Clause 8

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

Disclaimer

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.

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.”

Disclaimer

Clause 8 Podcast Show Notes

Rob Rodrigues 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.

Disclaimer

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

*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.

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. If there are celebrities in the patent world, it’s Erich Spangenberg.

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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.

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/

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

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."

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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.  

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 |