Clause 8

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.

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.

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 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.

Disclaimer

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

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.

Disclaimer

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

Disclaimer

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.

Disclaimer

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.