Prof. Dan Brown and Dan Jr.’s Patent Battle Against a Retail Giant
Release Date: 02/15/2022
Chief Counsel John Lee on Bicameral, Bipartisan Efforts to Advance Section 101 & PTAB Legislation
Clause 8
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...
info_outline
Europe's New Unified Patent Court: Exclusive Interview with Judge Michael Fleuchaus
Clause 8
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...
info_outline
Resetting the Narrative on IP Rights in America
Clause 8
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...
info_outline
Matteo Sabattini on Licensing Igniting Virtuous Cycle of Innovation
Clause 8
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...
info_outline
Ed Murgitroyd on Disrupting IP Legal Services & Lessons from his Dad
Clause 8
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...
info_outline
Ofinno: The Little SEP Engine That Could
Clause 8
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...
info_outline
Kfir Luzzatto: Bring Amit Soussana Home
Clause 8
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...
info_outline
Time to Embrace Patent Eligibility Restoration Act (PERA) & AI Future
Clause 8
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...
info_outline
Exclusive Interview with Judge Pauline Newman’s Attorney Greg Dolin
Clause 8
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, 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 ork in a way that completely undermined the foundation of that complaint. Recently retired Federal Circuit Judge...
info_outline
SPECIAL EP: If Twitter Sues…with Gaston Kroub
Clause 8
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...
info_outline“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.