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