Clause 8

Clause 8 of the US constitution is the foundation for America’s intellectual property laws. On the Clause 8 podcast, we talk to the personalities that make the IP system possible. That includes everyone from Chief Judges of the Federal Circuit and directors of the US Patent Office to the attorney who defended Carole Baskin’s trademark rights in the documentary Tiger King. The conversations provide strategic insights about the forces that shape IP policies, the business of innovation and IP law, and how to best deal with various patent issues from those who know best. We also share entertaining backstories that allow our listeners to better understand the most important decision makers in the IP field. This is why senior in-house lawyers, law firm leaders, and DC’s savviest patent policy advocates make sure they don’t miss an episode. This show is hosted by me, Eli Mazour. I am a partner at Harrity & Harrity, LLP – the go-to firm for the world’s largest patent filers. I personally try to use the knowledge that I gain from the podcast to help inform in-house counsel making difficult decisions, including how to prudently and effectively navigate patent policy developments. For more information, visit voiceofip.com. And, if you would like to learn more about my firm, visit harrityllp.com.

Chief Counsel John Lee on Bicameral, Bipartisan Efforts to Advance Section 101 & PTAB Legislation 03/14/2024

Chief Counsel John Lee on Bicameral, Bipartisan Efforts to Advance Section 101 & PTAB Legislation 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. You don’t want to miss this episode if you want to learn what changes might be in store for patent law or how the patent policy sausage is made in Washington DC 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 Congressman Darrell Issa | | 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 | | 1:07:44 | Cannot comment on the details of the issue involving Judge Pauline Newman. | | 1:07:57 | Role of lobbyists in development of IP policy | /episode/index/show/clause8/id/30369178

Europe's New Unified Patent Court: Exclusive Interview with Judge Michael Fleuchaus 02/29/2024

Resetting the Narrative on IP Rights in America 12/19/2023

Matteo Sabattini on Licensing Igniting Virtuous Cycle of Innovation 12/12/2023

Ed Murgitroyd on Disrupting IP Legal Services & Lessons from his Dad 12/05/2023

Ofinno: The Little SEP Engine That Could 11/28/2023

Kfir Luzzatto: Bring Amit Soussana Home 11/19/2023

Time to Embrace Patent Eligibility Restoration Act (PERA) & AI Future 11/12/2023

Exclusive Interview with Judge Pauline Newman’s Attorney Greg Dolin 08/01/2023

Exclusive Interview with Judge Pauline Newman’s Attorney Greg Dolin 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 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, 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 and 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! /episode/index/show/clause8/id/27619902

SPECIAL EP: If Twitter Sues…with Gaston Kroub 07/24/2023

Ex-USPTO GC Nick Matich on Rulemaking & the PTAB 07/14/2023

Shawn Lillemo on Building Software Tools for a Patent Firm 06/16/2023

New Episodes Coming Soon 06/09/2023

Joff Wild on Founding IAM for Chief IP Officers & EU Commission’s anti-SEP Crusade 05/19/2023

Joff Wild on Founding IAM for Chief IP Officers & EU Commission’s anti-SEP Crusade 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 /episode/index/show/clause8/id/26888835

Tom Irving on Litigating 1st Hatch-Waxman Case & Mentoring 1000s in Patent Field 05/05/2023

Tim Pohlmann on Founding IPlytics & Hosting The SEP Couch 04/21/2023

HTIA’s David Jones on Winning in DC 04/07/2023

Commissioner Stoll on Being Part of ‘First Family’ of Patent Law 03/24/2023

World’s #1 IP Dealmaker You Haven't Heard of...Yet 03/10/2023

USPTO Director Kathi Vidal Defends America's Patent System 02/24/2023

USPTO Director Kathi Vidal Defends America's Patent System 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 /episode/index/show/clause8/id/26028075

How the PTAB Killed Molly Metz’s Patents 02/10/2023

How the PTAB Killed Molly Metz’s Patents 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 /episode/index/show/clause8/id/25886289

Bruce Berman on Telling a Patent Story 01/27/2023

Bob Giles – Exclusive Interview with Qualcomm's New Chief IP Counsel 05/10/2022

Bob Giles – Exclusive Interview with Qualcomm's New Chief IP Counsel 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 , 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. /episode/index/show/clause8/id/23056148

Ray Millien - Volvo's past Chief IP Officer & CEO of Harness IP 04/26/2022

Ray Millien - Volvo's past Chief IP Officer & CEO of Harness IP 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 , 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. /episode/index/show/clause8/id/22908422

Prof. Tim Hsieh on Value of District Court Judges Having Patent Expertise 04/12/2022

Prof. Tim Hsieh on Value of District Court Judges Having Patent Expertise 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 , 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. /episode/index/show/clause8/id/22764098

Phil Warrick on Working with Sen. Coons to Improve Patent System 03/29/2022

Phil Warrick on Working with Sen. Coons to Improve Patent System 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 . [18:35] Finding a solution: Coons’ team hoped drafting legislation would clarify of U.S. patent code, a clause often confused with . 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 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. /episode/index/show/clause8/id/22602770

Louis Carbonneau on Brokering Patents After the Patent Gold Rush 03/15/2022

Louis Carbonneau on Brokering Patents After the Patent Gold Rush 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 /episode/index/show/clause8/id/22449719

Ryan Abbott on Why Patent Law Should Recognize AI Inventors 03/01/2022

Ryan Abbott on Why Patent Law Should Recognize AI Inventors 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 , whether everything will be “obvious” in the future, and Prof. Abbott’s fascinating new book 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 . [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. /episode/index/show/clause8/id/22183046

Prof. Dan Brown and Dan Jr.’s Patent Battle Against a Retail Giant 02/15/2022

Prof. Dan Brown and Dan Jr.’s Patent Battle Against a Retail Giant 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 , 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 and . [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 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 , 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. /episode/index/show/clause8/id/22126841

Josh Landau - On Lobbying for Weaker Patent Rights and “Making a PB&J Sandwich” 07/06/2021

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