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This week on IPWatchdog Unleashed we speak with Arthur Daemmrich, who is the Director of the Consortium of Science, Policy and Outcomes at Arizona State University. Arthur is a historian who was previously director of the Lemelson Center for the Study of Invention and Innovation at the Smithsonian Institution. We speak with Arthur this week about the role patents have played in innovation, dating back to the Industrial Revolution. We also discuss the invention of the video game by Ralph Baer, Samuel Colt and his mass produced six-shooter known as the gun that won the West, Henry Ford and the assembly line, how and why Elon Musk succeeded with Tesla, and much more.

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This week on IPWatchdog Unleashed we are going to dive into the online gaming and game development world in a conversation about gaming, intellectual property, licensing, game development, branding and much more. Our conversation this week focuses on Spaceport Technologies, which is a technology company that enables brand owners to monetize their IP and game platforms to offer content creators the ability to license the use of those brands within their game environment. To do this Spaceport uses innovative technology that reduces transaction costs and allows for the monetization of intellectual property assets. In fact, through the use of Spaceport protocols and apps the acquisition of rights and payment for those rights through numerous small dollar value transactions is not just faster and easier, the deals actually become possible. 

So, with that backdrop, let me introduce our guests. First is Dan Temkin, who is General Counsel and Head of Intellectual Property for Spaceport Technologies. He began his career working for Procter & Gamble, where he spent nearly a decade. It was while he was at P&G that he became first introduced to intellectual property, telling me that as he worked with the IP attorneys, he came to the conclusion that what they were working on was “a lot more interesting” than what he was working on. Reaching that conclusion led him to Boston University for law school and ultimately a career in intellectual property law. 

Our second guest this week is Jay Kolbe, a co-founder of Impact Partners, which is a strategic communications firm that focuses on family offices, venture capital and startup founders. Jay is a specialist in marketing technology-focused PR. He develops influential communications programs that increase the valuation of the companies he advises. And in addition to working with Spaceport, Jay also works with Josh Harlan and Harlan Capital, who we spoke with several weeks ago about how they invest in and monetize recurring IP revenue streams.

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This week my conversation is with Carlo Cotrone, who is a Chief IP Counsel and frequent contributor to IPWatchdog, both our online publication and at our in-person programs. Carlo writes and speaks frequently about setting up, growing and managing in-house IP departments, and that is the focus of our conversation. We discuss taking a holistic view that focuses on the IP strategy, the people, and the operational aspects of building and managing a team, which includes both in-house employees, outside law firms and service providers, all working together in coordination to deliver high impact for the company.  

During our conversation we discuss the need to guard against your in-house team falling into doing commoditized work, which gets in the way of your in-house team really partnering with the business and maximizing value for the company. 

We also discuss what Carlo refers to as “servant leadership”, and when he discusses the concept of servant leadership you can’t help but be reminded of the old saying about nothing being impossible to accomplish if you don’t care who gets the credit. Carlo explains that this service-oriented mindset has allowed him to confidently and carefully navigate whatever issues arise in a thoughtful and intentional way. And it is “intentionality” that Carlo focuses on repeatedly in his writings, presentations and during this conversation, because as he explains constantly fighting fires is not the right way to do business. Sure, things need to be done and issues will arise, but to successfully lead you need to focus on the fundamentals, strategy, people, operations, and periodically reevaluate all of the above to ensure the ideas and plans you are trying to execute continue to make sense and everyone is rowing in the same direction and toward the same goals, ensuring that that status quo is not being accepted and the team is delivering what the company and internal clients deserve and require. 

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This week my conversation is with Leo White, who is Chief IP Counsel and Associate General Counsel for The Duracell Company. Leo is a patent professional by training, first starting out as an engineer, then like so many in the patent field have done he became a patent agent, then went to law school, and thanks to hard work, good mentoring and being in the right place at the right time he became an IP attorney for The Duracell Company, ultimately rising to become the top IP attorney for this American Manufacturer with one of the more iconic brands in the world.  

During our conversation we begin by briefly talking about patent strategy, but then move quickly to brand protection, trademarks, trade dress and effectively working with customs agencies around the world. While Duracell does patent its various battery technologies, and while White is responsible for maintaining a worldwide patent portfolio for the company, the company’s trademark and trade dress portfolio are the IP tools of choice used most often when working to fight the never-ending battle against counterfeiters and copycats, and to also protect against gray market imports. 

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This week on IPWatchdog Unleashed we speak with Brian Hinman, who is one of the leading IP executives and investors in the world. Brian has held senior executive positions at leading technology companies, such as IBM, Philips and Verizon. And after spending more than 6 years as the Chief Innovation Officer for Aon, today he is Chief IP Officer for Cote Capital. 

During our conversation Hinman explains how Cote provides capital for scaling manufacturing and operations, with IP assets backing the investment. The way Hinman describes this IP asset-backed investment strategy sounds lot more owner-friendly and startup-friendly than a typical venture capital round of investment, which often requires owners to give up more than half the company in order to receive an investment.

During our conversation we also discuss pending legislation, particularly the RESTORE Act, which would effectively overrule eBay and create a presumption than a permanent injunction is the proper remedy, with Hinman explaining that the legislation places the burden on the infringer to demonstrate that a permanent injunction is not warranted, which according to Hinman is the way it should be.

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On the heels of the PREVAIL Act passing in the Senate Judiciary Committee, the very next day USPTO Director Kathi Vidal wrote on the Director’s Blog about how wonderful the PTAB has been, saying in part: “Since AIA proceedings began over a decade ago, almost 70% of challenged patents have been upheld at the PTAB.”

This claim by Director Vidal initially made me speechless. Simply stated, she is wrong. It is absolutely false for anyone to say or suggest that 70% of challenged patents have been upheld at the PTAB. This claim is not true. It is pure fiction.

PTAB stats admit that out of those patents that reach a final written decision 85% lose at least one claim and 70% lost all claims. That is the reality for patent owners. If the PTAB issues a final decision you are virtually certain to lose, and these statistics have largely remained unchanged, with only minimal fluctuation since the inception of the PTAB in 2012.

So, exactly who is fooling who? The way the rules are structured, and the way we have actually witnessed the PTAB operate, confirms that no patent is safe ever. And this is not meant as any indictment of PTAB judges—they are just doing the job as defined in the staute passed by Congress and the rules created by the PTO. This is, however, a scathing indictment of those laws and rules, which are in desperate need of reform. 

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This week I speak with Josh Harlan, who is the founder and managing partner of Harlan Capital Partners, which is a privately held investment firm based in Palm Beach, Florida, and which focuses on asset-based investments, including investments backed by media and intellectual property rights, and specifically the monetization of streams of revenue back by intangible assets. During our conversation we speak about various investable streams of revenue in the media, sports and IP universe, and then we also make a hard pivot to discuss artificial intelligence, and what those looking to invest in AI should be considering, the viability of fair use as a defense to the ongoing lawsuits brought by copyright owners against AI developers, and the likely future marketplace for the monetization of training data and AI outputs. Harlan sees the possibility of “some pretty big damages awards on a one-time basis” for content creators in their copyright lawsuits against large AI developers but doesn’t see these legal issues as an existential threat to the AI industry. 

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Walt Copan joins us for a conversation about the role of science, technology and innovation in U.S. competitiveness and for U.S. national security. 

As many of you no doubt know, Walt is a former Undersecretary of Commerce and served as the 16th Director of the National Institute of Standards and Technology, a position for which he was unanimously confirmed by the Senate during the Trump Administration. Today, Walt is the Vice President for Research and Technology Transfer at the Colorado School of Mines in Golden, Colorado. 

I invited Walt to join us for our annual life sciences program this year. My pitch was that we would have a one-on-one conversation that would not only make up the final segment of the program, but which would also be used for our IPWatchdog Unleashed podcast. He graciously accepted my invitation, and we sat down for this conversation on Wednesday, October 30. 

During our conversation we discuss the ongoing Bayh-Dole march-in rights drama being caused by his old agency—NIST—which has published a framework that would allow the government to strip patent rights away from exclusive licensees if the government believes the product covered by a patent is too expensive. We also discussed the diverging approach to commercialization between universities who can own and license patent rights and federal agencies, which operate under an entirely different statutory structure that makes it virtually impossible to get innovations made by federal government employees to the marketplace and commercialized for the good of society. We also discuss the upward trajectory of China vis-à-vis innovation and intellectual property, and the stagnation within the U.S. innovation ecosystem, which has been primarily led by uncertainty and dismantling of the U.S. intellectual property laws. 

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This week we have a special guest—the Honorable Pauline Newman, Circuit Judge on the Court of Appeals for the Federal Circuit. 

Judge Newman spoke at our annual Life Sciences program at IPWatchdog Studios on Tuesday, October 29. Her remarks were largely unscripted, although she did have some notes that she consulted from time to time during her nearly 45 minute presentation. Judge Newman told her story, and the story of the Federal Circuit, in her own words. So powerful were her comments that at least several in the audience were seen shedding a tear, and she received a hearty standing ovation. 

Judge Newman is being wrongfully persecuted by her colleagues on the Federal Circuit. She has taken and passed with flying colors the three different mental evaluations she has submitted to, all conducted by different, highly regarded evaluators. And in addition to the final mental evaluation she was given a cutting edge CT scan of her brain, which showed no signs of cognitive decline, and in fact rather remarkably showed a healthy brain that looked to be the scan of someone in their 20s. 

Faced with all the inaccurate statements in the complaint, which have never been correct despite their falsity, the Federal Circuit persists in excluding Judge Newman from hearing cases, which every day is becoming a more significant constitutional crisis. 

So, against this backdrop we are pleased to present the Honorable Pauline Newman. 

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In this episode of IPWatchdog Unleashed, we discuss patent prosecution with the director of intellectual property at one of the top five filing companies in the world. Sivon Kalminov is the Director the Intellectual Property Division at Canon USA, where he is responsible for managing the Division’s day-to-day patent prosecution work, which includes overseeing both the patent prosecution and administration departments. He also provides support on patent litigation matters, contract matters, and general U.S. patent law-related advice to various domestic and international Canon companies and subsidiaries. He is a current member of the California State Bar Intellectual Property Section, and a past Chair of the Section.

Our wide-ranging conversation took place in person on October 1, at IPWatchdog LIVE, shortly after Sivon spoke on a panel about strategies for getting to yes when working with patent examiners.During our conversation, we discuss the unique set-up of the Canon intellectual property department, which sees Sivon and his team representing Canon USA, but also representing various Canon entities from around the world as they enter the United States to obtain patents on previously filed applications. We also discuss the U.S. Patent and Trademark Office (USPTO) switching from EFS-Web to Patent Center, the unceremonious death of the After Final Consideration 2.0 program, examiners raising Section 112 and Section 101 issues for the first time in a Notice of Allowance, strategies for working with examiners, the importance of interviews to get on the same page with examiners, when and whether it is appropriate to appeal examiner rejections to the Board, and much more.

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