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 perspective they bring to handling cases together at the UPC.  This segment provides priceless insights about how UPC proceedings differ from patent litigation within and outside of Europe and how litigants can maximize their chances of success at the UPC.     In the latter part of the episode, Dr. Grau provides a distinct viewpoint as a European patent attorney closely observing the UPC. Dr. Grau casts light on the myths and practicalities surrounding opting in or out of the UPC and gives valuable advice on how to leverage the UPC to obtain the best possible patent protection in Europe. Dr. Grau's perspective is crucial for those interested in understanding the strategic considerations that come into play with the UPC's inception.

This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

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 hope to accomplish.  They also discuss why the U.S. Chamber cares so much about IP issues, whether patents are underappreciated compared to other IP rights, and much more!

 

IP Principles: https://www.uschamber.com/assets/documents/A-Principled-Approach-to-a-New-Narrative-on-IP.pdf

This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

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 fueling further innovation |

| 0:18:56 | Successful licensing means getting to point where both sides are equally unhappy

| 0:19:20 | Importance of communicating the value of R&D for a successful licensing program |

| 0:21:17 | Feedback loop between licensing and prosecution departments is crucial |

| 0:25:41 | Why litigation is not always an indication of bad faith|

| 0:26:30 | Unwilling licensees posing a toll on innovation |

| 0:32:35 | Lessons learned from working at Sisvel |

| 0:34:38 | Avanci and others proving that markets are functioning efficiently because of industry-led, licensing solutions and that new government regulations aren’t necessary |

| 0:38:57 | IEEE's patent policy change sparking Matteo’s interest in policy|

| 0:40:44 | Taking on policy role at Ericsson at low point of America's patent system|

| 0:44:03 | Need for coalescing between different pro-patent interest groups |

| 0:48:14 | Impact of issuance and withdrawal of SEP policy statements in the US |

| 0:51:11 | European Commission's draft SEP proposals to supposedly help SMEs |

| 0:56:22 | Idea to actually help SMEs with licensing of SEPs instead of unworkable regulation |

This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

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 biggest hubs for IP services
• Expanding into Europe and all over the world through acquisitions & why some of those acquisitions failed
• Murgitroyd becoming the first and only law firm to go public on the London Stock Exchange
• Lessons learned sitting across from his father
• How moving to the states with his American wife led to a hard-won windfall for Murgitroyd
• Why Sovereign’s acquisition for £63 Million left a bitter taste
• Non-attorney ownership of law firm & why “who’s pulling the strings” is what ultimately matters
• Hexos IP disrupting the global renewals and annuity services industry

Mentioned article: “Ian Murgitroyd pens a Letter to my Younger Self” https://www.insider.co.uk/special-reports/ian-murgitroyd-pens-letter-younger-17680540

This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

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 buyer for Ofinno’s patents.  Instead, Ofinno went on to sell patents to companies like Samsung, Comcast, Huawei, and Honda.  Ofinno recently joined Avanci’s 5G Connected Vehicle licensing program and is executing on plans to start its own licensing programs in a wide variety of other technology areas, including next generation Wi-Fi, video compression, and semiconductors. 

Esmael and Kavon also discuss:

• Kavon joining Offino as its first in-house patent attorney and becoming CEO earlier this year
• How Ofinno structures its patent development program to obtain valuable patents
• And, much more!

This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

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 awareness.

 

Please share this story.

This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

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 software tools & skepticism regarding using AI
• How USPTO’s first Director of Emerging Technologies Jerry Ma & rest of USPTO have led on AI
• Future of using AI for patent practice
• Big Tech’s current view of state of America’s patent system and impact on patent policy debates
• Takeways from moderating IPWatchdog LIVE panel with previous Clause 8 guest David Jones, AIA’s “author” Joe Matal, and John Lee – Rep. Darrell Issa’s Chief Counsel for IP
• Impact of patent eligibility stress disorder (PESD) on debates regarding PERA’s
• Why patent community should embrace PERA to fix Section 101 mess
• Massie going MIA on patent issues
• Why Senator Thom Tillis is inventors’ best hope to pass meaningful legislation
• And, much more!

This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

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, Gene Quinn broke the news 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 spoke at Fordham Law School’s annual IP conference in New York 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, recent media interviews 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 Michel and Rader 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!

This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

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 "strictly enforce its intellectual property rights."  Although the letter focuses on trade secrets, Spiro’s colleagues are likely busy mining Twitter's patent portfolio. 

Unfortunately for them, Twitter’s patent program last made news in 2012 when it launched the Innovator’s Patent Agreement.  The IPA was meant to show Twitter’s commitment to “employees that their patents would “only be used for defensive purposes” (if you didn’t read the fine print).  Unsurprisingly, this attitude led to Twitter barely obtaining any patents.  However, it has managed to keep some foundational families of patents - that make Twitter founder Jack Dorsey as an inventor - alive.

Will any of this matter? What will it take for Twitter to file a credible claim suit? If Twitter does file suit, what will happen next?  What will it take for these billionaires - who previously challenged each other to a jiu-jitsu-match - to settle?  Is this IP dispute just a scheme by Musk to make Twitter someone else’s problem? 

You don’t want to miss this episode to find out. 

This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

USPTO Director Kathi Vidal’s decision to issue the Advance Notice of Proposed Rulemaking (ANPRM) is the latest major controversy surrounding the Patent Trial and Appeal Board (PTAB).  The American Invents Act (AIA) created the PTAB to supposedly provide a cheaper, faster alternative to district court patent litigation.  However, the PTAB quickly gained a reputation for being a patent “death squad” that allows defendants to repeatedly challenge the same patents until those patents are invalidated.

During the last administration, former USPTO Director Andrei Iancu tried to correct that by limiting when patents could be challenged at the PTAB.  Because those changes never finished going through the federal government’s rulemaking process, Vidal was able to quickly roll them back.  The ANPRM now presents a litany of its own proposals for fixing fix how the PTAB operates and heated opposition on all sides.

Nicholas Matich joins Eli to talk about the ANPRM and what’s likely to happen with its proposals.  Nick, who is now Principal at the patent litigation powerhouse McKool Smith, served as USPTO’s general counsel under Iancu after working at the White House and as Deputy GC of the OMB.  This provides him with an unmatched understanding of how the rulemaking process actually works for proposals emanating from the USPTO. 

Nick and Eli also discuss:

• What Nick learned from working with Viet Dinh and/or Paul Clement at Bancroft PLLC

• How the OMB reviews & approves agency rules

• Serving as USPTO’s GC

• Advice for influencing USPTO’s rules

• Iancu’s Fintiv factors & how to explain swift reversal

• Why the ANPRM was a mistake

• Advice for future USPTO Directors

 

This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com