bruce and Eli discuss:

How Bruce went from “frames to claims”
How Bruce helped Kenyon & Kenyon after it lost a billion dollar patent litigation representing Kodak
Success of the “Patent Troll” narrative
Efforts to improve appreciation of patent rights
Different appreciation of different types of IP rights (copyright v. patent)
PR strategies for parties involved in patent litigation
Internal and external patent PR strategies for operating companies
PR strategies for NPEs
Why “efficient infringement” is like kissing your sister
How COVID was used opportunistically to sow misinformation regarding patents
IP Media ecosystem

This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

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Qualcomm is responsible for the smartphone revolution. It started working on the technology back when many thought it was impossible. Besides everyday users, one of the biggest beneficiaries of Qualcomm’ technology was Apple.

Apple relied on the technology to make iPhones that grew its market cap to a record of $3 Trillion. However, eventually, Apple decided it was paying Qualcomm too much for the technology.

And, instead of agreeing to one fair arbitration process to settle the dispute, Apple decided to rely on scorched-earth litigation. The dispute between Apple and Qualcomm quickly blossomed into more than 100 cases around the world.

But it wasn’t long before Qualcomm was racking up wins in China, Germany, and the US. Apple finally agreed to settle on the eve of another trial in the US in 2019.

Bob Giles was one of the people responsible for that Qualcomm victory.

Two years after that, he was named Chief IP Counsel at Qualcomm. He now shepherds a team that is responsible for managing and growing 140,000 IP assets and handling some of the most high-profile patent disputes in the world.

On this episode, Eli talks to Bob about his new role and the ongoing disagreements between innovators like Qualcomm and implementers like Apple.

Episode Highlights

[02:07] What’s Qualcomm all about?: Giles discusses how Qualcomm began, the early challenges it faced, and its business mission.

[05:37] Keeping the lights on: Giles tells the story of how Qualcomm entered a licensing agreement with Motorola in its early days.

[07:23] Qualcomm’s business model: Giles explains why Qualcomm’s model works and how it encourages innovation.

[10:01] Does the current system for standards and SEPs work?: Giles discusses the policy debates regarding these topics.

[19:55] Getting the dream job: Giles talks about what it was like to transition from patent litigation to Chief IP Counsel at Qualcomm, and what the Chief IP Counsel job entails.

[28:42] What makes a great portfolio?: Qualcomm isn’t like other companies when it comes to patents. As chief IP counsel, Giles discusses what needs to be part of the company’s portfolio.

[35:37] The million-dollar question: The law, and our interpretation of it, is changing all the time. How does a company like Qualcomm, with over 140,000 IP assets and offices all over the world, navigate those developments?

[39:57] Apple v. Qualcomm: Giles discusses how he helped Qualcomm beat Apple

[43:13] Lessons learned: Giles discusses his major takeaways from litigating a large-scale, multinational case.

[47:06] Why Qualcomm thrives: Giles shares the underappreciated aspects of Qualcomm and his take on why it has been so successful.

[50:37] The innovation climate: Qualcomm was able to get an injunction for its patents in China and Germany, but not in the U.S. When impact does this have on American companies trying to innovate and protect their IP?

[52:18] The ‘death squad of patents’?: The 2011 creation of a Patent Trial and Appeal Board, has been controversial, but has it damaged the U.S. IP system? What went wrong? Giles shares his thoughts.

[57:17] Know your field: Giles offers his advice for being successful in the IP field.

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What is outside counsel’s real job? How do you make patents part of a 100-year-old company’s DNA? Why did Ocean Tomo fail to become the Goldman Sachs of patents? How do you get opposing counsel to offer you a dream job? The Renaissance Man of IP – Raymond Millien – shares these secrets on the latest episode of Clause 8. Ray previously served as Chief IP Office at Volvo and is now the CEO of the IP boutique, Harness IP. Prior to that, Ray served as the general counsel of a groundbreaking IP business, helped rebuilt the IP program of a Fortune 100 company after the Great Recession, and co-founded the PCT Law Group.

On this episode, Eli talks to Ray about how to succeed as in-house counsel and outside counsel, how to properly built a patent portfolio for a major corporation, and what it takes to succeed in the IP field.

Episode Highlights:

[01:35] From computer programming to IP: Born in Brooklyn to Haitian parents, Ray discusses how he “Forrest Gumped” his way into IP law.

[06:46] The Goldman Sachs of IP?: Ray talks about how he fell into being general counsel at Ocean Tomo, which had a vision of being the “Goldman Sachs of the IP world.”

[10:28] Jumping into public policy and out: Excursion into lobbying on IP issues after starting PCT Law Group in Washington, D.C., and jumping out to restart Goldman Sachs’ IP program

[16:58] Ignore at your own peril: How should financial services companies — which don’t produce physical products — go about building an IP portfolio?

[19:45] The challenges of management: What does a Chief IP Counsel actually do? There’s plenty of confusion and misconceptions over the job. As Ray explains, it varies from company to company.

[22:45] Be a salesperson: As the former Chief IP officer at Volvo, Ray was working for a multimillion-dollar company that was famously innovative. Ray explains what it takes to survive such a role.

[29:02] Setting a quota: Many companies set a goal for how many patents they want to file by the end of the year. Ray explains why he disagrees with this practice, even with “use it or lose it” budgets.

[34:56] Quality vs. quantity: How can a company build a respectable patent portfolio? Ray talks about how you need quantity to get to quality.

[39:48] What works and what doesn’t: Chief IP Counsel get tons of emails and messages from outside counsel every day asking to represent their company or product. Ray let us in on what caught his attention.

[42:15] Be a renaissance IP lawyer: Ray explains how he became a “renaissance” IP lawyer and how knowing a little bit about all sides of IP has helped him succeed in his career.

[44:59] What needs to change: Ray talks about how the system itself that needs to work faster.

[46:14] From opponents to colleagues: “I’ve been Forrest Gump my entire career:” Ray reveals the unusual circumstances of how he ended up working for Harness IP.

[53:03] The plague of patent law: Ray talks about what’s plaguing the U.S. patent law system now — the lack of consistency in software patent rulings in federal courts.

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Show Notes Is it preferable for patent cases to be handled by district court judges who have relevant expertise and experience? Senator Leahy can’t make up his mind.

Leahy’s eponymous Leahy-Smith American Invents Act created the Patent Pilot Program. The program allowed federal district court judges in select districts to volunteer to handle patent cases. The goal was for certain judges to have increased expertise – and as a result – do a better job.

However, after the program expired and Judge Alan Albright started attracting patent cases to his Waco court room in the Western District of Texas, Leahy had a change of heart. In an unprecedented letter to Supreme Court Justice Roberts, Leahy pressured Roberts to do what he can to stop Waco from being a go-to patent venue by suggesting there was something untoward about Albright’s interest in patent cases. The pressure campaign seems to have worked. In his end-of-year report, Roberts highlighted the issue and stressed “the role of district judges as generalists.”

Eli decided to talk to an expert on the subject of patent venues - Prof. Timothy Hsieh – about this recent controversy.

Eli also talks to Prof. Hsieh about whether how courts think about venue is outdated and his fascinating career trajectory of patent litigator turned patent examiner turned law school professor.

Clause 8 is part of IPWatchdog and sponsored by Harrity– the go-to firm for the Patent 300 for patent preparation & prosecution.

Episode Highlights

[00:09] Getting to know the IP Expert: the unlikely trajectory of a patent litigator turned patent examiner turned law professor at the University of Oklahoma City.

[07:09] From clerk to patent examiner: Hsieh talks about his federal clerkship experience before becoming an examiner at the U.S. Patent and Trademark Offices (USPTO) to work as an examiner.

[12:10] Pit of despair: Hsieh talks about his experience as an examiner in the USPTO’s business method Technology Center.

[17:11] Advice for patent applicants: Hsieh offers some pointers from an examiner’s perspective for what applicants can do to succeed at the USPTO.

[20:57] TC Heartland: Hsieh talks about his the impact of TC Heartland vs. Kraft Foods, including how it’s impacting district courts in Delaware and Northern California.

[31:54] Outdated concepts: Is federal venue jurisprudence outdated?

[36:37] Experts vs. generalists: In a 2021 paper, law scholar Paul Gugliozza stresses that the TC Heartland case may have ended the practice of forum shopping and replaced it with judge shopping. Is that a bad thing?

[41:14] An unprecedented writ: Writs of mandamus are only supposed to be used in the most extreme or rare circumstances. Hsieh explains why they are being used more than ever to order reversals of venue changes.

[46:07] An ongoing problem?: TC Heartland sought to address the high concentration of patents being filed in East Texas, but now a majority of cases are moving to two states: Delaware and California. Is this an improvement?

[55:03] Keep the spark alive: Academia is one of the most competitive career sectors. Hsieh gives advice to those who want to replicate his career path.

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How is patent policy made in Congress? Few know better than Philip Warrick. Phil served as Senator Coons’ top IP advisor after Coons helped restart the Senate’s IP Subcommittee. In that role, Phil helped lead the subcommittees’ efforts to improve America’s patent system, including legislation to fix the patent eligibility mess. Those efforts were a dramatic departure from Congress’s previous fixation on the “patent troll” narrative.

After Coons friend and fellow Delawarean, Joe Biden, was elected as president, the innovation community was hopeful that Coons would use his top role on the Subcommittee to prioritize patent issues within the Biden administration and Congress.

However, Democrat Senator Leahy had other ideas and took over as the top Democrat on the Subcommittee. Since that time, the Subcommittee has moved in a very different, anti-patent direction and Leahy's views have won out in seemingly every major administration decision related to patents.

Yet, in another twist, Leahy has announced that he is retiring and won’t seek re-election in ‘22. So, Coons is likely to return to his role as the top Democrat on the IP Subcommittee.

On this episode, Eli talks to Phil about what it was like to work for Senator Coons, how to effectively lobby on patent issues, and big tech's influence on patent policy.

Episode Highlights:

[00:07] Meet the expert: Few know IP law better than Philip Warrick.

[01:53] Getting to know patents: As an undergraduate student, Warrick knew he had an interest in law. The interest led him to his first job in the field — before he ever set foot in law school.

[04:54] A career curveball: Warrick never planned to work on Capitol Hill, but things changed when opportunity knocked.

[11:38] Creating a network: Warrick shares one of the most important lessons he learned on the Hill, an environment where many are chasing their own agenda.

[14:59] Working across the aisle: Warrick discusses the bills and initiatives he worked to push forward with representatives across the political spectrum, including with former podcast guest Brad Watts.

[18:35] Finding a solution: Coons’ team hoped drafting legislation would clarify Section 101 of U.S. patent code, a clause often confused with Section 112. The hearings didn’t go the way he hoped.

[28:35] Hope for a better solution: The drafted bill didn’t quite achieve the outcome they had hoped for, but that doesn’t mean the future is bleak.

[32:09] Building stronger patents: An ongoing challenge at the forefront of Sen. Coons’ concerns for patents in America is getting the Stronger Patents Act passed. The law would make it easier and less costly for patent holders to enforce their patents.

[40:41] Finding common ground: Warrick discusses the dynamic between Sen. Coons and Sen. Tillis, who were on opposite sides of the aisle and how it affected their efforts on patent law.

[42:58] The future of IP in the Senate: As Sen. Patrick Leahy, current chair of the IP subcommittee, plans to retire in two years, Warrick hopes conversations around patent law will remain in conversations on the Hill.

[43:58] A patent-unfriendly administration?: The Biden administration has taken a position far from what Sen. Coons would have chosen, Warrick says.

[46:56] A complex dynamic: The most surprising thing to Warrick was the complicated relationships and dynamics between offices and staffers. “And there certainly are situations where people are looking to get things done, they want to cut deals … [and] where you're not debating one bill in isolation.”

[51:52] A voice in the debate: For companies and organizations with patents, even minor changes in patent law could have a major impact. Collaboration goes a long way in ensuring your voice is heard when these issues are on the table.

[55:28] Know the playing field: If an organization wants to influence legislation, the foremost important factor is understanding the debate and the issue’s impact. That way, they can propose a viable solution.

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The golden age for patent brokers has come and gone but that doesn’t stop Louis Carbonneau. “There are very, very few patent brokers nowadays. We’re just one of a handful left. And frankly, we get about four or five portfolios every single day that people want us to broker. We only say yes 1% or 2% of the time.”

As one of the world’s leading patent brokers, the CEO and Founder of Tangible IP has brokered over 4,500 patents and boasts close to 30 years in the industry.

With experience as Microsoft’s former General Manager of International IP & Licensing, Carbonneau has sat on many sides of the table. He shares his adventures in the industry (and lessons learned).

Carbonneau tells behind-the-scenes stories from his time at Microsoft, the common pitfalls of patent licensing, and why price isn’t always an essential part of the conversation when buying and selling intellectual property.

“Some people will not even want to acquire patents for free if they don’t like the patents because then they have to start paying for maintenance fees and prosecution fees. It’s like a free puppy. It’s only free for a few hours, and after that, you start paying,” says Carbonneau.

The episode also offers insight into a typical IP transaction at Carbonneau’s firm, helping those interested in selling their patents to understand what brokers — and buyers — are looking for in a deal.

Episode Highlights

[02:45] Dinosaurs and Microsoft: joining Microsoft’s legal team as a result of the acquisition of Softimage, the computer graphics company behind Jurassic Park.

[05:18] How a cross-licensing deal saved Apple: how a creative deal offered by Microsoft – in midst of its antitrust battles in the late 90s – helped save Apple.

[08:45] From licensing products to IP: under the direction of Marshall Phelps, a new addition to Microsoft’s team, Carbonneau began harvesting the intellectual property from Microsoft’s many research labs around the world.

[14:13] Balancing budgets: the complicated role of finance in licensing and monetizing intellectual property within a corporation. Which department owns a patent can make a big difference in how the intellectual property is managed.

[17:38] The golden age of patent brokerage: the creation of Intellectual Ventures and how he eventually founded his own brokerage firm, Tangible IP.

[24:49] What makes a good deal?: Carbonneau walks us through what makes (or doesn’t make) a good patent transaction. Ultimately, it is challenging to calculate the ROI of large deals.

[28:11] Changing tides: Carbonneau explains the change in the patent landscape as a result of the creation of the Patent Trial and Appeal Board (PTAB) and the subject matter eligibility mess.

[32:53] A typical transaction: Carbonneau outlines his brokerage firm’s intake process and share what he’s looking for when he’s helping to sell patent assets.

[37:10] The dirty little secret: Carbonneau shares the strategy used by many big corporations.

[39:35] Seller pitfalls: Who’s looking to sell their patents and what do they do wrong?

[44:47] Patent prosecution is ‘part art, part science’: discussion of what makes patents valuable and best practices for patent law.

[49:37] The perfect patent: It’s hard to find the patent that everybody likes and it’s not always about price. Carbonneau talks about the challenges he faces helping his buyers find patents worth acquiring.

[52:46] The IP ecosystem: Carbonneau walks us through the many players within the intellectual property industry and discusses the division of labor for the buying and selling of intellectual property.

[59:48] You’ve been warned: the challenges of being a patent broker with the current legal landscape

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Good lawyers effectively deal with the present. Very few have what it takes to create the future. Professor Ryan Abbott is doing just that.

He leads the DABUS project: the first time ever an AI machine has been named as an inventor on a patent application. Most thought that the project was an interesting academic exercise that was unlikely to go anywhere. Some - uncharitably - dismissed it as "a publicity stunt."

Yet, the DABUS project did get a patent in South Africa. And, an Australian judge ruled that AI machine can be recognized as an inventor. Even more significantly, the DABUS project successfully raised awareness about the issue of AI inventorship among policy makers all over the world.

But what does it mean for an AI system to be named as an inventor in the real world?

In this episode, Abbott makes his case for the skeptics: Identifying AI as the inventor on patents is morally and commercially important. He also explains how to judge whether the human pushing the buttons is as much an inventor as the AI they’re programming.

On this episode, Eli and Prof. Abbott talk about the Artificial Inventor Project, whether everything will be “obvious” in the future, and Prof. Abbott’s fascinating new book “The Reasonable Robot: Artificial Intelligence and the Law.”

Episode Highlights:

[1:41] Meet our guest: Abbott explains how degrees in law and medicine pushed him towards patents. He worked for the World Health Organization (WHO) on patents related to life sciences.

[6:17] The eureka moment: Around 2013, Abbott noticed that life sciences companies were using AI to scan through large databases for information, which prompted research and inventions. Normally, people who did that would be named on the resulting patents.

[8:32] The case for AI inventors: Based on his observations, Abbott outlines his academic argument for naming AI on patents: It incentivizes humans to build machines that come up with inventions, which is exactly the purpose of the patent system.

[11:39] Meet DABUS: Abbott discusses how he teamed up with Dr. Stephen Thaler, who invented a type of AI called DABUS and is a pioneer of naming AI on patents. DABUS is the AI identified in patents Abbott is defending in courts around the world as a leader of the Artificial Inventor Project.

[12:13] Breaking the mold: The Artificial Inventor Project is breaking new ground with its attempts to name AI as inventors. AI has only just become capable of contributing to inventions — and patent lawyers still advise their clients to name themselves, not their machines.

[13:23] Copying copyright: Copyright law is ahead of patent law when it comes to AI involvement. It’s possible to guess how AI will work in patents by looking at the technology’s role in copyright cases.

[18:00] Break law, don’t make law: Abbott explains why he chose to litigate on behalf of AI inventors, rather than lobby, and why he picked the specific cases he did.

[23:51] The human touch: Humans are still involved in AI inventions — so aren’t they really the inventors? Abbott addresses the tricky topic of weighing human versus AI involvement.

[28:01] Assessing merit: Abbott explains why it can be helpful to compare AI involvement to a team of people working on a new invention in a lab. What role does someone have to play to earn credit?

[30:12] Why AI inventorship matters: Despite the difficulties, naming AI inventors is worth it. Abbott makes the case that there is a moral responsibility to accurately identify who — or what — invented something. Not to mention the impact on entitlement to the IP.

[37:36] What’s next for the Artificial Inventor Project: Abbott and Thaler's work raises broader discussions about tech and the law, and how that relationship should work.

[46:25] Are these lawsuits artificial?: Abbott responds to accusations that his project is a publicity stunt.

[48:12] A problem prediction: Abbott admits that he has concerns about how hindsight bias could affect AI inventor claims, with regards to obviousness analysis.

[49:38] Mixed messages: How differences in the way we treat driverless cars versus Uber drivers reveal our double standards about AI — and how this limits the way we use it.

[52:43] A note for the next legal generation: Abbott’s advice for future lawyers: Study up on tech as well as technicalities. Your clients will thank you.

The Reasonable Robot: Artificial Intelligence and the Law

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Prof. Dan Brown and his son, Dan Brown Jr., are straight out of central casting. Prof. Brown, the father, grew up in a working-class Irish family on Chicago’s South Side before eventually becoming a professor of engineering at Northwestern University. Dan Jr. is a moppy-haired marketing genius who is now President of LoggerHead Tools. As a result of a father-son argument, Prof. Brown invented an award-winning tool called the Bionic Wrench and pursued the audacious idea of manufacturing it in entirely in America. Sears positioned itself to become their exclusive retailer when the initial order of 300,000 units sold out between Black Friday and Christmas. Unfortunately, not long after, Sears started pressuring them to manufacture it in China to lower the price of the bionic wrench. “It was pure greed. And we said no,” Prof. Brown said.

When Prof. Brown refused, Sears got another company, Apex, to make a knockoff of the bionic wrench in China. So, LoggerHead Tools, represented by Skiermont Derby, took them to court. They were on their way to being vindicated when the death of the original federal judge, assigned to the case, put that into doubt.

Today, they continue to tell the story of their “David and Goliath” battle in hopes that the patent law can be improved to support America’s innovators.

“This is not the type of due process you think someone should have to go through,” Dan Jr. says. “Where is the reward?"

Join us on this episode of Clause 8 as we talk to Prof. Brown and Dan Jr. about the twists and turns of their story, why they continue to have faith in America’s patent system, and what it’s like to work with your dad.

Episode Highlights

[03:35] A patent partnership: By the time they obtained the patent for the Bionic Wrench, Prof. Brown had already secured patents for many other products. His son, Dan Jr., learned the ins and outs of patenting by shadowing his father.

[06:15] The Bionic Wrench is born: The lightbulb went on when Dan Jr. tried to use robo-grip adjustable pliers to change the blade on a lawnmower.

[11:44] Keeping it in the U.S.: Prof. Brown talks about how his insistence on manufacturing the Bionic Wrench in America was due to how he was raised and what he saw when he brought products to China as a consultant.

[17:25] Sears pitches a deal: Sears placed a major order for LoggerHead's Bionic Wrench and it turns into an incredibly successful item for Sears. However, Sears is not happy when the Browns refuse to lower the price by outsourcing manufacturing to China.

[22:53] The smoking gun emails: Sears tried to make a similar product to avoid patent issues but couldn’t get the tool to work

[26:51] National coverage: The media is not always friendly to patent owners but Prof. Brown and Dan Jr.’s story got the attention of the New York Times and ABC News.

[35:31] A new judge turns the tables: After the original judge on the trial died and the jury ruled in favor of LoggerHead Tools, a new judge upended the verdict in a way that surprised all sides .

[38:46] Rule 36: A 15 minute hearing and a two-line decision from the Federal Circuit ended their battle.

[45:57] It’s about more than a patent: How LoggerHead Tools managed to survive after the battle with Sears.

[49:37] The bright side: Dan Jr. created the InstaShield product that they come up with during the pandemic.

[55:29]: Made in China: Prof. Brown and Dan Jr. discuss the America's reliance on other countries for essential products and the challenge it presents for American manufacturers.

[58:56] A broken system: Prof. Brown presents some potential solutions to the broken patent system, starting with making willful infringement a crime, reassessing the Patent Trial and Appeal Board, and working toward a more inclusive, equitable industry.

[1:06:43] The family business: “You have to learn how to do a lot of deep breathing and meditation,” Dan Jr.

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The first episode of this season of Clause 8 featured the most recent USPTO Director - Andrei Iancu - discussing his efforts to strengthen America’s patent system over the last three years. One of the most publicly vocal opponents of those efforts was Josh Landau, patent counsel at the Computer and Communications Industry Association (CCIA). Now that those views are in ascendancy in the Biden administration and Congress, it made sense to finish this season by talking to Josh.

It was Josh who first broke the news on CCIA’s Patent Progress blog that Sen. Patrick Leahy was taking the top Democrat slot on the Senate’s IP Subcommittee from Sen. Chris Coons. Coons helped restart the subcommittee two years earlier and was the most significant Democratic supporter of stronger patent rights on Capitol Hill. The blog post signaled that CCIA’s patent policy ally is now in charge.

In this episode, Josh shares his thoughts on the role of the CCIA in the patent debate and his strong views on various patent-related policy issues:

“I will actually push back on the idea that section 101 is particularly unclear. The problem is not that it's unclear. The problem is that in many cases or some cases, the judges of the Federal Circuit or attorneys don't like what the outcome is.”

Josh also discusses effective patent policy advocacy in general, where the patent pendulum will swing under the Biden administration, and the low point for “patent quality.” Josh and Eli also discuss whether the patent system is unfair in any way for patent owners.

For anyone wanting to follow in Josh’s career footsteps, his advice is this:

“It's hard to get work in policy without having worked in policy. If you're interested in this, try and find roles in government, try and find roles on the Hill to know some level of what the policy sphere is like.”

On this episode:

The role of the CCIA in the patent debate
The failure of Section 101 legislation in the last Congress
The “patent quality” problem
How the Patent Trial and Appeal Board (PTAB) operates
Patent policy advocacy on Capitol Hill
Patent policy in Trump v Biden administration
Is the patent system unfair to patent owners in any way?
Why do different patent attorneys have such different views of the patent system?
The “peanut butter and jelly sandwich” patent

Links:

Senator Leahy to Take Chair of IP Subcommittee
US Inventors organization

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“Jeff [Roh] knew for every person like [him], who is able to succeed, there's countless others who aren't. They just fall flat because they encounter resistance and give up. And so he was on a mission to make other inventors and surgeons be successful as well."

Don’t miss this latest episode of Clause 8 with President and Chief Legal Officer of IntuitiveX, Mark Han, about the new business model they have created to help innovators in the medical field.

Mark cut his teeth working for the largest and most notorious “patent troll” Intellectual Ventures (IV). During the episode, Mark talks about what he learned from that experience and why he’s now excited to be in the business of bringing new products to market and building new companies at IntuitiveX.

“A lot of the large companies like Medtronic, they used to have a massive R&D team in-house. A ton of individuals whose jobs are just to invent new things and develop new products from within that company. Now, the model has shifted and those same companies are looking toward smaller companies to de-risk these ideas for them and get a little market traction."

Mark talks about how IntuitiveX uses the patent process to advance breakthroughs in medtech and life sciences in ways that are not possible in other fields.

“What IntuitiveX does differently is, we actually want to either invent or help inventors. And we specialize in the medical and life science space. We help clients protect their ideas, develop prototypes, test, validate, raise money, set up manufacturing capabilities, regulatory expertise to get FDA approval, and then ultimately bring the product to market.”

This is an incredibly insightful episode exploring first hand how the patent process helps innovative individuals and small companies bring their medtech ideas to fruition.

On today’s podcast:

Intellectual Ventures
How to identify and acquire valuable portfolios
The “patent troll” narrative
How IntuitiveX is advancing medtech
What IntuitiveX look for in an innovators and their inventions
Taking Amplify Surgical from idea to market

Links:

Intuitive X
Amplify Surgical

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Chris Agrawal is President of the Association of Intellectual Property Firms and partner at Bookoff McAndrews. He was instrumental in one of the biggest patent transactions in history and the reason Eli got into patent law in the first place. If you’re a startup founder or an executive at a growth stage company worrying about patent protection or wondering how to scale your patent program, download and listen to this episode today.

On how AIPF helped IP firms navigate the pandemic:

“I was really thankful to have the association because we were all talking with each other and sharing information about what we were doing. And so it was really helpful as the pandemic was hitting - in late February and early March of 2020 - [to be] talking to each other about what we were seeing internationally from our clients, from other firms.”

Learn how Chris approaches building a valuable portfolio of patents:

“The first place I start is looking at the business. What does the business look like today? And what do they need first and foremost? And then from there, start looking at more of the nice to haves. Is there something else where there's real revenue, but it's really not connected to our business? Where can we turn the portfolio itself into an asset separate from our business?”

How he thinks about monetizing valuable patents:

“In general, you start to map out the market. The first place you look at with any deal is who are the infringers? What does the market look like for these claims? Who needs the claims? Who's practising the claims? And what does that market look like? Who are the big players? And also, who is in need of a portfolio like this?”

Finding the right balance for the client relying on outside counsel:

“There's this kind of dance that will happen at certain points in prosecution with an examiner where you have to kind of really quickly make some decisions on the fly about what deals to make with an examiner . . .how to change scope here and there a little bit. I think ideally you want to empower your outside counsel to be able to have a little bit of leeway with examiners so that, so that that dance can happen.

I think it's really powerful if you can empower your counsel to do that.”

For all this and more, don’t miss Chris Agrawal on this week’s episode of Clause 8.

On today’s podcast:

Perspective as AIPF’s president on how firms have been able to succeed over the last year
Building and selling $1 billion patent portfolio
Prosecuting old patent applications that read on new technologies
Scaling a patent portfolio for startups and growth stage companies
Strategically thinking about role of in-house IP counsel
Unique challenges of handling patent prosecution work
Priceless advice to law firm attorneys
Staying on top of patents as GC

Links:

Chris Agrawal
Christopher Agrawal
President of the Association of IP Firms (AIPF)

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We hope you've enjoyed the episodes we've released so far in this season. We'll be taking a short break and will release the rest of the season very soon.

For more information, visit voiceofip.com. And, if you would like to learn more about my firm, visit harrityllp.com.

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If you’ve ever wondered how and why Judge Alan D Albright - of the Western District Texas - became America’s go-to judge for patent cases, you don’t want to miss this episode.

Before Judge Albright was confirmed in 2018, less than 10 patent cases had been filed in Waco district in its entire history. In 2020 alone, he took on almost 800 new patent cases, accounting for 20% of all new patent cases filed in the US last year.

“Having practised all those years, I get that 99% of the time, while it may appear that the dispute is trivial, it's really important. It's very binary, and whatever I rule is going to drop, not maybe dramatically, but it's going to have an impact.”

This episode covers why Judge Albright loves handling patent cases, his plans for handling a growing docket, and his views on how a judge should handle a patent case and what makes an effective patent litigation counsel.

“The best math teacher you're ever going to have is someone who really understands math, so that when they're explaining it to you, they make it simple enough for you to understand. It's the same with patent cases. Which is, find unicorns who have such a high level of technical understanding that they can then teach it to a jury through the witnesses.”

Judge Albright is as transparent in this episode as he is in the courtroom. So if you’re wondering how to make your case more efficient, how you can clerk for him, or why it’s easier to predict where to be struck by lightning than how to become a district court judge, don’t miss him on this week’s Clause 8.

On today’s podcast:

Judge Albright’s love for patent cases & why it’s not really work for him
Plan to handle growing docket of patent cases
Getting into patent law as the youngest magistrate judge in history
Why many district court judges aren’t interested in handling patent cases and how it impacts their resolution
Example set by Judge John Ward and Eastern District of Texas
Why patent owners deserve a jury trial
Picking effective patent litigation counsel
Discovery disputes
Approach to attorneys filing transfer motions
Advice to trial attorneys for preparing and being effective
Navigating Federal Circuit decisions and focusing on being a good trial judge
Following press coverage & commitment to transparency
Clerking for Judge Alan Albright
Why you shouldn’t - or possibly should - wear python boots to the courthouse

Links:

US District Judge Alan Albright – US District Court

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How many Supreme Court Justices can you count as friends? Professor Stephen Yelderman, one of America’s leading IP scholars, was recruited to join the Notre Dame Law School faculty by future Supreme Court Justice Amy Coney Barrett, and clerked for Justice Neil Gorsuch before and after he joined the Supreme Court.

Prof. Yelderman’s experience of having a personal connection to not one, but two Supreme Court justices, as well as having clerked at the Supreme Court, have provided him with a unique perspective into how the Supreme Court approaches patent and other IP issues.

“One of the cool things about the court is there's usually nine justices and at least nine clerks, all thinking about the exact same legal issues at the exact same moment in time. And it really leads to a level of engagement, and conversation and debate. That really is a lot of fun.”

In today’s incredibly candid episode, Prof. Yelderman shares his journey into patent law, why he chose to become a patent agent, meeting Justice Amy Coney Barrett, clerking at the Supreme Court, and the creative ways companies try to influence the Supreme Court.

Prof. Yelderman insights are not to be missed by anyone who is interested in having a better understanding of how the Supreme Court approaches IP issues, how the patent system truly works, and how to succeed in the legal field.

“A piece of advice I have is when an opportunity comes, say yes to it because you oftentimes don't have good visibility to all the doors that will open down the road.”

On today’s podcast:

From engineering at Stanford to patent law to clerking at the Supreme Court
Misguided thinking about “patent quality”
Different approaches to anticipation and obviousness during USPTO examination, PTAB proceedings, and district court litigation
Meeting and working with ACB before she joined the Supreme Court
The one patent case ACB decided before joining the Supreme Court that cited one of Prof. Yelderman’s articles
How and why the Supreme Court approaches IP cases differently from other cases
Gorsuch’s correct approach to patent cases & the one case he got wrong
Why Gorsuch’s concerns regarding the PTAB are likely to be the future consensus
Efforts to influence Supreme Court & impact of atmospherics on the justices’ decisions regarding patent cases

Links:

Stephen Yelderman

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At the end of last year, IPWatchdog asked leaders in the field about their wildest dreams for America’s IP system. The most common answer was for former director of the USPTO Andrei Iancu to continue on as director. Former Deputy USPTO Director Russ Slifer noted that Andrei will be a hard act to follow.

Andrei immigrated from communist Romania when he was 13 years old, and still, to this day, believes the US is the best place to be for freedom and opportunity.

“I'm a huge fan of innovation and creation, creativity, and the intellectual property that supports all of that. I do believe in one's ability to take control of their own destiny and succeed, and I think the United States offers that unlike any other country.”

From the first time learning about patents, to pursuing a career in patent litigation where he represented clients on both sides and in all sorts of industries for over 20 years, to creating balance at the USPTO, to highlighting how successfully the IP system has enabled the invention, development, production and rollout of multiple COVID-19 vaccines, not just in the US, but worldwide, Andrei’s passion for patents is palpable:

“This is really the best area of law to be in, one of the best professions to be in, in general, how lucky we are. We work on behalf of the most creative people in the world, literally people who are changing the world and improving the human condition.”

If you’re keen to follow in Andrei Iancu’s footsteps, to be a future director of the USPTO, or to find out how to communicate with the new director, don’t miss Andrei on this week’s Clause 8.

On today’s podcast:

From communist Romania to USPTO
How the IP system has dealt with the pandemic
The two jobs of the PTO director
The best way to communicate with the USPTO
What makes employees successful at the USPTO
Andrei’s advice to younger patent attorneys

Links:

https://www.irell.com/lawyers-andrei-iancu
LinkedIn - Andrei Iancu
Book- The Boys In The Boat

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Judge Joe Lentivech is a former Administrative Patent Judge. On this episode, he talks about how he became an Administrative Patent Judge, how the Patent Trial and Appeal Board (PTAB) operates, how to win ex parte appeals, overcoming Section 101 rejections, oral hearings at the PTAB, and much more!

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Brad Watts is the Majority Chief Counsel and Staff Director for the Senate Subcommittee on Intellectual Property. Under the leadership of Sen. Thom Tillis, Brad led the herculean effort to fix the Section 101, patent eligibility mess.

In this episode, Eli and Brad talk what really happened during this last attempt at reform, why it wasn’t successful, where to go from here, and much more.

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Welcome to Clause 8 – the Voice of IP. Clause 8 is part of IPWatchdog and hosted by Eli Mazour. If you enjoy listening, please subscribe on your favorite podcasting app, share it with others, and leave a five-star rating.

This episode features an interview with Professor Adam Mossoff from George Mason University’s Scalia Law School. He is the leading academic expert when it comes to intellectual property policy issues. Most significantly, he is largely responsible for providing the intellectual foundation that has helped shift the anti-patent narrative in Washington, DC. There’s a good chance that you’ve come across his many op-eds on IP issues in publications such as the Wall Street Journal or have seen his engaging testimony at Congressional Hearings.

On this episode, Eli and Professor Mossoff discuss many subjects, including:
• how Richard Epstein influenced Professor Mossoff’s scholarship,
• how the ideals of classical liberalism relate to intellectual property rights,
• the debate among conservatives and libertarians regarding IP issues
• what’s wrong about framing IP rights as being all about providing incentives,
• the Supreme Court’s approach to patent cases,
• why Congress and the executive branch – not the Supreme Court - are the better path for improving America’s patent system
• “Why Do Law Professors Do What They Do?”
• how law school professors influence the patent policy debate,
• how trade organizations try to shape the patent policy debate by using law professors and other prominent attorneys,
• importance of law school professors making it clear when they’re acting as advocates v. as academics,
• navigating junk science studies/statistical claims about the patent system,
• importance of engaging in a positive research agenda about the patent system instead of just reacting to bad scholarship,
• empirical research overwhelmingly contradicting the patent holdup theory over the last 10 years,
• educating Congressman Darrell Issa and the importance of having evidence and data on your side,
• contradiction of China strengthening its own patent system while continuing to steal IP from other countries and having no rule of law otherwise,
• the unprecedented response by the pharmaceutical industry to the COVID‑19 pandemic thanks to the foundation previously created by America’s patent system, and
• how current changes to the patent system can undermine a similar response to the future.

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This episode features an interview with Bruce MacEwen. He is the founder and president of Adam Smith, Esq. and has written thousands of articles on the economics of law firms. He is recognized as the world’s leading expert in this subject and provides advice to a select number of law firms about how to succeed in the changing legal landscape.

During this episode, Bruce and Eli discuss:
• Why Bruce thought there was something off about law firms by Thanksgiving of his first year as an associate
• How companies select & manage outside counsel
• Tension of building in-house law departments v. relying on outside counsel
• Why law firms refuse to do recession scenario planning
• Surprising nimbleness of law firms
• Law firms being much more thoughtful and humane in dealing with the Covid-19 pandemic than they were during the “Great Financial Reset of 2008”
• Why successful law firm partners can be dynamite for law firms
• Rethinking real estate needs of law firms
• “Best-in-breed” law firms v. full-service law firms
• Boutiques and benefits of a lawyer’s practice being at the core of what a firm does
• Using Net Promoter Score (NPS) to evaluate law firms
• Law firms deciding whether to invest in a practice area
• Vision and hunger being the key to starting a successful boutique law
• Difference between lawyers who succeed v. fail

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This episode features an interview with Sarah Tsou, who is an investment manager for patent litigation at the world’s leading litigation funder, Bentham IMF (now part of Omni Bridgeway Limited).

The playbook is simple for deep-pocketed defendants facing lawsuits from patent owners with limited resources. Even if a patent owner has a very strong case, the defendant can just drag the case out long enough until the patent owner and his lawyers run out of resources to continue. At best, the patent owners are forced to settle lawsuits for a fraction of what they think they are owed.

Patent litigation funders have changed this calculus by providing patent owners with enough resources. However, as you will hear in this episode, only 1% of cases have the rare mix of merits and economics to receive funding from top litigation funders.

This episode is especially relevant because of the pressure many in-house patent litigation attorneys are facing to settle or give up because of shrinking budgets due to the Covid-19 pandemic. Eli and Sarah discuss how patent litigation funding can serve as an attractive alternative for companies that are in this position.

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This episode of Clause 8 features an interview with Brian Pomper of the Innovation Alliance.

Thomas Edison, the Wright Brothers, and Charles Goodyear are some of America’s best-known innovators. Instead of just making and selling the final products, they obtained patents and licensed their innovations to manufacturers. American companies like IBM, Qualcomm, and Dolby have followed this great American tradition of focusing on innovation.

However, the patent troll narrative has undermined the idea that innovators should be incentivized and rewarded for their efforts. A string of Supreme Court decisions and the passage of the American Invents Act were part of an effort to deal with the so-called “patent troll” problem.

Around the time that the AIA was being debated in Congress, a diverse group of technology companies that focus on research and development formed the Innovation Alliance to educate DC policymakers.

And, Brian – a registered patent attorney who worked for several years on Capitol Hill - became the executive director of Innovation Alliance shortly after it was started.

During this episode, Brian discusses:
• working in Congress and how he became the head of The Innovation Alliance;
• the #1 way to improve the patent system;
• what unites the Innovation Alliance;
• how the Innovation Alliance tried to improve the AIA;
• the Obama administration’s continued efforts to restrict patent rights;
• how DC became more patent friendly;
• the Senate IP subcommittee and why there’s still hope for legislative action to fix patent eligibility;
• importance of having grassroots support for legislative efforts;
• the impact that the Covid-19 pandemic is having on the patent policy debate and the Open Covid Pledge; and
• much more!

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This episode features an interview with trial attorney Frank Jakes - the founder of the Intellectual Property Group at the firm of Johnson Pope in Tampa, FL. There’s a good chance that you have recently seen him questioning Joe Exotic in the Netflix documentary Tiger King. However, even before successfully representing Carole Baskin and Big Cat Rescue, Frank Jakes was already a legendary trial attorney in Tampa who handled lots of cases involving high-profile parties and interesting personalities and won many millions of dollars in verdicts. Many of those cases involved a wide variety of IP rights.

During this episode, Franks talks about:
• practicing IP law in Tampa, FL;
• his acting background;
• what makes someone a great trial lawyer;
• handling IP cases on a contingency basis;
• how IP owners should go about finding the best attorney to represent them;
• representing a computer programmer who developed the Wheel of Fortune computer game on a contingency basis;
• creatively pursuing contract and misappropriation theories in state court instead of a copyright infringement lawsuit in federal court;
• facing opponents with endless resources;
• his experience with patent infringement cases;
• representing Larry Flynt in a case involving a promise of a $1 million reward for proving who actually killed JFK;
• representing Carol Baskin and Big Cat Rescue versus Joe Exotic;
• whether he ever feared for his life after the Tiger King case; and
• much more!

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The latest episode of the Clause 8 podcast features an interview with Josh Malone – the inventor of Bunch O Balloons and America’s foremost advocate for reliable patent rights. Josh came up with the idea for Bunch O Balloons to help his kids fill up 100 water balloons in less than one minute. It eventually became the most popular toy in America. However, before Bunch O Balloons even came to market, another company copied it and started selling its own versions of the product. Luckily – or so he thought at the time – Josh filed a patent application for his Bunch O Balloons invention. He did not know the enormous amount of time, money, and luck it would take to successfully enforce patents that covered his invention. This episode tells the story of what it took, including taking a trip to Bentonville, AR in the middle of the night to try to convince Walmart to stop selling knock offs of his product.

During this episode, Josh talks about:
• getting involved in the making of the documentary Invalidated that featured his story;
• the process of innovation that allowed him to invent one of America’s most popular toy products;
• strategies that he used to get patent protection for his innovation;
• the process of successfully licensing an invention for a physical product;
• how the “As seen on TV” company Telebrands copied his product and continued doing so after losing multiple court decisions;
• the patent litigation strategy that he pursued to ultimately reach a successful settlement;
• the role that the US Patent’s Office played during the Patent Trial and Appeal Board (PTAB);
• why he decided it was necessary to launch a PR campaign for patent rights and advocate for those rights on Capitol Hill and elsewhere in Washington, DC – including by literally burning patents outside of the US Patent Office;
• the enormous financial and psychological toll on inventors trying to enforce patent rights;
• the shortcomings of contingency fee arrangements and litigation financing;
• advice to other innovators who are thinking about getting patent protection; and
• much more!

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This episode is the second and final part of our interview with Kevin Jakel, the founder and CEO of Unified Patents. On this episode, we continue the conversation with Kevin about how Unified Patents operates, discuss Unified Patents’ new program for targeting Standard Essential Patents (SEPs), debate whether the patent troll narrative has been overblown, talk about the patent quality problem, and delve into some other patent policy issues related to IPRs and the PTAB. We also find out what Kevin has in common with George Costanza!

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Kevin Jakel is the founder and CEO of Unified Patents. Since the passage of the American Invents Act (AIA), Unified Patents has been focused on using AIA’s new post-grant proceedings to challenge patents at the PTAB that are owned by so-called non-practicing entities or “patent trolls.”

This is an amazing story of rare and impressive innovation in the patent field. It is also a story about how the AIA allowed third parties – that are not directly involved in a patent dispute - to “independently” challenge patents at the PTAB. When Unified Patents is unsuccessful in challenging a patent at the PTAB, Unified Patents’ member companies are able to separately challenge the validity of the same patent again at the PTAB or in district court. This significantly increases the costs and difficulty of trying to enforce that patent.

Either because it wants to keep patent owners on edge, does not want to provide ammunition to those who question how independently it really operates from its members, or for some other reason, Unified Patents has not publicly disclosed how it decides what patents to target. This interview with Kevin tries to resolve some of that mystery surrounding Unified Patents.

This episode is the first part of our interview with Kevin. We talk about his career, what drove him to start Unified Patents, how Unified Patents came about, and start our conversation about how Unified Patents operates.

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Gene Quinn is the founder of IPWatchdog.com. It has been the leading online publication focused on intellectual property for almost twenty years. Although they don't always agree, Federal Circuit judges, Congressional staffers, and K Street follow it closely to stay abreast of latest IP policy-related developments.

During the episode, Gene discusses the serendipitous start to IPWatchdog.com, why it has been so successful, and what it's like to be read by Federal Circuit judges and other luminaries. Gene also talks about the IP policy landscape in Washington, DC and how to effectively impact the policy making process. And, Gene shares his insights regarding the state of patent eligibility, the USPTO's Patent Trial and Appeal Board (PTAB), and the future for America's patent system and innovation.

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Gil Hyatt is one of the most significant American innovators in the field of personal computing - the inventor of the microprocessor. And, he has been involved in a David versus Goliath battle with the US Patent and Trademark Office for decades. Initially, Gil was able to successfully obtain patents for his innovations and license them for hundreds of millions of dollars. However, in the mid 1990s, the USPTO started secretly flagging his applications under the Sensitive Applications Warning System (SAWS) program and processed them in a way that prevented him from obtaining any more patents. In response, Gil filed multiple lawsuits against the USPTO (including a successful appeal to the Supreme Court). During this episode, Gil discusses his story, including a recent class action lawsuit that he filed in his continued battle to obtain the patents that he believes he deserves.

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John Harrity is the managing partner of Harrity & Harrity LLP and a leader in innovation in the legal field. John, along with his twin brother Paul Harrity, founded the patent preparation and prosecution firm almost twenty years ago.

During this episode, we discussed the history of the firm, the secrets to the firm's success, and how to successfully innovate in the legal field.

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Makan Delrahim is the Assistant Attorney General for the Antitrust Division. Makan is the first registered patent attorney in that role and has already made some significant changes with regards to the DoJ’s approach to intellectual property issues and encouraging innovation.

During this episode, we discussed Makan's personal story, the Antirust Division itself, the intersection between patent and antitrust issues, the relationship between the DoJ and the FTC, Standard Setting Organizations, and many other topics.

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Kathi Vidal is the managing partner of of the Silicon Valley office of Winston & Strawn LLP. Kathi is also one of the top patent litigators in America and one of the most interesting thought leaders in the legal industry.

During this episode, we discussed how Kathi became so successful, what it’s like to be an IP lawyer in Silicon Valley, the state of patent litigation, strategic patent prosecution, business development, and many other subjects.

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Aaron Cooper was the Chief Counsel for IP and Antitrust Law on the Senate Judiciary Committee during the passage of the Leahy-Smith America Invents Act (AIA) and is now the head of global policy for the trade group BSA (fka the Business Software Alliance). The AIA arguably made the most substantial changes to patent law since the Patent Act of 1836.

During the episode, we discuss the passage of the AIA, post-grant proceedings created by the AIA, the role of BSA and other interest groups in shaping intellectual property (IP) policy, current patent-related legislative proposals, and many other subjects.

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USPTO's (United States Patent and Trademark Office) Director of Technology Center 3600 Business Methods discusses his career, role at the USPTO, how policy is formulated and implemented at the USPTO, taking over and turning around the TC after the Alice Supreme Court decision, and section 101 rejections. He also provides priceless advice to patent practitioners about how to successfully work with patent examiners and obtain patents.

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Former Congressman Waxman discusses the passage of the seminal Hatch-Waxman Act, recent proposals to improve the balance between rights of brand name pharmaceutical and generic companies, and his 40-year career in Congress.

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IP Columnist for Above the Law and Founding Partner at Kroub, Silbersher & Kolmykov PLLC & Markman Advisors LLC. Kroub, Silbersher & Kolmykov PLLC is an IP litigation boutique & Markman Advisors LLC is a leading consultancy on patent issues for the investment community.

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In this episode of the Clause 8 podcast, host Eli Mazour sits down with David Kappos. Mr. Kappos is the former head of intellectual property (IP) at IBM, former Director of the United States Patent and Trademark Office (USPTO), and now serves as a partner at Cravath. Eli and Mr. Kappos discuss Mr. Kappos’s career at IBM, his time as the director of the USPTO, and his advice for the current administration with regards to IP.

As the conversation unfolds, Mr. Kappos shares his own story beginning in law school. He shares about how his dream for a career in patent writing and prosecution surprisingly morphed into executive opportunities at IBM. Then, Mr. Kappos provides some excellent advice on team development and leadership, specifically how to use delegation to improve yourself and your entire team. He also provides specific advice for a variety of IP counsel.

Next, Mr. Kappos talks about how he ended up with his position at the USPTO and the changes he implemented to greatly improve the USPTO.

Finally, as the conversation closes, Mr. Kappos comments on how the current administration is handling IP issues. He expresses gratitude for the current USPTO leadership from Director Iancu. However, he ends the conversation by calling for the White House to release a formal paper in support of policies that will help the rise of 5G technologies. All in all, Eli and Mr. Kappos’s dialogue covers a plethora of topics and is saturated with wisdom for professionals of all calibers to hear.

Learn more about Clause 8: https://www.clause8.tv/

Book “Tailspin” Mentioned in Podcast: https://amzn.to/2NrQVl0

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Sampling of stories and topics discussed during the interview:

Starting and growing America's largest Intellectual Property (IP) boutique law firm
Personal story of going from growing up in Pennsylvania and selling furniture to starting a law firm in downtown DC
How having successful fathers influenced Doug Henderson and his co-founder Marcus Finnegan
Vision and innovations that contributed to Finnegan Henderson's success
Shaping firm culture in a way that allowed next generation of partners to successfully take over the management of the firm
Attracting and keeping great clients
Keys to retaining talent at a law firm
State of the IP legal industry, including failure of other IP boutiques
Surprising advise to potential client about choosing an IP boutique v. a general practice firm
How fear of losing their Blackberry smart phones caused DC policy makers (including Supreme Court Justices) to turn against strong patent rights
Having Supreme Court Justice Antonin Scalia as a neighbor and watching him fearlessly perform CPR
Advice for other firms, lawyers, and law students
And, much more!

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Sampling of stories and topics discussed during the interview:

Mistakenly ending up in Soviet Union during the Cold War
Working with John Podesta (chairman of Hillary Clinton’s campaign) on Capitol Hill
Advising Judge Bork before his Supreme Court confirmation hearings
Being nominated and serving on the Federal Claims Court and the Federal Circuit
Bilski decision, its aftermath, and the state of subject matter eligibility in America
Views about the Supreme Court’s patent law jurisprudence
The American Invents Act (AIA) and the creation of the Patent Trial and Appeal Board (PTAB) “death squad”
Importance of software patents specifically
Importance of a strong patent system for economic development and America’s global competiveness
Ideas for improving America’s patent system
China’s commitment to improving its own patent system
Advice to law students and lawyers
And, much more!

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Topics discussed during the interview include:

• Can Patents “Make America Great Again”?

• Why fixing America’s patent system is crucial for job growth

• Congressional action needed to fix patent eligibility law

• Immediate changes that could be made by the Trump administration to improve Patent Trial and Appeal Board (PTAB) proceedings

• State of United States Patent and Trademark Office (USPTO)

• Current USPTO Director Michele Lee & Former USPTO Director David Kappos

• Judge Michel’s career fighting public corruption in Philadelphia and Washington, DC

• How Judge Michel almost wasn’t nominated because of the failed confirmation of Judge Bork

• Federal Circuit Evolution: evolution of the Federal Circuit from first Chief Judge & former Air Force General Howard Markey to the “Golden Age of the Court” under Judge Michel

• And, much more!

Clause 8: Recent Episodes

Eli Mazour