IPWatchdog Unleashed

This week our conversation takes us on an international journey, more or less. Andras JOKUTI is an intellectual property lawyer with domestic and international experience in public IP policy and university technology transfer. He is the former Director-General for Legal Affairs of the Hungarian Intellectual Property Office, and he is a former Fulbright Scholar. Andras studied intellectual property and obtained his LL.M. in intellectual property law from The George Washington University. Thereafter, Andras worked with the Budapest University of Technology and Economics to strengthen its IP and technology transfer operations. And since January 2022, he has served as the Director of the Patent and Technology Law Division at World Intellectual Property Organization. Andras came to the United States last week to speak at IPWatchdog LIVE 2024, which was hosted at the Renaissance Capitol View hotel in Arlington, Virginia. 

During our wide-ranging conversation we discuss a number of issues, from standard essential patents, to artificial intelligence, and to trade secrets, which is what brought him to IPWatchdog, to discuss the new WIPO trade secret guide, published in July 2024. 

This week we will change things up a bit. Until now our podcast has focused on conversations with newsmakers and interesting personalities. We won’t be giving that format up, but this week we will shift things to allow me to do a little ranting on a topic I’ve been thinking about more and more over the last several years; namely, do we still need, or even want, a Federal Circuit? 

I’ve been kicking this question around in my head for a while. There are a variety of reasons why the Federal Circuit seems to have outlived its usefulness, from panel dependency, to what at times appears to be utter disdain for certainty, predictability and even binding precedent, to the shocking, unfair and egregious treatment of Judge Newman. Why do we need a Federal Circuit? Why should we want this flawed institution to continue?

What we know is very little of what the Federal Circuit does any more relates to patents, with only 15% of what has occupied the Federal Circuit over the last six months relating to opinions in patent cases. Meanwhile, what decisions the Federal Circuit does issue are panel dependent and show not a care in the world about the Court’s original mandate, which was to create a unified national patent law and recognize that at least some patents have to be valid and enforced. And now over the last 2 years we have an inexplicable usurpation of authority with the virtual impeachment of Judge Newman. If these judges are so unfamiliar with basic due process and the opportunity to be fairly heard why should anyone believe they are themselves competent to be judges on any level? 

Today we're going to tackle a question that has divided the patent innovation community for a generation. Depending on your perspective, patent trolls have been and continue to be a problem, or complaints about patent trolls have been greatly exaggerated.

As is often the case when emotions are running high and there is so much money at stake, the truth probably lies somewhere in the middle.

Unfortunately, the bad actors on both sides of patent litigation have so clouded the issues to the point where it's hard to look at patent owners and defendants as anything other than the caricatures they represent, which is the worst of the worst, really. So, let’s put some real facts on the table and meat on the bones and talk about what is really going on, both good, bad and ugly.

This week the tables are turned. As many of you know Eli Mazour is the founder of the Clause 8 podcast, and the podcast is known by its tagline as “the Voice of IP.” Indeed, for years Eli has been just that… the voice of IP… interviewing numerous people in the industry, from Federal Circuit Judges to Chief IP Counsel and political leaders, I even had an opportunity to sit with Eli for a conversation when he first started Clause 8, which we discuss at the start of our conversation.

So, once I started my own podcast it was only natural to sit down with Eli for my own discussion with him, to pick his brain in an unscripted, open-end conversation. And the resulting conversation did not disappoint. We discussed a great many things about patents and innovation, the Federal Circuit and why clients want and need patents, and patent strategy. 

We begin our conversation with discussion of how Eli got into the science and engineering world and ultimately into the patent profession, and we also discuss his new home at Foley & Lardner, which has embraced Eli’s work on Clause 8, which will continue. 

In retrospect our conversation wound up being largely about the key to writing and obtaining high quality patents, which is also the key to innovating in the first place. You need to have a purpose and a goal. You need to be addressing an identifiable problem with a real, concrete, technical solution. And you need to focus on something that will actually matter to the client. And while patent strategy and ensuring protection actually protects what the client is selling matters most for those clients who will have several dozen or even several hundred patents, it really matters for everyone. 

This week our conversation takes us in-house to discuss patent strategy and insights on how outside counsel can best work with in-house counsel to build a solid working relationship and actually deliver what the client wants and needs.

My conversation is with Gary Lobel, who is currently senior patent counsel for Reckitt where he is responsible for global legal and intellectual property matters for several different business units within the Reckitt family. In this role Gary plans and implements global intellectual property strategies in the area of biotechnology, pharmacologic and nutritional formulations. He works with in-house constituencies, evaluates opportunities for potential partnerships and acquisitions, and he manages outside counsel working on both patent procurement and litigation. Prior to joining Reckitt, Gary was Chief Patent Counsel for Nestlé, and he also worked early in his career as a patent attorney at Novartis. 

I always enjoy my conversations with Gary. He is extremely bright and thoughtful, I find that every time I speak with Gary I learn something, and our conversations often go down paths I didn’t expect but which are always interesting and informative.  Gary has a knack for seeing all sides to every issue or problem as if he is constantly playing a game of 3D chess and is at least several moves ahead. 

In our conversation this week we had a wide ranging conversation on patent strategy, including working with patent examiners—including what to do when you are assigned to a difficult patent examiner with a low allowance rate—the importance of interviews, tips for getting past 112 rejections, and how outside counsel can build solid, working relationships with in-house counsel, and much more. 

Last week we hosted our first annual Women’s IP Forum, which was a huge success. This program came about for several reasons.

First, as many of you may know our “Masters Series” of events gets its name from the fact that those who are invited to speak on panels have true masters level knowledge and experience, often with speakers having at least a generation of industry experience, sometimes much more. And as much as I like the high level conversations we have at our Masters events, and while I don’t plan on making changes to the masters model, I’ve been bothered by not having some forum for rising stars to participate in.

And then earlier this year when I was planning our patent litigation masters program I was having a difficult time finding women speakers. After doing a little digging I learned that only 10% of patent litigators are women. It was then that I started then to formulate a plan to at least do something.

At about this same time I had a conversation with USPTO Director Kathi Vidal in which I shared my working thoughts about a Women’s IP Forum, which would include everyone from rising stars to those who are well established and at the top of the industry. I asked her what she thought of the idea. Director Vidal was immediately enthusiastic and supportive, which sealed the deal in my mind. And I decided we needed to move forward with all due speed and not to wait to add a new program as part of our 2025 calendar of events. After receiving more enthusiastic support from firms and many women in the industry we somewhat hastily put together the program we had last week, which despite the speed with which it all came together was the best attended program we have hosted to date at IPWatchdog Studios. The excitement and energy were palpable.

We were honored to have Director Vidal join us to kick off the program—a program that featured 100% women. And while I was present running the technology, I did not speak and I did not moderate a single panel. So, the honor of sharing the stage with Director Vidal fell to Renee Quinn, my wife and our Chief Operating Officer.

So, without any further ado, here is a portion of Renee’s conversation with Director Vidal from the IPWatchdog Women’s IP Forum.

This week our conversation is with my friend John Rogitz, who is the managing patent attorney at Rogitz & Associates. John is a second generation patent attorney with more than 15 years worth of experience. He and his form work primarily in the software space, representing some of the largest video game companies in the world, which allows him to work not only on video games, but also on virtual and augmented reality technologies as well. And John also represents both well-established, large entities and start-up companies, with much of the rest of his work relating to Artificial Intelligence and Machine Learning. And in addition to his role managing the firm’s day-to-day operations, John also finds time to serve on the Executive Committee of the IP Section of the California Lawyers Association, teach as an adjunct professor at Trinity Law School, and occasionally write for us at IPWatchdog.com.

Being one of the more thoughtful patent practitioners I know, and someone who has auditioned numerous available AI tools for practitioners, I invited John to join my last intro to patent practice class to discuss prosecution strategy with my students this summer. While he was in town for that purpose we recorded this podcast. Not surprisingly, our conversation heavily focused on all-things software, both from the perspective of a technologist and the perspective of a patent professional searching, drafting and ultimately working with patent examiners to get allowances. So, we spent time discussing both the 2019 patent eligibility guidance, as well as several of the more recent guidelines from the Patent Office, including the Office’s AI guidance. 

We also spent a good deal of time discussing obviousness, KSR, and how at least sometimes, perhaps even often depending on the wording of the rejection from the examiner, you really only need to argue a lack of teaching, suggestion and motivation to persuade examiners that the claims you seek are nonobvious and allowable.

This week our conversation is with Josh Hartman, a partner at Merchant and Gould in the firm’s Washington, DC office, and the head of the firm’s ITC litigation practice. The International Trade Commission, or the ITC as it is commonly called, is an independent, nonpartisan, quasi-judicial federal agency that fulfills a range of trade-related mandates. And one of the primary areas where the ITC has jurisdiction is with respect to unfair importation. Unfair importation practices, which are prohibited by Section 337, most often involve claims relating to intellectual property rights, such as allegations of patent infringement, various forms of trademark infringement or trade secret misappropriation. 

What makes the ITC such an important venue for intellectual property rights owners is the ability to rather quickly obtain injunctive relief in the form of an exclusion order, which prohibits the importation of infringing goods into the United States. 

And while there are other federal venues where injunctive relief can be obtained for trademark infringement, counterfeiting, and trade secret misappropriation, since the Supreme Court issued its landmark decision in eBay v. MercExchange in 2006, it is has been increasingly difficult, in fact absolutely impossible for many patent owners to obtain any form of injunctive relieve against infringers even after the infringer has been adjudicated as being liable as an infringer and the patent in question has withstood all challenges in all forums. 

This week we journey inside the beltway into the world of politics, legislation and rulemaking, discussing innovation and patent politics with Chris Israel. Chris is currently a senior partner with ACG Advocacy, which is one of the premiere bipartisan government affairs and strategic consulting firms in Washington, DC. 

During our conversation we explore much of what is happening in DC relating to patents and innovation, and specifically discuss matters ranging from proposed guidelines from the National Institute of Standards and Technology relating to use of march-in rights to control drug prices, to the recently introduced RESTORE Act, which is little more than one-page would largely if not completely overrule the Supreme Court’s eBay decision and create a presumption that victorious patent owners who have proved infringement and withstood all invalidity challenges would be presumed to be entitled to injunctive relief. 

We also spend time discussing whether and to what extent patent and innovation policy is or has become political in the traditional sense. Often you will hear people discuss how this is not political in the Republican vs. Democrat way, with members of Congress on both sides reaching across the aisle to agree, both in favor of more protections for creators and innovators, and others who reach across the aisle sharing positions more favorable to implementers. But are times changing and is the patent and innovation space becoming more political in the traditional R vs. D sense? There may be some reasons to believe that at least certain issues are becoming political, with progressive and populist policies and champions tending to favor regulation and legislation that is often portrayed as likely to lower costs of products and services, particularly those that relate to drugs, which has become a hotly debated topic within the patent and innovation community. 

Chris and I also spend time talking about the reality that everyone on Capitol Hill is in favor of innovation—and much more innovation—and everyone seems to agree that the U.S. is suffering from a so-called China problem as it relates to the theft of intellectual property rights and innovation generally. And while everyone wants more innovation, talks about how important innovation is, and how it is essential to do something about the growing threat of theft from China, there is little agreement about next steps, or even basic solutions that would move past the talking points and into the realm of action. 

Our conversation this week takes us into the world of product licensing, and what we discuss will no doubt come as a bit of a shock to many patent practitioners and innovators in the high-tech and life sciences industries. This week I speak with Stephen Key, who is an inventor, entrepreneur, author and the founder of InventRight, which is a coaching company that helps independent inventors and startups learn how to license their inventions and ideas to industry. Unlike many who operate in the invention space and cater to independent inventors, Stephen has been and continues to be a successful inventor in his own right, having licensed many of his own inventions, and even having been forced to chase an infringer into a patent litigation case once upon a time.

I always enjoy talking with Stephen because for so much of the generation the patent and innovation industry has fallen apart thanks bad policy decisions and increasingly bad decisions from the Supreme Court and Federal Circuit. But as Stephen will tell us, there is a part of the industry that continues to work very well, and precisely as designed.  

If you are an inventor of a consumer product there are reputable companies looking for inventions and ideas to bring to market, and their business model is built on taking products to market over and over again, and they are in constant need of new products and improvements. They also realize litigation is wasteful when you are dealing with products that often have a 1-, 2- or 3-year shelf life, so they are willing to do deals that allow them to quickly get products onto shelves and into the stream of commerce, and inventors get paid.