The Sunset

Juno IP is another in a long line of Federal Circuit cases flipping jury decisions on genus claims. What should prosecutors and trial attorneys be thinking about to survive both the jury and the Federal Circuit?   

 

More on Andrew Gesior & Elizabeth Weiswasser.

 

SPEAKERS

Wayne Stacy, Andrew Gesior, Elizabeth Weiswasser

 

Wayne Stacy 0:00 Welcome, everyone to today's podcast for the Berkeley Center for Law and technology. This is Wayne Stacy, your host and the Executive Director for BCLT. And today we're going to talk about the Juno IP case and how a billion dollars disappears overnight. With me, we have two experts from Weill, Gotshal on this life sciences litigation and this particular case in the decades and making that it was we have Andrew Gesior, and Elizabeth Weiswasser, both from Weil, so thank you both for joining us. And I'm just gonna lead with I guess the basic question here for you is, why did the court flip this billion dollar verdict?

Elizabeth Weiswasser 0:48 Wayne, this is Liz. And I'm here with my colleague Andrew, thank you so much for having us. I'll start briefly I think with just framing the issue up and then I'm going to turn to my colleague, Andrew, to focus specifically on the Kite case. So I think it's important to understand the the framework on which the Kite case was decided. The case is really about 35 USC section 112. It's the part of the patent act that requires that claims meet the requirements of written description and enablement. The underpinning is you can't claim and own what you haven't invented what you haven't described, you haven't taught the public how to use. A number of decades ago, I would say, really, beginning in the early 90s. In fact, I was a law clerk with Judge Laurie, at the time, this doctrine really started to evolve in the biologic and pharmaceutical space of really looking hard at genus claims directed to biologic or chemical entities where the genus is not defined by the structure of what's claimed. It's defined instead by the function, trying to claim the molecules by what they do, rather than by what they are. And Judge Lurie, my former boss in particular was very focused on trying to discern what is permissible in terms of claiming by function and what is not permissible. And it's really beginning there, that we see the origins of this doctrine that has now really come into its own in a very fulsome way, with the Kite case. And so this has been developing over the 90s, 2000s, 2010s. And the Kite case is really just the latest, I would say, in a long series of cases that where the Federal Circuit has invalidated genus claims that again, are covering the genus of molecules defined by what they do, rather than by what they are. And what we have seen is that this has resulted in the Federal Circuit overturning a number of jury verdicts, Kite is not the first one the Federal Circuit in Kite did flip a jury verdict that was over a billion and the Idenix case the jury verdict was two and a half billion. And the Federal Circuit also set aside that verdict on the same grounds in the Amgen case, the Federal Circuit also set aside a jury verdict there in favor of Amgen. So I think it is important to have an understanding of the Kite case in this background. This is not an outlier. This is just the latest in the theory. This is a very important one. So with that, I'm going to turn this over to my colleague, Andrew to really take us through the case.

Wayne Stacy 3:56 Well, Andrew, I guess one of the first questions I would have is about how much we can learn from this case. I mean, at the end of the day, it's a question of fact. And the court was pretty clear that there just weren't enough facts in the record for the jury to decide this

Is the SEC trying to regulate cybersecurity and innovative financial products through easy enforcements?  And is a leanly-staffed SEC prepared for robust pushback from defendants?

 

More on Ken Herzinger and Eric Sibbitt.

 

SPEAKERS

Wayne Stacy, Ken Herzinger, Eric Sibbitt

 

Wayne Stacy 0:00 Welcome, everyone to today's expert series podcast from the Berkeley Center for Law and Technology. I'm your host, Wayne Stacey. And today we're going to talk about federal regulators and their activity in the tech space, in particular, how our federal regulators addressing technology issues, and is there an increased appetite for enforcement. To help guide this discussion today, we have two of the nation's leading experts from Paul Hastings. Well, first we have Ken Herzinger and Eric Sibbtt. So welcome to both of you. And thank you for joining us

Ken Herzinger 0:41 Thanks a lot, Wayne.

Eric Sibbitt 0:42 Thanks for having us.

Wayne Stacy 0:44 So let me just kick off with the first piece of this. And we're going to focus really on the the SEC. So on August 30, the SEC announced actions against eight firms for violation of the safeguards rule related to cyber security. What are the main findings of those actions that attorneys need to know about?

Ken Herzinger 1:06 Yeah, so these cases, were actually the last three of a string of cases that have been charged since May 2021. And a real uptick. And these cases were interesting, because the SEC, charged these firms under the safeguards rule, which applies to broker dealers, and requires them to protect investor data by putting in controls and policies and procedures. And well, the SEC found, for example, is with respect to sutera. That the the entities cloud based email accounts of over 60 personnel had been taken over by unauthorized third parties, and resulted in exposure of their personal information PII of roughly 4388 customers and clients. And what the SEC said both in in the various orders they charged as well as the press release is, it's not enough to have policies and procedures to protect identifying information held by investors on your platforms. But you need to actually go out and put teeth to those policies and procedures and enforce them. And when you see red flags, you need to go out and, and stop the activity. The kind of the high level takeaway that I thought was most interesting is one, it showed that there's a real tight working relationship right now between the OC formerly OC now the examination staff and the enforcement staff. So this one bubbled up out of a, all of these actually bubbled up out of examinations. And then the other piece is that this shows the staff is getting more aggressive, not just about SEC regulation, but about protested protecting customer data itself, which is a little bit of an extension, really beyond the rule and overall securities laws, if you think about it, sort of starting to sway a little bit into the dotnet data privacy area. But that's kind of my overall take on these cases.

Wayne Stacy 3:19 Well, I mean, I think that's a that's a great point that when people think about the SEC, data privacy doesn't automatically pop to mind is something that they're interested in. I mean, are they just trying to get people in line? Or do you see this as a long term enforcement mechanism for them?

Ken Herzinger 3:37 Well, I think under the current new administration, so at least for the next three or so years, I think this is a longer term extension. I think it's a signal more to come. We'll see, you know, what the next administration has to hold, but I do see them. And this is just one area of where the staff seems to be push

Does willfulness evidence play a role in persuading the jury on infringement and validity? The Courts take a harsh view toward parties taking factual shortcuts in briefing. And a claim construction decision turns into an indefiniteness rout. 

 

SPEAKERS

Wayne Stacy, Michael Smith

 

Wayne Stacy  00:05

Welcome, everyone to the Berkeley Center for Law and Technology's Expert Series podcast. This is Last Week in Texas with our expert, Michael Smith. So Michael, thanks for joining us once again.

 

Michael Smith  00:19

Well, good to be here Wayne. Thank you for having me.

 

Wayne Stacy  00:22

Well, Michael, take us to the Eastern District of Texas what what happened last week?

 

Michael Smith  00:27

Well, one thing that happened last week is we got the judgment in judge Gilstrap's PanOptis case against Apple, that's the one that was retried on damages resulted in a $300 million verdict. And when judge Gilstrap got to the 284 issue, which is enhancement of damages based on a willful infringement finding, in one paragraph, he said the standard isn't match, I'm not going to enhance at all. And he says enhancement is generally reserved for egregious cases of culpable behavior. And after hearing all the facts, that's just not this case. So I'm not going to do it. And this kind of matches up with what I tell a lot of people that are worried about willful findings, I tell them, it really doesn't matter if you have a willful finding, because the real money isn't on whether the court is going to enhance, and courts enhance less than I hear. So I think that's one of the significant things here is that you may get a willfulness finding, but that may not actually give you anything as far as enhanced damages.

 

Wayne Stacy  01:31

Michael, this is this one's close to my heart. Several years back, I guess maybe one of the first cases I tried down the eastern district was with George Chandler. And, you know, George is a colorful character and a great lawyer. But he introduced me to a phrase as a young lawyer that I thought was pretty powerful back the dump truck up. And so that got me to do a lot of research. And we looked at about, I don't know, almost 400 jury verdicts, basically, the whole scope of jury verdicts in patent cases. And we found that willfulness was actually a big, big part of skewing a jury toward finding infringement. So, you know, it looks like if you can win on willfulness, you had about a 20 point chance better of winning on your your base infringement case. And that makes sense because that the jury would probably rather find who they want to like and who they want to hate versus dig deep into the technology. So I don't know what do you what do you say to George's strategy there?

 

Michael Smith  02:33

Well, the I was fortunate to get to try a patent case and Tyler with George as well. And you know, the dump truck works a lot better when George's driving it I'll say that. No George is a great trial lawyer, his son Reich, and I graduated from law school together something around his family for a long time. And that's absolutely correct. It does help your case. But those are very interesting facts, because they remind you that while I'm over here saying we don't have to worry about willful because it doesn't affect enhanced damages, as much as you might think it just having willful in front of the jury is kind of threatening the flanks of your infringement defense. So you have to find it affirmatively at the infringement stage. It also explains why we see plaintiffs bringing up some kind of willfulness case towards the end of the case in order to get those argument

With decisions from the US, Australia, and South Africa, the dispute about naming and AI as a patent inventor is heating up.  Some argue that long-term industrial competitiveness will be decided by how countries answer this question.

 

More on Chris Mammen.

 

SPEAKERS

Chris Mammen, Wayne Stacy

 

Wayne Stacy  00:00

Welcome, everyone to this week's episode of the Berkeley Center for Law and Technology's Expert Series podcast. I'm your host, Wayne Stacey. And with me today I have Chris Mammen, a partner at the firm of Womble Bond and Dickinson. Chris is an expert in AI and patentability. So Chris, we've been talking about AI as a named inventor on patents since 2019, kind of seriously. And it first it seemed like a novelty question that might show up on a law school exam, but it didn't have a lot of practical impact. Things seem to be changing. So tell us why we should care about whether AI can be named as an inventor?

 

Chris Mammen  00:48

Thanks, Wayne. Um, yeah, this is a this is an issue that kind of raged into the forum, the summer of 2019, and a couple of months later seem to be largely resolved with decisions out of the US, the European Patent Office and the UK IP office all saying that, no, in fact, AI algorithms cannot be named inventors on patents. And so we had a nice parlor discussion for for a couple of months, that was very interesting. And then things went quiet. It's changed in the last two or three weeks. Because the the proponents of AI as an inventor, in particularly Professor Ryan Abbott, out of the UK, and Dr. Steven Thaler out of Missouri, have continued to pursue patenting of their inventions, their algorithms', inventions, and a couple of weeks ago, South Africa was the first country to grant a patent to the algorithm Davos, which is Dr. Taylor's AI algorithm. And the next day, a court in Australia similarly ruled that it would be theoretically possible, at least for an AI to be a named inventor under Australian patent law. And so those were those were the first two rulings that I'm aware of that that held that an AI can be a named inventor. And then last week, Judge Brinkum in the Eastern District of Virginia issued a long awaited ruling in the US on the litigation over the patent offices denial, the US Patent Office, is denial. Holding that, yes. In fact, in the US, an AI cannot be a named inventor. So right. You know, as we sit here, right now, we now have different countries reaching different conclusions about whether or not an AI can be an inventor. So it's, it's no longer this interesting side discussion, and is actually something that we're going to need to dig in on and figure out eventually, how we want to resolve this question.

 

Wayne Stacy  03:13

We generally when we talk about whether AI is an inventor, we we shorthand that discussion and have it from a policy level. But the reality is when you look at what happened in South Africa, or in Australia, or Eastern District of Virginia, right now, it's all about rules and statutory interpretation rather than policy. Am I reading those decisions correctly.

 

Chris Mammen  03:37

Yeah, I think that's right. If we look, if we look at the South African decision, um, you know, South Africa has a patent registration regime. And so there's not the same kind of examination that we're used to looking at from the USPTO. And their patent law does not define inventor. So, you know, those factors add up to, you know, not being a significant reason not to grant an AI, a patent in South under South African law. Under Australian law, inventor is defined as a person and t

Mandamus Lite—Great Taste, Less Filling?

Judge Albright followed the Federal Circuit's venue roadmap. Will the Federal Circuit like the result? And EDTX gives us a rare, detailed look at 251 defenses.

Texas is home to over 40% of all patent litigation. And with that many on-going cases, important changes happen weekly. To keep you updated, Michael Smith, author of the award winning edtexweblog.com, shares both his research and his local perspective about what's happening around the entire state.  

 

SPEAKERS

Wayne Stacy, Michael Smith

 

Wayne Stacy  00:00

Welcome, everyone to this week's episode of the Berkeley Center for Law and Technology's Last Week in Texas podcast. This is your host, Wayne Stacy, the Executive Director for BCLT. And once again, we have Michael Smith with us here to talk about what's been going on in Texas last week. So, Michael, let's just get to it and tell us what happened last week?

 

Michael Smith  00:25

Well, I think what most people were interested in is that in the Western District of Texas Judge Alan Albright issued orders in response to Federal Circuit opinions, which had strongly indicated that he ought to transfer the cases. The first was the Ikorongo case, which was transferred to the Northern District of California in light of the Federal circuit's guidance. Now the order doesn't say much. But this was one of the cases where the Federal Circuit said that the party was manipulating the venue statute and not in the good way.

 

Wayne Stacy  00:59

So I guess I got to ask, Is there a good way to manipulate the venue statute?

 

Michael Smith  01:02

There there is the good way to manipulate the venue statute is when the defendant restricts their activity in a district. So suit can't be brought there.

 

Wayne Stacy  01:10

Okay. But obviously, the Federal circuit's thought there was a bad way too?

 

Michael Smith  01:14

Right and the bad way is when plaintiff restricts their activity in a district so suit can't be brought there. And this was that that latter situation, the plaintiff that was asserting the claims had been created with the ability to sue only in the Eastern and the western districts of Texas, because it couldn't have sued the defendant in California, venue wouldn't be proper there. And the Federal Circuit said, we're not going to allow that. And Judge Albright transferred the case to California based on that. I don't know that this is the last word on that tactic. But it is of interest that Judge Albright did transfer that case after getting the federal circuit's guidance.

 

Wayne Stacy  01:55

Well, and that that's an interesting point, you make that this is the first case about this type of plaintiff restricted activity. We'll see if plaintiffs find more creative and maybe less. Oh, ham handed ways to go about it in the future. So I think you're right, we'll, we're gonna see more more trials on this. Well, that was one of the two cases what's the other one?

 

Michael Smith  02:22

The other one is our mandamus light case. You remember a couple of weeks ago, we talked about in in Ray dish. The Federal Circuit said that Judge Albright had erred in his venue determination. But they didn't Grant mandamus. They said, well, in light of this guidance, we're confident that the court will take this into consideration and and make the right ruling. And the dissent Judge Reyna called it mandamus light and said, well, either either we grant mandamus, or we don't bu

While patents and trade secrets can co-exist for the same device, the scope of the trade secret needs careful examination. Is this a case of bad facts overwhelming that careful examination?

 

More on Charles Tait Graves.

 

SPEAKERS

Wayne Stacy, Charles Tait Graves

 

Wayne Stacy  00:01

Welcome, everyone to the Berkeley Center for Law and Technology's Expert Series podcast. I'm Wayne Stacy, your host today, the Executive Director for BCLT. Today we're going to discuss the Life Spine case from the Seventh Circuit. It's a ruling upholding a preliminary injunction and a trade secret case. And we have one of the nation's leading trade secrets litigators with us today. Tait Graves from Wilson Sonsini. Tait, thank you for taking the time out of your busy schedule to talk with us today.

 

Tait Graves  00:33

Yeah, thanks, Wayne. Happy to be here.

 

Wayne Stacy  00:35

Well, so I want to start with kind of this fundamental proposition that comes in this case. And that's that, you know, you hear a lot of times people say that trade secrets and patents are completely incompatible. And this is a circuit court case that that shows otherwise. So can you tell us just a little bit about that incompatibility issue and what we should take away from this case?

 

Tait Graves  01:00

Sure, you know, at its most fundamentals, we all know that once you patent something, and it's released into the public domain, it can no longer be a trade secret. And when we stop and reflect that every patented invention begins its life as a trade secret. But once it's published, it either is a failed patent and a failed application or an issued patent. It's public, and it's no longer a trade secret. That's very simple. And I think people understand that. But what gets lost in the noise sometimes, and what Life Spine and the Federal Circuit are reminding us is that just because you release a lot of information into the public domain, whether by patents or whether by marketed products, it doesn't mean that you waive trade secret protection over other details and other information that you haven't released. So even a broad release into the public domain, doesn't mean that you waive your rights over other information that you've kept confidential.

 

Wayne Stacy  01:55

Well, when you when you read this case, at least I'm inclined first to focus in on some some comically bad facts that that the court really, really highlighted. But this this case is really about more than than a bad actor. There's a lot of good law and a lot of good lessons in here. So if we look past the parties and some of the the alleged bad acts, you know, what can we what can we learn about trade secrets?

 

Tait Graves  02:26

You know, you're you're right. The facts here look pretty bad reading the order and reading the docket and the different filings here. But if we back away from the actual parties, and we back away from the actual facts, there are some structural questions about trade secret law that are latent in the federal circuit's opinion that I think are important. What happened here essentially, is that the plaintiff was able to get injunctive relief, even though it had disclosed a great deal of information about its product into the public domain, on the argument that it had measurements and specifications that nonetheless remained trade secrets, even though so much had been disclosed. Now, that's not a surprising rule. That's black letter, trade, secret law, and totally unsur

The $700,000 law clerk? Taking a closer look at Judge Albright's technical advisor.

Is it fair to say that Judge Albright is privatizing the role of judicial clerk by forcing litigants to hire his former clerk as a technical advisor?  What value are litigants getting from the process? And what can litigants expect in the future?

Texas is home to over 40% of all patent litigation. And with that many on-going cases, important changes happen weekly. To keep you updated, Michael Smith, author of the award winning edtexweblog.com, shares both his research and his local perspective about what's happening around the entire state.  

 

SPEAKERS

Wayne Stacy, Michael Smith

 

Wayne Stacy  00:00

Welcome, everyone to the Berkeley Center for Law and Technology's Last Week in Texas podcast. This is Wayne Stacy, the Executive Director for BCLT. And we're here again with Michael Smith, the leading expert for Texas, not just the Eastern District of Texas. So Michael, we'll just start with what happened in Texas last week.

 

Michael Smith  00:24

Well, Wayne, the principal story last week in Texas is we had a article come out that I know a lot of the law.com Publications picked up about the role that a former law clerk of Judge Alan Albright's in Waco was playing as a court appointed technical adviser. The headline was that the former law clerk had already billed over $700,000 in fees this year for his work as Judge Albright as a court appointed technical advisor after he clerked at the court.

 

Wayne Stacy  00:58

Yeah, I mean, the 700,000 number got a lot of a lot of headlines and a lot of chatter around on the boards. But there's a lot more behind this story. So I think it's fair to probably start by telling us who is this technical advisor and then what are the qualifications?

 

Michael Smith  01:14

Well, you're absolutely right about that. Let me let me explain who the technical adviser is. The article was talking about two people. First of all, Judge Albright uses Dr. Joshua Yi, as a court appointed technical advisor. Now, Josh was a law clerk for Judge Albright for a year and a half before, I think he finished up December of last year. And I remember talking to Judge Albright and how excited he was that Dr. Yi was going to be coming to work for him as a law clerk. So let me tell you about his background. He holds bachelor's, master's and doctoral degrees in electrical engineering. And he worked as an engineer at Freescale Semiconductor in Austin before he got his law degree. And then he was an IP litigation associate in Austin law firm for seven years before he started his clerkship. Now, it of course, is not unusual for some of the law clerks for these patent judges to have had a few years as a associate doing patent litigation. It's not unusual for them to have experience as an engineer before they went to law school. We've even had law clerks that have doctorates. There was one that Judge Gillstrap had that had a doctorate from Stanford, and we still teased her that she was the least qualified law clerk he had, because she had not actually yet worked as a litigation associate. But I have never in any of the cases I've ever seen, I've never seen anyone that has all three. And again, Dr. Yi has more than just a couple of years working as a patent litigation associate. So he is an extraordinarily qualified person in terms of his background. And then he's also got a year and a half in the belly of the beast, as it were working in Waco and working on the types of cases that he later became a technical adviser on after the beginning of this year.

 

Wayne Stacy  03:07

Two textbook cases on how to win an injunction. And what to make of the Federal Circuit's new "mandamus light" procedure?

Texas is home to over 40% of all patent litigation. And with that many on-going cases, important changes happen weekly. To keep you updated, Michael Smith, author of the award winning edtexweblog.com, shares both his research and his local perspective about what's happening around the entire state.  

 

SPEAKERS

Wayne Stacy, Michael Smith

 

Wayne Stacy  00:00

Welcome, everyone to this week's podcast for the Berkeley Center for Law and Technology, The Last Week in Texas. With us today is Michael Smith from Scheef & Stone. And you everybody knows of course, Michael is the author of the leading blog in the nation on the happenings in Texas. So, Michael, tell us what's going on this week?

 

Michael Smith  00:25

Well, Wayne, what's interesting this past week is we often talk about the Eastern District in the Western District of Texas. But this past week, the most interesting opinions came out of the Southern District, and the Northern District, basically Houston, and then Dallas and parts north and, and West, and they didn't have trials, but they had a number of rulings granting injunctive relief, dismissing patent infringement cases making claim construction rulings, a lot of things that I think are interest interesting to our listeners, because they talk about the sort of evidentiary issues and evidentiary challenges that we're confronted with in IP and tech cases.

 

Wayne Stacy  01:07

Well, let's just start with the Northern District.

 

Michael Smith  01:09

Well, the the first case, I wanted to mention the Northern District is an opinion by Judge Boyle. Now it's it's a, it's a pretty interesting case, there's a restaurant in Dallas that has a certain name, and a new restaurant came out and had a similar name. And the first restaurant thought that they had a reputation for bad health standards, bad food rude service. So they asked for an injunction keeping them from using that term. And the judge goes through the elements and determines Yes, you've you've met the standard for injunctive relief. And that's kind of unusual, because it's hard to get injunctive relief. At the front of a case I had judge Ward one time referred to it on a call as he was telling the parties Well, you know, the sun might come up in the West this morning. But that was kind of his analogy to how likely it was you could get injunctive relief in a patent case. So it's useful to see somebody actually put the right evidence on in this trademark case.

 

Wayne Stacy  02:08

Well, I tell you, when I when I read this case, a couple things stuck out. First of all, it was a battle between Houston and Dallas, you know, these two restaurants had had their locations for many years. And in Dallas and Houston, in when one was coming into the Dallas market. That's what caused the fight. So it's an interesting trademark reminder about the geographic scope. But what really struck me about this case, was that the plaintiff put on maybe the best organized evidence I've seen in an injunction case, you know, if you're going to show confusion, and irreparable harm, this plaintiff went through and showed great social media records, Yahoo, Yelp, Google records, phone records, and all backed by affidavits. So when you read, when you really read the judicial opinion, it's seen that the court was impressed not only by the weight of the evidence, but by the quality and the presentation style. So to me, it shows you what you got to do to win an injunction case. You just hope to do evidence righ

Broad claims with functional language may be easier to enforce. But what opportunities will an accused infringer have to attack the patents in front of the jury? Is written description a worthwhile defense for medical devices tried to a jury?

 

More on Jim Brogan and Abby Parsons.

 

SPEAKERS

Wayne Stacy, Abby Parsons, Jim Brogan

 

00:00

Welcome, everyone to the Berkeley Center for Law and Technology's Expert Series podcast. I'm Wayne Stacy, your host, the Executive Director for BCLT. And today we're gonna talk about an unusual case that came out bio fronteira. And we have two of the nation's leading biopharma and medical device patent litigators with Jim Brogan and Abby Parsons, both from King & Spalding. So, just want to get right into this case on the bio fronteira issues. Why Why is this case interesting?

 

Jim Brogan  00:38

And well, in some ways, it's not interesting because it's a rejection of summary judgment due to factual issues. But at another level, when you look at what's at play, I think it is interesting, because you're looking at section 101 attacks on what I think before Alice, people would have looked at as pretty clearly patent eligible subject matter where you have multiple light sources connected to a controller that performing a function. But now that we're in this Alice age, you look at the light sources, they output uniform light, people say, hey, lights, a naturally occurring phenomenon. So one on one attack is is fair game here. And so that I think is interesting, I think, also, you know, the interplay of the claims with written description and enablement is interesting.

 

Wayne Stacy  01:26

Well, I mean, the last case that they kind of had this kind of physical structure was, I guess, maybe easy to understand you had Axles. But this one didn't quite get as much attention outside of the medical device field. And I guess my question for you is, for those that are drafting medical device patents, is this a case that should be studied a little more closely?

 

Jim Brogan  01:50

I think I take a look at this case. And I'd also look at the EU versus Apple case that came out of the Federal Circuit. Because there you had, again, something that looked very much like physical structure, the camera with multiple images, sensors, lenses, processors, memory, etc. And what you were doing was using one image to improve or two images together to improve the output. And court said, that's abstract. And therefore out under eligibility, I think if that case was available here to these folks, when they file their summary judgments, you might have seen a little bit different approach, we say, here, what you're doing is you're using multiple light sources to generate uniform light. Although the court did know that, there was no evidence that that was just common, and well known, at least in the record.

 

Wayne Stacy  02:47

So when you when you read the briefing, you can pull out a lot of frustration from bio fronteira. What are they, what are they really complaining about here?

 

Jim Brogan  02:58

You want to run with that one, Abby?

 

Abby Parsons  03:01

Sure. I mean, I think I think the idea is, it's a common thread among several different aspects of patent law that you see, you know, 101, 112 enablement, written description is, is they've got these broad functional claims that cover a universe of things. And, you know, the disclosure just doesn't meet what what the patent office gave them

Based on the recent attention from regulators, cryptocurrency is going mainstream, but who is writing the rules and to what end? And how will these regulators view the difference between cryptocurrency and stable coin?

 

More on Era Anagnosti and Doug Landy.

 

SPEAKERS

Era Anagnosti, Wayne Stacy, Doug Landy

 

Wayne Stacy  00:00

Welcome, everyone to the Berkeley Center for Law and Technology's Expert Series podcast. I'm Wayne Stacy, the Executive Director for BCLT. And today we're going to talk about cryptocurrency and digital assets. In particular, we're going to talk about Washington's recent involvement and what we can look for in the future. To lead us through this discussion today, we have two of the nation's leading experts on the topic. We have Doug Landy who is I can best determine is head of everything at White & Case that involves anything financial services related, but specifically, he's head of the Financial Services Group and part of the US Bank regulatory practice. And then we have Era Anagnosti with us. She is a capital markets partner, and formerly served as the SEC's acting assistant director in the Office of Financial Services. So a unique insight into the SEC side of this discussion. So let me let me start with one of the the issues we saw coming up in the paper all week, and that was the US senate decided to include some cryptocurrency regulations in the infrastructure bill. So what's what's going on there, and why the infrastructure bill?

 

Doug Landy  01:25

Well, I can start the information in the bill was interesting. It was designed to combat tax avoidance, and make persons that play certain roles in crypto transactions act, similarly for taxation and reporting to other brokers for securities, or intermediaries for commodities or similar things. And however, the industry is very different from those. And there was no agreement as to who the proper intermediaries are, to provide that information, ultimately, be responsible. And that was really what happened in the bill, the bill was very broad, there was a compromise sought to limit the applicability of the requirements to certain entities that actually handle the information, and are less kind of developers and more information brokers. But there really wasn't an agreement as to who those people should be. And the bill still has the very broad provision in it, where it's going to the house now. Right? I think the industry is going to take another crack at trying to educate people about where the line should be drawn.

 

Wayne Stacy  02:37

Any predictions on on what's going to come out of this?

 

Doug Landy  02:42

Well I never predict politics, but hopefully, you know, this is this is an issue across the industry, how does one introduce regulation and structure into an industry that grew up outside of those things on purpose, and there are baby steps being done towards that. But Secretary Yellen has made very clear she feels there's a part of the industry that deals and tax avoidance and other bad things. And so she's very strong on wanting to use the regulatory structure, including the tax authority to really stamp that out as much as you can.

 

Wayne Stacy  03:26

Well, that's the legislative side of it. What's the SEC doing with with both crypto and digital assets these days?

 

Era Anagnosti  03:36

Yeah, that's been, you know, a very active area of the SEC, the SEC so far to date, particularly with a change in administration, we see th