Clause 8

Thank you for listening to the Clause 8 podcast. We hope you’ve enjoyed the episodes so far this season.

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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

Eli is joined by the legend of the patent bar, the virtuoso of Federal Circuit decisions – Tom Irving. They discuss the rise of the pharmaceutical patent practice, the creation and current state of the Federal Circuit, why and how Tom mentored 1000s of patent attorneys, best practices for patent prosecution, and much more!

• Chief Judge Moore’s efforts to oust Judge Newman

• How Tom ended up practicing patent law

• Why there are so many patent attorneys from and in Utah

• Joining Finnegan, Henderson in the 70s

• How general patent practice firms getting into patent law spurred the growth of the pharma patent practice

• Working on the first Hatch-Waxman litigation

• Stories about helping pharma start-ups build multibillion dollar patent portfolios

• Advice for building valuable patent portfolios

• Why pharma patents generally manage to survive PTAB proceedings

• The cost of drugs

• How Tom predicted issues raised by Salazar v. AT&T Mobility LLC

• Whether the Federal Circuit should issue more en banc decisions

• Should the Federal Circuit be responsible for uniformity in decisions?

• Being law firm partners with Judge Kara Stoll

• Being mentored by PJ Federico and others

• Advice for mentoring others

• Who should consider retiring

• Tom’s retirement plans in 2054

Tim Pohlmann is the founder and CEO of IPlytics, which provides software analytics tools for standard essential patents (SEPs).  Tim is also one of the world’s leading economists that focuses on the subject of SEPs, and was recently commissioned by the EU Commission to provide empirical studies for their work regarding SEPs.

Tim’s podcast, The SEP Couch, features discussions with a very diverse group of industry leaders, prominent attorneys, academics, and policy makers on the subject of SEPs).

On this episode, Tim and Eli discuss:

• The SEP Couch Podcast, including Eli’s favorite interviews with Carlos Olarte and Kirti Gupta

• How, as an economist, Tim became interested in patents, and specifically SEPs

• Founding IPlytics, the evolution of patent data, and keeping customers engaged

• Advice for starting and growing a software company in the legal/patent space

• Incentivizing through SEPs and the ideal system for innovation related to standards

• Weighing transaction costs & role of actors purposefully increasing those costs

• The limits of data and media simplification

• Lobbying on SEPs issues

• Lexis Nexis’ acquisition of IPlytics

David Jones is the Executive Director of the High Tech Inventors Alliance (HTIA), which advocates on patent policy issues on behalf of some of the largest tech companies in the world. 

When Dave became the head of HTIA in 2019, it seemed that DC was finally turning against the “patent troll” narrative driving patent policy in Congress and the executive branch.  However, that did not last long: efforts to pass Section 101 reform failed to gain traction in Congress; the current administration rolled back efforts to restrain the role of the PTAB under the previous administration; and an unprecedented lobbying effort spurred the Chief Judge of the Western District of Texas to randomly reassign new patent cases filed in Judge Alan Albright’s division.  All outcomes that members of the HTIA supported.

This episode features a wide-ranging and super fun conversation about if (and how) Dave has been so effective as head of HTOA over the last few years and/or if he’s just that lucky.

Prior to taking the helm at HTIA, Dave was assistant general counsel for IP policy at Microsoft and worked for Senator Orrin Hatch on IP issues for many years.  Dave is able to draw on those experiences to provide priceless – and often surprising - insights about how patent policies are shaped.

Former Patent Commissioner Robert Stoll joins the Clause 8 podcast to talk about working his way up from being an examiner to being the commissioner over his 30+ year-long career at the USPTO.  As commissioner, Bob helped former USTPO Director David Kappos implement the American Invents Act (AIA) and transform how the USPTO’s patent examiners operate.  Before that, he served as USPTO’s head of the Office of Legislation and International Affairs under Director John Dudas.  Now out of government, he freely shares what he thought about what happened at the USPTO during his time there as an executive, why he stayed, and what he thinks about the current state of America’s patent system.

He also talks about what it’s like to be part of the “first family” of IP law, which includes Federal Circuit Judge Kara Stoll.

In this episode, Eli and Bob also discuss:

• How so many of Bob’s family members ended up serving in senior IP roles in every branch of US government and internationally
• Bob’s secrets for longevity & success at the USPTO
• How he became Commissioner
• Relationship with David Kappos
• Whether the USPTO Director is really in charge of an administration’s patent policy
• Creation of the Patent Trial and Appeals Board (PTAB) and post-grant proceedings
• Role of “patent troll” narrative
• Whether there is a “patent quality” problem
• Director Vidal’s exercise of her Director review power
• Proposals to record examiner interviews
• Importance of IP bar organizations in shaping policies

If you’ve come across a national news story about some brash character making lots of money from patent deals, chances are that the person making those deals happen behind the scenes was an unassuming lawyer in Israel.  Her name is Lillian Shaked. 

On this episode, Lillian tells the story of how she went from being a commercial attorney in Israel to working with who’s who of patent monetization legends around the world and likely working on more major patent deals than any other attorney in the world.  Lillian also talks about her relatively recent transition from being the lawyer to acquiring and monetizing the patents herself.  This is likely only the beginning of that story….

In this episode, Eli & Lillian discuss:

• How moving from Canada to Israel set her apart as Israel’s high tech sector boomed

• How Lillian made a patent transaction career from one patent deal

• Working with Erich Spangenberg

• Advantage of working from Israel on American patent deals

• Importance of ongoing, positive relationships between parties involved in patent transactions

• Monetization strategies based on reasonableness of infringers/potential licensees

• Impact of course correction in patent market after the boom years in the early 2000s

• Rise of litigation funding

• Why patent litigation funding companies moved from taking passive role to taking active role

• How and why patent litigators prevent win-win outcomes

• Terms to avoid in patent deals

• Why and how deals fall apart

• Importance of momentum for patent transactions

• Why the BlackBerry patent deal fell apart

• Transitioning from handling the transactions as a lawyer to acquiring patents from beginning

• Advice for building valuable patent portfolios

• Efforts to shame patent assertion entities

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 

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

Bruce Berman is the PR guru of the IP world.  As CEO of Brody Berman Associates, he has implemented marketing and business development programs on behalf of more than 200 IP portfolios and businesses.  And, in 2016, he founded the Center for Intellectual Property Understanding, an independent non-profit that raises awareness of the use and impact of intellectual property on individuals and businesses.  He is also the host of the Understanding IP Matters podcast.  In this episode of the Clause 8 Podcast, Berman delves into the who, what, when, and how of telling IP stories to help promote causes in the patent world. 

On this episode, Bruce and Eli discuss:

• How Bruce went from “frames to claims”  
• How Bruce helped Kenyon & Kenyon after it lost a billion dollar patent litigation representing Kodak
• Success of the “Patent Troll” narrative
• Efforts to improve appreciation of patent rights
• Different appreciation of different types of IP rights (copyright v. patent)
• PR strategies for parties involved in patent litigation
• Internal and external patent PR strategies for operating companies
• PR strategies for NPEs
• Why “efficient infringement” is like kissing your sister
• How COVID was used opportunistically to sow misinformation regarding patents
• IP Media ecosystem