BCLT's Expert Series

Speakers: Michael Smith and Wayne Stacy Description: Judge Albright continues to provide detailed guidance on the often maddening day-to-day tasks of patent litigation. This guidance can both streamline a case and reduce the costs of litigation—but only if attorneys follow it. For example, we get detailed guidance on the court's approach to court costs, discovery of unnamed products, protective order changes, and counting interrogatories. We even get an interesting case on establishing venue by pointing to employees working at home. And maybe the most illustrative cases this time come from a pair of cases discussing motions to stay—one from Waco and one from Austin. Is a motion for preliminary injunction going to be a prerequisite going forward?

Speakers: Michael Smith and Wayne Stacy Once again, Michael Smith highlights some key learning points from the Texas courts, including: Same plaintiff, different judges, different outcomes--What lessons can we learn from the Sonrai cases and the different decisions in Waco and Austin? A delicate balancing act between asking the otherside to create new documents and asking the other side to explain their financial documents. Can we really find a rule of reasonableness? LinkedIn abuse--A sharp rebuke about venue gamesmanship and the misuse of LinkedIn profiles. A textbook case for striking portions of an expert opinion. Judge Gilstrap explains his views on discovery of negotiation agreements and litigation funding documents. Past or present--what are the venue impacts of a closed facility?

The Eastern District provides us with a side-by-side comparison of motions for amending contentions. Together, these decisions illustrate the important facts for both sides. Judge Gilstrap also provides us with a wonderful example of what it takes to win a 12(c) motion and strike down a patent under 101. Compare this outcome to Judge Albright's "uphill scrabble" to win a Rule 12 motion on 101. Finally, Judge Albright gives updated guidance on alternative service and about modifying his model protective orders.

For innovation companies, their success is often tied to the skill with which they handle the legal and regulatory issues in their industry. Law and business strategy go hand in hand. And this lesson is especially important for emerging companies… and junior lawyers. Today, we hear directly from a successful emerging company about the need for and value of combined legal and business advice. Matthew Meyer, Wilson Sonsini Jake Chabon, Foresight Diagnostics Interviewed by Wayne Stacy

Two JMOLs give us a good lesson on strategy and picking your battles. And Judge Gilstrap gives us great guidance on exceptional-case motions. Transcript: Wayne Stacy 00:00 Welcome, everyone to the Berkeley Center for Law and Technology's Last Week in Texas podcast, it is March 30. And we're here again with Michael Smith. No Baylor basketball jokes this week, Michael. So we think that that would be good. Well, thanks. Thanks for coming back after my unnecessary shots last week. Well, Michael, I'd love to start this week with a case I think that people would look at and kind of kind of laugh a little bit. But there's a lot more to it. And there was a jury award and Marshall, that might be the lowest Jury Award in Texas and a patent case, a whopping $84,000, which is roughly one trial day for a patent team. So what what's, what can we look at this case and learn? Well, Michael Smith 00:52 it was an interesting case, I happened to be in the courtroom while the jury was deliberating and sending out notes. And I looked over at the plaintiffs table, and there were at least 10 lawyers there. So I don't know what was going on there. Other than this, it's a competitor case. And when it's a competitor case, you don't it's not necessarily about the money damages at the trial. It's it's it's about being able to cut the defendant off from continuing to sell a product that you think is infringing your patents. So, again, I am not focusing on the amount that the jury awarded, I'm focusing on what was being sought by the plaintiff. In that case, competitor cases are getting to be the standard. I've had four patent trials in the last year and Marshall would judge Gilstrap, all four were competitor cases, all four were a larger competitor in a field suing a smaller competitor in a field for patent infringement. And you had similar themes in all of the cases. So we're seeing a lot of that. Coincidentally, the plaintiff's lawyer in that case was my co counsel on the defense side in February, so I need to call him back and find out what happened on that case. One fun thing that happened while we were sitting there waiting to start our hearing is that the jury sent out a note saying, please send back the exhibit with the defendant sales in such and such time period so that we can calculate damages. I tried not to look at the defense table, then because I know how I feel when when a note comes like that. And you're on the defense side. Wayne Stacy 02:28 Yeah, there's there's no, no positive message in that note. Oh, no. Well, well, Michael, I think that it's an interesting point. The stereotype of the Eastern District in the Western District of Texas, is that the only thing that's happening there are in PE cases, and if you use a little harsher language, you know, like some folks do, that it's just those are the two trial courts of the United States patent cases. You're suggesting otherwise? Michael Smith 02:57 Well, the cases that go to trial? Yes, we had a similar case to this that went to trial a few months ago in Waco, where again, the amount that the jury awarded was bizarrely low. But when you go back and you find out what they were fighting over, it was a competitor case. I mean, going back to 1994, the first patent trial I

Satisfying fee awards remain elusive, but attorneys keep asking. Insanity or persistence? Apparently hoping to guide lawyers in their future filings, Judge Albright continues issuing detailed rulings on discovery disputes. This week's important ruling focuses on discovery for related products. And finally, two severance motions with different outcomes. Together, these rulings demonstrate the contours of a successful severance motion. Transcript: Wayne Stacy 0:08 Welcome, everyone to the Berkeley Center for Law and technologies last week in Texas podcast. It's March 23. And we are here again with Michael Smith. Michael, thanks for joining us. Michael Smith 0:20 Well, thank you for having me, Wayne. Wayne Stacy 0:22 Well, it's good to have you back. You seem to have had a day job for the last couple of weeks that required your attention in court. So thanks for making a little bit of time for us. And with that, tell us tell us what you've been learning in court the last couple of weeks. Michael Smith 0:37 Uh, well, it has been an interesting couple of weeks, we had another patent trial in judge Gill Strap's court and Marshall, a couple of weeks ago, and I have been busy with that. And it's it's actually the fourth patent trial I've had with Judge Gill Strap in the last 12 months. And what I really learned is that you never stop learning, you never stop finding out new things to object to new ways to make the other side have to do something. It was, as I said, a patent infringement case. The jury came back. According to what we were able to find out, the jury actually deliberated for about 35 minutes after lunch, and came back finding none of the claims infringed and all of the challenge claims invalid. The plaintiff asked for 63 million. So the jury came back with a complete defense verdict in that case, but as I said, it was a fun case, not least because the water went out in Marshall on Friday afternoon before trial. So I had my house set up and some of the members of the trial team coming out to take showers, and otherwise get ready. But that's that's kind of your job when your local council if they need water if they need power if they need heat. But it was a very interesting trial, we had a lot. We learned about how the court wants things done and more efficient ways to put things on Wayne Stacy 2:01 anything in particular? Michael Smith 2:03 Well, impeachment with a prior deposition is something as I said, a few weeks ago, Judge Albright said for the love of God, if you're going to be in a courtroom, know how to impeach with a prior deposition. Well, what I learned in this trial is, you may think you know how to do it, because that's how you've always seen it done. And what we found out is if somebody stands up in objects, the judge may have an opinion about the way that everybody's used to doing it is the right way of doing it or not. Well, we've always paid close attention to how judge Gill strap wants this done. But what we learned when objections were made is that He requires that the witness's memory be refreshed with a copy of the deposition before you put it up in front of the jury. Well, that wasn't the way most people do it. So you had to ask the question, get the answer, then say Do you remember having your deposition taken? And then give them the page of the deposition? Which actually works out fine, because in patent cases, we hand up giant notebooks for all the witnesses anyway. If you tell the jury, or I mean, you tell the witness to flip to page 35. Look here, you see, I asked you this question. Yes. And your answer was this, wasn't it? And only if they deny it, can you then put it on the overhead and show it to the jury? Now, if no one objects, that's what people do all the time. But what we learned in this trial is that that is an objec

What is the difference between bad behavior and sanctionable behavior? And can bad behavior be cured? Two opinions give us excellent guidance on these questions. One of the most interesting questions this week—what is the difference between Waco and Austin? Judge Yeakel's venue decision tells you all that you need to know.

Judge Albright continues to provide detailed guidance on motion practice in his court. These cases illustrate what motions not to file and how to better craft the motions that you do file. SPEAKERS Wayne Stacy, Michael Smith Wayne Stacy 00:00 Welcome, everyone to this week's Berkeley Center for Law and Technology's Last Week in Texas podcast. I'm your host, Wayne Stacey. And once again, we're here with Michael Smith. Michael, thanks for joining us. Michael Smith 00:13 Glad to be here. Wayne. Good to hear your face, so to speak. Wayne Stacy 00:19 Well, the good thing is this is not last week in Texas. This is the last two weeks in Texas, because you had to take some time off last week to do your day job and actually try a case. Michael Smith 00:29 We did we had a patent infringement trial and judge Gill straps court across the street here in Marshall. And so it was a good week, we got a jury verdict back of non infringement. Claim is valid but non infringement last Thursday. And since I lost one over there in November, I had almost forgotten how good winning one felt. But I was very proud of it very happy with our trial team in that case. Wayne Stacy 00:57 That's one of the problems with with trial work. If you're only try one every six months, you get seems like six months to stew on a loss in about 10 days after the win you just go back to work and you've lost that high. So there's more downside than upside? Michael Smith 01:14 Oh, absolutely. Absolutely. Wayne Stacy 01:16 Well tell us what you what you learned in this this trial? Michael Smith 01:20 Well, it was an interesting trial. I kind of got parachuted in a couple of weeks before trial on it, which is not my preference. But my co counsel had done a good job preparing it, which isn't surprising because the case was eight years old. This was a fight between two oil and gas drilling companies. Shortly after it was filed in 2014. Because the Eastern District was so short on judges, Judge Gillstrap shipped a couple dozen cases to a judge in Houston, Judge Atlas. And she worked up the case over the next seven years, there were some stays, there were some other things and then shipped it back when it was ready for trial. So when we went to trial, we had expert reports that were over two years old, and everything had been prepared before a different judge. So Judge Payne ruled on some final motions. And then we went to trial, but on reports that were over two years old. So that was interesting, the most important thing that I learned in the trial, which I knew, but it's never been more important than this case is. The judges the trial patent cases down here are very, very strict on your expert has to stay within the four corners of their report. And in this case, we were fortunate that the plaintiff's infringement expert's report was only 15 pages long. So we actually had Judge Gillstrap excluding some things at trial. And we had the unique situation where you know, those boards we always put up that has all the claim elements and your expert. Can I check this sir? Yes. Can I check this off? Okay, all the boxes are checked now. So does this mean there's infringement? Yes, it does. The expert actually couldn't check all the boxes in half of the claims, which is something you don't normally get. So by the time we got to closing argument, we were able to pull out the the boards and say, You never heard an expert testify on this. And that helped out a lot when it came time for the jury to look at it.

Teaching moments in Texas. Trial guidance from Judge Gilstrap and guidance on infringement complaints. SPEAKERS Wayne Stacy, Michael Smith Wayne Stacy 00:00 Welcome, everyone to the Berkeley Center for Law and Technology's Last Week in Texas podcasts. We're here again with Michael Smith. And Michael has a whole host of I think what he described as teaching moments for us this week. So Michael, thanks for joining us. Michael Smith 00:17 Well, thank you for having me. Wayne, it's it's certainly been a fun week. And it is the last week in Texas because the whole state shutting down tomorrow for our winter winter storm. So maybe you'll see us next week. Maybe you won't. Wayne Stacy 00:31 After spending my life growing up in the panhandle of Texas, I'm not sure that a Marshall winter storm scares me, but I understand freezing rain. Well, so Michael. We're talking about teaching moments and things that loggers do for themselves and to themselves. You want to start with motion for leave to amend invalidity contentions. Michael Smith 00:54 Yeah, we talked about one of these motions last week. And fortunately, we came up with two more orders on this out of martial this past week on motions for leave to amend infringement contentions and invalidity contentions. And let me start with the invalidity. Here the defendant was seeking leave to supplement with some additional information that it obtained from third party subpoenas. It was limited to background and support for systems that were disclosed in the original contentions and the plaintiff probably shouldn't have oppose this one. Judge Gilstrap agreed that the definitive been diligent in supplementing, and that the delay was just caused by the inevitable time necessary for third parties to respond to subpoenas and provide nonpublic information regarding prior art systems. So there's an order saying, yes, you can amend your invalidity contentions to add the things that you get through discovery. We had another case out of the Marshall courthouse last week where Judge Payne ruled on a plaintiff's motion for leave to amend its infringement contentions. And the interesting thing here was, it was just one document that was received from a third party and the defendant was was claiming this is only important if the original contentions are wrong, and they have to change to save their case. I mean, very theatrical objections which the judge was very receptive to, but the teaching moment here is not just don't be a jerk when a party wants to amend. But it was that the defendant hadn't explained how it was prejudiced. The plaintiff noted the defendant hadn't asked to brief additional terms or construction hadn't said we need to go back and need to change terms or constructions or anything else. So the defendant complained about the amendment, but they were given an opportunity to show prejudice, and they didn't. So that's kind of a double lesson there. Number one, make sure the record is clear that the other side is not providing something short of striking the contentions. And number two, don't be a jerk. Wayne Stacy 02:59 Well, Michaels, we move on there was Judge Gilstrap had a motion to dismiss against direct and indirect and willfulness. It was just a big motion. Michael Smith 03:10 Yeah. And and we see those a lot at the beginning of cases. And I mentioned this because it's a good case for the marshal judges 26 standards on when you've adequately pleaded direct and indirect infringement. In fact, earlier this morning, I was reading the same kind of order by Judge Albright in Waco that we'll probably talk about next wee

Who's afraid of a design patent? An ex parte injunction demonstrates that we should all be paying attention. And how much is enough when it comes to claim charts? Judge Albright gives us meaningful guidance and a strong warning about second chances. SPEAKERS Wayne Stacy (BCLT), Michael Smith (Scheef & Stone) Wayne Stacy 00:06 Welcome, everyone to the Berkeley Center for Law and technologies last week in Texas podcast. I'm your host, Wayne Stacey. And we are here once again with Michael Smith. You've heard me say it before. If it happened in Texas, and he doesn't know about it, it does does not matter. So with that in mind, Michael, why don't you take us to the the Eastern District of Texas? Michael Smith 00:30 Well, thank you, Wayne, good to be here. Today, I want to lead off with a what appeared first blush to be pretty simple case, defendants came in and the case got settled. And they wanted to have their defenses dismissed without prejudice. It's kind of an unusual situation. You know how sometimes if you're a defendant, and it's a customer suit, the manufacturer, the customer will come in and say, hey, we'll be bound by whatever happens to the manufacturers case? Well, the defendant did that here. And it didn't work out so great. The parties went, they settled the case, they had an MOU, and they had an interesting provision there, they said, We're going to take 50 days to negotiate a final settlement agreement. If we can't do that, within 50 days, then the final settlement agreement will become a final and binding settlement agreement. And that provision said that all of the claims in the case will be dismissed with prejudice. So one of the defendants comes in who had kind of given control to the manufacturer to to resolve the claims and said, Oh, wait a minute. No, no, no, I want my affirmative defenses dismissed without prejudice. And the court said, No, you gave this other party when you were when you wanted your case stayed under under the customer suit exception. You said I'll be bound by any final judgment. So the court said no, you're stuck with how the Settlement Agreement got worked out here. Now, it's not clear that there was actually legal prejudice to that defendant. But it's I think it's an important reminder to us to be careful what you agree you'll be bound by and check the wording carefully on those mo use, because this could have been fixed at the MOU stage if someone had been paying attention to the exact language, probably at eight o'clock at night when they were trying to get a case settled the night before the pre trial conference. Wayne Stacy 02:22 Well, and that's this is, I guess, the second week that we've had this kind of post settlement disputes where we had an agreement, but not quite. And it's it is a good lesson. But it goes back to one of my favorite provisions, letting the the mediator have baseball style arbitration for any disputed provisions. And it cleans things up a lot. Because you're not been there eight 910 o'clock at night before an opening arguments a hard time to make sure you got all the little, little issues like this closed up. Michael Smith 02:56 Well, in the baseball style is a great way to go. There's there's another one I can suggest I had a couple of mediations last year with a magistrate judge in the Sherman division Eastern District Judge Christine Novak. And in her court, she did baseball style. But the other thing she did is as soon as she walked in to start the mediation, she handed you or she or she told you, I want you to start writing the settlement agreement. What

The litigation risks around data and privacy management continue to grow. Evolving class-action strategies, statutory damages, and new state laws create even more risks. Ian Ballon identifies a few of the biggest issues that we should be looking for in the next 12 months. SPEAKERS Ian Ballon, Wayne Stacy Wayne Stacy 00:00 Welcome, everyone to the Berkeley Center for Law and Technology's Expert Series Podcast. I'm your host, Wayne Stacy, the Executive Director of BCLT. And today we're here to talk about what types of legal issues we should be thinking about when it comes to the internet. And today, we have Ian Ballon, from Greenberg, with, as many of you may know, Ian, he is one of the world's leading experts when it comes to internet law. It probably that's not an overstatement, he may be the world's leading expert. He's not the leading expert, at least in the top three or four. But what we know about Ian is that he's got incredibly broad practice. He's the Global Intellectual Property and Technology Practice Group lead at Greenberg, which is an enormous group. But what he brings to us is this breadth of knowledge about what we should be thinking about across internet law as a whole. So no matter what particular area you're in, Ian should have a little bit of input that you need to know today. So Ian with that, I wanted to say thank you for joining us. Ian Ballon 01:06 Well, thank you. Thank you for that very generous introduction. You're very-- You're too kind. Wayne Stacy 01:13 Well, tell your friends because other people that litigated against me for years have never said that about me so well, well, and we get I wanted to kind of showcase this Brett today and run through a grab bag of questions that people should be should be thinking about. So some of these don't necessarily relate to the question before. But let's just just run through a few things. So one of the issues that I've been looking at is the case act and voluntary copyright arbitration arbitration. So, you know, tell us what you think about the impact on that, should we be looking at it, studying it worrying about it? Ian Ballon 01:52 I think it's really important for companies to to prepare for it because it is very much an under the radar issue. Everyone talks about how case act arbitration is voluntary. And so I think a lot of companies really aren't paying much attention. Because if it's voluntary, you can think about it when you need to. But it's only voluntary, if you don't opt out. So this is I think, one of the places where companies are going to run into trouble, which is if you are duly served with a case at complaint, you have 60 days to opt out, otherwise it's going to be binding. And I think it is important for companies to determine whether they want to be involved in case ACC proceedings or don't. There are three types of claims that can be brought one is infringement. One is non infringement, essentially, like declaratory relief, and one is for sanctions for misrepresentation in connection with a notification or counter notification under Section 512 F of the DMCA. So I think we will see a lot of complaints, particularly from individual copyright owners

Should patent owners be afraid of NDTX now that the patent pilot is over? And what can we learn from a preliminary injunction denial? Hint—a lot. 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. I'm your host, Wayne Stacey. And we're here once again with Michael Smith. Michael, thanks for joining us. Michael Smith 00:12 Thanks for having me. Wayne Stacy 00:14 Well, Michael, another another week and another set of interesting cases coming out of out of Texas. Michael Smith 00:23 There sure were. Wayne Stacy 00:25 Well, and some of these are beyond the normal, interesting cases. It shows a lot of a lot of behind the scenes maneuvering in courthouses. But before we get to the the fun things, let's talk about patents scheduling and Marshall. Michael Smith 00:40 Yeah, this is helpful to kind of put a stake in the ground because it'll it's relevant to some things we'll be talking about later. Last week, we had our usual bimonthly patent scheduling conferences in Marshall affectionately referred to as the cattle call. And we all show up, go over there judge Gill strap goes through the cases, sees who consents to a magistrate judge and who doesn't and then gives the cases are Markman and jury trial settings. And the significant thing about this is Judge Gilstrap for the last 10 years, he always sets cases for trial at about the same time, 14 months from the scheduling conference, give or take 30 days, same thing here 13 To 15 months, the markets are a little bit later there, they were running seven to nine months from the scheduling conference, they're usually six to eight. But that just means that it affects the timing aftermarket ones just a few weeks. But anyway, it's always good to see people Judge Gilstrap will announce if there are any changes in procedures, and there weren't at this case. So we had about 14 cases heard one significant change over the years is of those 14 cases, only two had other cases consolidated into them. We used to have an average of six to 10 cases, consolidated with one lead cases, we're now down to like, I think 1.1 cases, because we only had to one had another case consolidated with it, another had three cases consolidated with it. So we don't see as many cases where a plaintiff sues multiple defendants. Some of that is certainly attributable to TC heartland, a plaintiff will file some cases in the Eastern District. They can't get Vinu on other defendants. So they'll file those in the western district or in Delaware, California somewhere. Wayne Stacy 02:32 We also saw some some state motions that came out of martial that seemed to be Michael Smith 02:38 if you want to dig a little deeper, seemed to have some some wonderful meaning behind them. Well, they did. There was a lot of interest in the state cases that we talked about in Waco last week. And it just so happened that when I was looking at cases out of Marshall, at the same time, I had four cases I could look at where Judge Gilstrap ruled on a motion to stay. And again, like snowflakes, every state was was different. In the vocal life case, the request was will judge give us a state because we're doing venue discovery. And there's another case up in front of the Federal Circuit involving the plaintiff a prior case. And the judge said, Well, under the facts of this case, venue, discovery is about to end. So I'm going to deny the mot

The Federal Circuit gave us a new case on pleading standards. While it provides some clarity and some definite warnings, does it provide any clarity? Or does it simply give judges the same discretion that they always had? SPEAKERS Wayne Stacy, Henry Huang Wayne Stacy 00:00 Welcome, everyone to the Berkeley Center for Law and Technology's expert series podcast. This is the first of 2022. I'm the Executive Director of BCLT and your host, Wayne Stacy. And today we're here to talk about patent pleading forms. So 10 years ago, pleading forms for patent infringement, we're an incredibly hot topic. Nearly every case involves someone filing a motion for insufficient pleadings. But that issue cooled off, and people really stopped talking about it. But for anyone practicing in the Northern District of California, you knew that judge also hadn't forgotten about pleading forms, and he never stopped talking about it. So it's no surprise that a case from his court made it to the Federal Circuit, and is providing us with some fresh guidance on this old topic. So here to guide us through the discussion today. And the decision and its aftermath is Henry Huang from White and Case. So Henry, thank you for joining us today. Henry Huang 01:01 Thanks, Wayne, and Happy New Year to you and to everyone as well. And as he said, This is an interesting topic. And I think roughly today, we wanted to sort of go through the pot and made versus Sony decision, as you mentioned, when they came out in July of last year, the first talk a little bit about the background, patent infringement pleading standards and the forms, as we just alluded to go through the case itself and some of the highlights of the Federal Circuit's decision. And then since it's been about six months, look at what some district courts have done in patent cases in terms of citing and applying bottom maids and how they've dealt with motions to dismiss patent claims. Since then. Wayne Stacy 01:41 Well, and for anybody that doesn't think it's relevant. Judge Albright out of Waco issued an opinion, just I guess, yesterday, on this this issue, so it's, it's a hot topic? Henry Huang 01:56 Yes, definitely. And we'll touch a little bit on that, then the decision that just that just came out as well. So if I may, I think I'll start a little bit with some of the background as you were talking about weighing from about a decade or a decade and a half ago, at some of the prior pleading standards for patent infringement plans. So this all goes to the basic question of how much do you need to plead in your complaint in district court to get a claim for patent infringement, and avoid dismissal under Rule 12 B six. So that leads to a lot of other sort of individual sub questions such as whether you need to plead all elements of a claim? Well, you need to identify all your dependent clans as well. And then also different standards for indirect infringement claims or doctrine of equivalents. So by way of background, and some of the more senior audience members recall, there used to be rules in the Federal Rules of Civil Procedure that talk specifically about how you could plead a sufficient plan for various causes of action. So there used to be rule 84 in the federal rules, which said that the forms in the appendix suffice under these rules and illustrate the simplicity and brevity that these rules contemplate. And that was referring, of course, to the appendix, which did have a series of forms for different causes of action, one of which was an infringement. And so that takes us to what used to be for meeting and also previously form 16. And that appendix for the federal rules. So since it's a

Judges Gilstrap and Albright provide guidance on trial procedures and remote hearings. And a strong warning against Rule 33(d) games. 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 from BCLT. And once again, we're here with Michael Smith, as you know if it happened, he's the one to tell you about it. Michael Smith 00:15 So certainly try. Wayne Stacy 00:18 Well, except if it's worth knowing you're gonna, you're gonna know about it, Michael. So let's just kick this off and tell us what happened in Texas last week? Michael Smith 00:28 Well, the the thing I wanted to start with is, we had some analysis out last week on filing trends in 2021. Scott Graham with ALM was analyzing United patents recent report of patent filings and gave us some numbers to kind of see what's happening numerically with the with the cases, we know that that patent infringement filings were essentially flat last year, at around not quite 3800 cases, the Western District of Texas had 25% of those cases, and Judge Albright had 23%. The other 2% were split between the other judges in the district. For those of y'all that want to know where he was last year, last year, he was at 20%. So clearly, that's leveling off. But Scott, notice something that wasn't in the report, but that if you look at the data throughout the year, you can tell by the end of the year, the filings and judge Allbright's court, were trending down a little bit. And the people he talked to it united said they think that's due to recent Federal Circuit venue opinions. And I think that's probably correct. Delaware came in second with 22%. And the Eastern District of Texas was third with 11%. Another trend towards the end of the year is that Judge Gilstrap share in Marshall in the western in the Eastern District was picking up a little bit, he was up to about 8% of all cases, nationally, the Delaware judges have all got four to 5%. So it looks like we'll know better. In another quarter or two, it looks like some patent plaintiffs are coming back to the Eastern District. Or that might simply be I saw a trend right the the on New Year's Eve, a plaintiff filed about a dozen cases in Marshall, and then kept filing the beginning of the year. So it may just be one filer. But anyway, that's what's happening with filing trends in the state so far. Wayne Stacy 02:20 Well, it'll be interesting to see what happens long term, but notably, the Northern District of Texas is becoming almost irrelevant. Is that fair? Michael Smith 02:33 Well, they have the problem that without the patent pilot district, you don't know which judge you're going to get. And for the last 10 years, the same three judges have handled all the patent cases. So you knew you were going to get judges

The Federal Circuit gave us important guidance with its recent Intel v. Qualcomm decision. What can we anticipate for Article III jurisdiction going forward? And is the Court quietly reviving the "gist" doctrine of old for claim construction? Featuring Wayne Stacy (BCLT) and Seth Lloyd (MoFo). SPEAKERS Seth Lloyd, Wayne Stacy 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 your host today. Today we have Seth Lloyd from Morrison Forrester to walk us through a recent interesting ruling from the Federal Circuit. We have two heavyweights, Intel and Qualcomm fighting it out. And as often happens, when you have two heavyweights fighting it out, a lot of issues get brought to the surface, the Federal Circuit had to clean them up. So in light of what you saw with Intel, and Qualcomm, Seth, where do you want to kick off maybe Article Three, which is everyone's favorite New Year topic? Seth Lloyd 00:45 Yeah, that seems like a good place to start and is where the Court starts to. So just to kind of set the stage a little bit here, as you said, we have two kind of heavyweights fighting it out in the the the forum that they were fighting it out in at least before the appeal was the the PTABs of the Patent Trial and Appeal Board. So Qualcomm owns a patent to kind of these multi multi processor systems. It had asserted that patent not against Intel, but against one of Intel's customers and Intel in in response to that and kind of related litigation, then went to the Patent Trial and Appeal Board and filed a petition for inter parties review on the patent. The process, the PTAB went forward, ultimately the the PTAB cancelled some of the claims that Intel had challenged, but not others. And Intel appealed the claims that were upheld. And that the Article Three issue came in at the appeal stage, which is sort of the kind of an interesting wrinkle that happens when you take this route from the PTAB to the Federal Circuit. And the reason, you know so in district court if there's an article three injury or issue that's generally going to be litigated in the District Court itself, and then you know, if the district court gets it right or wrong, people will fight about that on appeal, that the difference in the PTAB context is anybody right can go to the patent office and file a petition. I think the statutory language is basically anybody but the patent owner can file a petition for inter parties review. So there's no check out the PTAB. But once you try to invoke the the authority of an Article Three court by safe at filing your appeal, now your article three requirements are going to kick in. Wayne Stacy 02:37 Well, we saw some of this with some hedge funds filing early on. But are we really seeing this as an issue popping up? When you have two actual manufacturing corporations like Intel and Qualcomm? Do you see this

The future of consumer and privacy protection may involve the broader concept of digital trust. Governments and companies both have a critical role to play—if they are willing. SPEAKERS Wayne Stacy, Stuart Brotman Wayne Stacy 00:00 Welcome, everyone to the Berkeley Center for Law and technologies expert series Podcast. I'm the Executive Director of BCLT, and your host, Wayne Stacy. Today, we have another discussion with Professor Stuart Brotman. If you recall, Professor Brotman is a professor of Media Management and Law at the University of Tennessee, and also a Distinguished Fellow at the Media Institute. Professor Brotman is pioneering a new model for addressing privacy issues, and addressing the international interaction between the privacy rules that are developing. So Stuart, we've talked about the world gravitating toward an enforcement model for privacy. That really is stick based in a way from an incentive model. That's carrot based. And then we've talked about the issues that arise from multi jurisdictional oversight of privacy here in the US. So kind of in light of what we've already discussed, what do you think's the single biggest unaddressed issue in digital privacy policy today? Stuart Brotman 01:05 Wayne, thanks for inviting me to be here today. So I think the probably biggest unaddressed issue, but one that I guess you could characterize as the forest instead of the trees, is the notion of digital trust. Ultimately, digital trust is the goal that I think digital privacy legislation or regulation is trying to achieve. But I think a lot of the discussion really focuses at the outset, on what are the regulatory or legislative approaches, as opposed to stepping back and looking at digital trust in a much more broad and holistic way. The other aspect that's interesting about digital trust, is that it's actually measurable. So we have a number of surveys that are being conducted by highly respected organizations, which help us track track perceptions of how consumers and users feel about the amount of trust they have for various digital services. So for example, Edelman, which is a worldwide public relations firm every year, they come out with a trust index. And that shows how various institutions including big tech is perceived by the public. And then also, the professional services firm KPMG, has conducted a series of war focused data privacy surveys that focus on this area of digital trust, I think net net, when you look at some of the surveys that are being done, you see that there is a large gap between the public terms of their perception of what they trust and how they trust. And obviously, on the other side, the commercial providers of digital services. So for example, the KPMG survey of 2020, which was the latest one, the majority of people in that survey, this trusted commercial provision of collection, storage and transmission of digital data. So we understand fundamentally, there is a trust problem. And when we talk about digital privacy, that tends to be ways that we try to address the problem. But I think the underlying issue really hasn't been focused on in the way that it should be. Wayne Stacy 03:43 We'll to start I want to take a step back, because if you read the the average newspaper, it seems that the term digital privacy and digital trust are the terms digital privacy and digital trust are, are used interchangeably. And I don't think that's necessarily the correct way the industry is using those terms. So can you explain a little bit about the difference between digital trust and digital privacy? Stuart Brotman 04:11 Well, I think digital trust, as I said, is really the broader term. And digital privacy

Judge Albright provides guidance for smooth patent trials and hints at distinctions in types of 101 motions. More on Michael Smith and Wayne Stacy Wayne Stacy 0:00 Welcome, everyone to the Berkeley Center for Law and Technology's last week in Texas podcast. Happy New Year. This is our first last week in Texas for 2022. And we are back once again with Michael Smith. Michael, welcome and Happy New Year. Michael Smith 0:18 Happy New Year. It's good to be back, Wayne. Wayne Stacy 0:20 Well, you started the year off in Waco already. So before we we take you there, though, we're trying to go to the Eastern District and look at some of the rulings from the end of 2021. And then the fun things that are coming out so far this year. Michael Smith 0:36 Yeah, it reminds me of what I heard someone say at a pre trial with Judge Albright in Waco yesterday, he came over and looked at me and said, You know, I feel like I'm being unfaithful to judge Gill strap being here. I said "I understand." But so let's start with the Eastern District. We had a few interesting cases recently there. Last year, there was a damages retrial in a trade secret misappropriation case in front of Judge Moisan up in Sherman. And that was a case they had been tried in front of Judge shell several years ago, went up to the appellate court, and they provided an advisory opinion, reverse did on some damages issues, having to do with disgorgement and send it back and said retry the damages side of it. It is not fun being on the defense side in a retrial on damages. And this is the final order that came out of that were judgments and entered findings and conclusions, which agreed with the jury's advisory findings in that case, on some of these issues, they're for the court, but the court can seat and advisory jury and that's what he he chose to do. And he followed what the what the jury did in that case. So if you if you've got a case with trade, secret misappropriation, discouragement damages issues, it's a good opinion to look to, to see what are the factors and how do you effectively present that at trial? Wayne Stacy 2:03 I think this is your right, this is a unique case to see damages separated from all of the other mudslinging and irrelevant damages issues that go with underlying liability. So for pure, pure pure damages case, I don't think you'll find one much better than this. Michael Smith 2:21 Oh, yeah. It's it's yeah, there was a desperate need for some mudslinging. In that case. It's very difficult, because the thing that made it unusual was the prior jury had found intentional misappropriation. So you had the jury in this case, instructed that well, it's either gross negligence, or willful, or malicious. So you already had baked into what the new jury got the the bad conduct that the prior jury had found. So that that made it a very interesting case. But anyway, that's an interesting one to look at. Another thing we're finding out a little bit more about these days is mediation and mediation in the age of COVID. Every mediation is like a snowflake, it's different, who has to show up is different, how it's handled is different. And we had a couple of orders come out on a case here that is interesting. The parties identified some issues before mediation, we're kind of back to in person mediation. But what happened here is the two parties are over in different countries in Europe, and one of them ran into a travel restriction right before the mediation and said our guy needs to attend remotely. And the other party said, well, we want you to send some other people from the UK and judge Gill strap issued an opinion that said that, okay,

When do post-marketing tests required by FDA not indicate a reasonable expectation of success for a drug combination? And, what is the interplay between reasonable expectation of success and disclosed ranges in prior art? Allison Schmitt (BCLT) and Brian Matsui (MoFo) discuss the Teva v. Corcept decision (18 F.4th 1377 (Fed. Cir. 2021)). Featuring Allison Schmitt (BCLT) and Brian Matsui (MoFo). SPEAKERS Brian Matsui, Allison Schmitt Allison Schmitt 00:00 Hello and welcome to the Berkeley Center for Law and Technology's expert series podcast. My name is Allison Schmitt, and I'm the director of the life sciences project at BCLT. Today, Brian Matsui for Morrison and Forester is joining us for our podcast series beyond the holding a nuanced look at the Federal Circuit's patent decisions. Thanks for joining us again, Brian. Brian Matsui 00:19 Thanks, Ellison. Allison Schmitt 00:21 So today we're going to discuss the recent Life Sciences decision. Teva Pharmaceutical versus Corcept Therapeutics. This is an appeal from a p tag decision on obviousness from a post grant review. We'll go ahead and let Brian take it, take it away. Walk me through the decision. Brian Matsui 00:36 Great. Yeah. So this is a decision that came out in December 7. And it's it's an interesting obviousness decision. It's one of those decisions where you you take a look at it. And I think the first reaction that a lot of people have is there was clearly strong motivation. And it's one of those cases where people think, well, the claims here really seemed like they might be obvious, just as a bit of background. This involves the patent owner Corcept. And basically, they did a clinical trial on a drug mifepristone for Cushing syndrome. And they basically found out from their clinical trial that there are good results for dosages of 300 to 1200 milligrams per day, and they, you know, submitted a new drug application to the FDA, which got approved, but during the approval, they FDA included some post marketing requirements. They basically require the patent owner to do a clinical trial to see if there was a drug to drug interaction between Mfu Crosstown and another type of drug like a strong CYP three a inhibitor, the FDA wanted to see if there's a safety risk if you use those together. So basically, they had to do this additional clinical study. But the drug was approved for 300 milligrams all the way up to 1200 milligrams. But there was a bit of a limitation on that, that you were only supposed to dose at 300 milligrams per day with that other drug that they wanted the patent owner to do a study on. And so this is where it got interesting because course up did a study. And they found out that you could tolerate up to 600 milligrams per day with this strong CYP three a inhibitor and they got a patent on that. And so basically, the FDA told them, you know, in what would be a prior art document that you need to do this, and they did it. And they ended up getting a patent on that. So as a result, Teva sought post grant review, and they thought they had a pretty strong obviousness case, I would think, because they basically had the FDA saying do the study to the patent owner, the patent owner does the study. And then that's what leads to the actual grant of the patent. Well,

What do you need to know about the new Magistrate Judge in Waco? And a textbook decision on seeking fees as a prevailing patent plaintiff. 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. I'm your host, Wayne Stacy, the Executive Director of BCLT. And once again, we're here with Michael Smith. As you know, if it's happening in Texas, Michael is the person that can tell you about it. But a few little things about Michael because we haven't heard from him in a couple of weeks: Michael is now in addition to being an expert in Texas, has a master's in World War Two history. So he can tell you what happened to Texas and in World War Two. And that may be a different podcast, though. In addition to that, Michael and I got to spend some of the the week together, looking at UC Berkeley Stanford conference and looking at some of the top IP issues facing people around the country. Michael was a hit there. Everybody likes to know what's happening in Texas, because it seems to be the talk of the town. So with all of that we got a little catching up to do. Michael, you want to want to lead us through it? Michael Smith 01:04 Certainly, Wayne, it has been an interesting few weeks, both personally and professionally, there's been a lot going on in the courts. And and I would kind of want to start with everyone likes to talk about 101 patentable subject matter. And we were in the middle of a panel last week at the seminar that you and I were at the Berkeley Stanford event. And we got some statistics on 101. But at the same time, we found out there were three new 101 cases out of the eastern and western districts of Texas last week. So I wanted to start with one of those. And that was from the Eastern District of Texas. Back in October, a plaintiff of terminal reality, lost a jury trial in Marshall. They were actually working out in my offices, so I was kind of hearing about what was going on the case. But Sony got a jury verdict of no infringement, the claims were invalid. And the jury was also asked that 101 factual predicate question. And they found the well understood question and the defendant's favor and I think you and I have talked about what juries are doing on that question. Wayne Stacy 02:11 And from my look at the cases, it seems like it's a tremendous defense. So it seems like a pretty, pretty common result. Michael Smith 02:20 I think so and I remember when the panel was talking about it last week, I mentioned that I'm, we've seen that submitted several times in the Eastern District Courts, and I don't recall ever seeing a plaintiff win on that. Juries always seem to find the activity well understood. And I can kind of understand that, because after an expert has explained it, well, then they can understand it. So even though there's little hindsight involved. There may be a bias on the jury's part to find for the definitive on that question. But what happened here was, the plaintiff loses on infringement, they lose on invalidity, they lose on everything. And then the defendant comes in, and they want the finding that it's not patentable subject matter as well. And Judge Gilstrap's opinion said, Well, we submitted Alice Step Two to the jury, and the jury found that they were well understood, but my job is to look at Alice step one. And looking at Alice step one, I find that the asserted claims weren't directed to an abstract idea, and therefore they didn't claim patent and eligible subject matter. So the plaintiff lost everything in front of the jury, but they were able to salvage the patentable subject matter question before Judge

In Hatch-Waxman cases, where is the act of infringement committed, and who commits it? Allison Schmitt (BCLT) and Seth Lloyd (MoFo) discuss the Celgene v. Mylan decision (17 F.4th 1111 (Fed. Cir. 2021)). Featuring Seth Lloyd. SPEAKERS Seth Lloyd, Allison Schmitt Allison Schmitt 00:00 Hello all and welcome to the Berkeley Center for Law and Technology's Expert Series podcast. My name is Allison Schmitt and I'm the director of the Life Sciences Program at BCLT. So today Seth Lloyd from Morrison and Foerster is joining us for our podcast series Beyond the Holding a nuanced look at the Federal Circuit's patents decisions. Thanks so much for joining us, Seth. Happy to have you back. Seth Lloyd 00:20 Yeah, thanks. Awesome. Allison Schmitt 00:22 So today we're going to discuss the November 5th Celgene v. Mylan decision that came down from the Federal Circuit. There's a number of issues to unpack here related to venue and pleading standards. And Seth is going to walk us through all of it. But before we dig into the substance of the decision itself, Celgene discusses a type of case that's different from most of the other cases that we've previously discussed on the podcast. So Celgene arose under the Hatch Waxman Act, which is a complex statutory framework created by Congress, with the goal of streamlining approval of generic drug products in the United States, and creating a framework for the patent challenges to the brand side company's patents prior to marketing the generic drug. So Seth, can you walk us through the background of how these Hatch Waxman cases work so that our listeners can get a sense of how these might be different from the typical patent cases that they're thinking about? Seth Lloyd 01:10 Yeah, I'll give it my best shot. You weren't exaggerating when you said complex, it is a complex statutory framework. But I think there are a few key points to understand for today's case. So in general, as you said, when a completely new drug is coming to market, the party files a new drug application or an NDA, with the Food and Drug Administration. And to get an NDA approved, there's a long process. The parties have to go through clinical studies and and go through several rounds, usually with the FDA to get approval, that tends to be a very lengthy and costly process. And so the Hatch Waxman Act was designed to allow quicker approval for kind of the follow on, so parties who want to market a generic form. So basically the same pharmaceutical formula. But without going through that lengthy process. And what the Hatch Waxman Act allows them to do is to submit an abbreviated new drug application, or an ANDA, as people in the industry call it. And with the ANDA they don't have to submit all the do new clinical trials and submit new data from clinical studies. Instead, they can simply show prove to the FDA that their drug is bio equivalent to an approved drug, it's the same formula, and they can get approval much quicker and with less cost. The part that's going to be relevant to our case today is how does this all work with patents because often, if somebody's come up with a new drug, they've patented the formula or they've patented a new method for using that drug. And so the new drug applicant, that NDA filer will also tell the FDA about any of those patents that covered the drug, or methods of using it, and they'll list those patents in what's called the orange book. Now, later, the company that wants to market the generic version comes along, they have to tell the FDA, what they intend to do with regard to any patents listed in the orange book. They have

Local, state, national, and international—everyone is getting in on the privacy game. But what does the future hold for harmonization? And where does the new USMCA (the new NAFTA) fit in? More on Stuart Brotman. SPEAKERS Wayne Stacy, Stuart Brotman Wayne Stacy 00:00 Welcome, everyone to the Berkeley Center for Law and Technology's Expert Series Podcast. I'm the Executive Director of BCLT, and your host Wayne Stacey. Today, we have the second part of a discussion with Professor Stuart Brotman. If you recall, Professor Brotman is a professor of Media Management law at the University of Tennessee, and is pioneering a new model for addressing privacy issues. Today, we're going to actually focus on something a little different than the model we discussed last time that the carrot and stick and really start addressing some of the competition between different jurisdictions on how they're trying to regulate privacy and related issues. So Stuart, let me start with just the first question is, why is federal preemption such a contentious issue in the development of federal digital privacy legislation? Stuart Brotman 00:53 Thanks, Wayne, it's a pleasure to be here. Well, federal preemption remains a sticking point, I think, particularly because it is a sticking point in the federal discussion, which means on one side of the aisle, you have the Republicans and the other, the Democrats and to the extent that they do not want to move closer to enacting legislation, preemption gives an obvious point of division between the two parties. Generally, you can characterize the Democrats as being favorable to preemption. And you can characterize the Republicans as not being favorable to preemption based on states rights and the ability of states to handle things. But we have a really interesting moving mix of players here, particularly because California in enacting the California Privacy Rights Act. And then, of course, before that the California Legislature enacting the California Consumer Privacy Act. So So there we have, essentially, particularly with the CPRA, which was enacted as a ballot proposition, we have the voters who have now essentially said, this is the type of privacy legislation that we want. And it's the only legislation so far that essentially has faced voters at the ballot box. And as you know, California has about 40 million people not that many voted, but certainly it represents us, the largest state in the union. And of course, two of the critical players are the Speaker of the House, Nancy Pelosi represents a congressional district in the San Francisco area. And, of course, Vice President and Kamala Harris, who of course, was the attorney general, when CCPA, the California Consumer Protection Act was adopted and obviously was a strong proponent of that. So even though they are Democrats, they also have the interests of California. And those interests, obviously, are to make the California laws as workable as possible, and not have the federal government come in, and essentially preempt them prematurely. And of course, then we have other states who have been added to the mix. So we have both Virginia and Colorado, which now have laws which have been enacted by the legislature and signed by the governor. And if you look a little bit at the political makeup of those states, Virginia, as you know, is what's characterized now as a purple state. And in the recent gubernatorial election, we saw it flipped pretty dramatically from the Democrats to Republicans. And so it's a very interesting state is a bellwether, but clearly in Virginia, there was enough popular support and a Democratic legislature, which passed this. So there are two Democratic legislators California and Virginia, which have favore

Has the Federal Circuit abandoned all judicial restraint when reviewing Judge Albright's orders? The Federal Circuit is now issuing opinions on Judge Albright's venue decisions that are not even on appeal. What can we expect next? And moving beyond venue, last week's rulings provide important lessons on both summary judgment practice and expert reports. 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. I'm your host, Wayne Stacey. And once again, we're here with the famous Michael Smith. So Michael, what happened last week that we need to know? Michael Smith 00:16 Well, Wayne, we got a lot of interesting things that happened last week. Let me start with the Eastern District, we've got a couple of interesting opinions out of there. We have the J-mals in the Solus versus Samsung litigation. And as readers of my blog know, I'm a big fan of rule 15 motions, because it's the best way to see all the issues that come up in a case and what matters and what the standards are. And in that case, Judge Gilstrap was passing on the J-mals in a case that resulted in a $62 million verdict against Samsung back in March. Now he denied all the issues and also denied the defendants motion for new trial. But again, that's a really helpful opinion, to know the sorts of issues that come up in a case and what courts do with it. Wayne Stacy 01:06 You sell that opinion a little bit short, it's it's a long opinion, that really, if you're newer attorney or just want to get a set of lessons on on J malpractice, that opinion really seemed to be helpful. So it's one I'd recommend people take a look at. Michael Smith 01:22 It really is and because it discusses all the issues and explains what happened at trial, and now the complaint is that there wasn't sufficient evidence to support... A reasonable jury couldn't have decided the way that it did. Well, here's the evidence. And yes, there was sufficient evidence from which they could do that J-mals, I find I've kind of got J-mals on the brain this month from our trial a couple of weeks ago, because I was trying to herd those for the 50A motion at the end of the evidence. And a lot of times people just don't don't realize the significance procedurally of it. But at the back end of the J-mal procedure, you get this great opinion, that tells you so much about what goes on during trial. Wayne Stacy 02:06 Michael, there's is another case at the Eastern District that I gotta tell you, I was smiling as I read this. You absolutely have to lose this. But this is the most creative entertaining argument I have seen in a while, you know, kudos to you for creativity and making me smile. You want to give us the background on that Lyft case? Yeah, this is an improper venue case, that Magistrate Judge Payne here in Marshall ruled on. And in that case, what he was looking at is the plaintiff was saying venues proper in the Eastern District, in a case against Lyft, and they had three different arguments for why venue was appropriate. And he went through each one and said, Okay, argument one doesn't work, because that's not a regular place of business. Argument two doesn't work. And this was the one that I thought was interesting. The argument was that, well, they've got cars and cars are a regular established place of business. And he said, Well, looking carefully at what the court said in In Rae Cray. Yes, it's a physical place, but it's transient, not established. And then he found that pickup locations where it either Well, I was talking about this case with my wife last night, and I said, he

The Senate turns a harsh gaze toward Texas. Will recent heat from Washington result in more cases being transferred out of Texas? Or will the Federal Circuit's continued tinkering with venue make a difference? SPEAKERS Wayne Stacy, Michael Smith Wayne Stacy 0:00 Welcome, everyone to the Berkeley Center for Law and technologies last week in Texas podcast. I'm your host, the Executive Director of BCLT, Wayne Stacey. And once again, we are here with Michael Smith. And as you know, if it happened in Texas, and if it matters, Michael knows about it. So Michael, tell us what we need to know about the last couple of weeks. Michael Smith 0:22 Well, the last couple of weeks, the main thing is we've seen a bunch of letters, we had letters coming out of the clerk's office in Eastern District, and we had letters coming out of the United States Senate and Washington. And that got a lot of attention over the last week. Wayne Stacy 0:35 Well, the ones that are coming out of the clerk's office look like an administrative nightmare to kind of get all of this cleaned up or in compliance with the exact letter of the rule. Michael Smith 0:47 Yeah, what what appears to have happened is the Eastern District clerk's office is sending letters out to everybody who was ever involved in a case that Judge Gilstrap ever had since he's been on the bench in which his family had a trust, in which a trust that a family member had an interest in owned a stock of one of the parties. So I know I saw it in I don't know, a dozen or so maybe a little less than that cases, all of which are closed. Presumably, if it's an open case, there would be a recusal, and that would then require appointment under the local rules of the other judge in the division, and then he would continue with the case. Coincidentally, I had one of those situations come up three weeks ago, where a party raised had nothing to stock ownership had to do with a case Judge Gilstrap had worked on before he came on the bench, and they raised it and he recused that afternoon. So we got to see how quickly the thing went through the process. Within 24 hours, another judge was appointed that judge had asked a magistrate to go ahead and go forward with a case. But what will happen with these letters is clerk's office wrote and said, "Here's the situation: Judge's family member had an interest in the stock of one of the parties. If you want to raise any issues in connection with this, please do so in the next 30 days and another judge will take a look at him." So presumably people will be looking at that. Again, that's a universe of about 130 cases. I think so we'll know. In the next couple of weeks. How many of those actually generate a request. Wayne Stacy 2:19 Just to be clear, there's absolutely no accusation that Judge Gilstrap ever did anything wrong, that he was biased in any way, this is really an administrative issue related to a family trust. Michael Smith 2:33 Right, right. No, no accusation I've seen from anybody. It's simply a situation where the judge has said publicly, he didn't believe he needed to recuse, apparently, they've made the determination that they're going to go ahead and invite people to file any motions they think are necessary as a result of it. And any pending cases will move to another judge. Now, because we know the judges involved, as soon as I got the notices, they went and trashed because it's not something that I think had anything to do with anything. And again, if it was a defendant, they already knew who held their stock. So the only way this would come up is if there is a plaintiff, who felt like they can make the argument that the stock ownership had something to do with them losing the case. And I just -- I know most of the people that filed claims cases around here, and I'm not aware of anybody that thinks that has anyth

Using Europe as the model, privacy regulations worldwide are taking a strong turn toward punishment-based regulatory models. But is that the way that American privacy laws should go? What about offering a little carrot instead of all stick? More on Stuart Brotman. SPEAKERS Wayne Stacy, Stuart Brotman Wayne Stacy 00:00 Welcome, everyone to the Berkeley Center for Law and Technology's Expert Series Podcast. I'm the Executive Director of BCLT, Wayne Stacy. Recently, there's been significant criticism of tech companies and a lot of call for government regulation, especially in the area of data privacy. Depending on who you ask, tech companies are either out of control, or they're being unfairly blamed for the behavior of their users. So the question is, where's tech policy going and what is a healthy way to analyze these options? To guide us through this important discussion today, we have one of the nation's leading experts on tech policy development. Stewart Brotman, He's professor of Media Management and law at the University of Tennessee, a Distinguished Fellow at the Media Institute, and not a prerequisite for being on the BCLT podcast, but definitely a nice add. He's a Berkeley Law grad. So Stewart, thank you for joining us. Stuart Brotman 01:00 Thanks, Wayne. It's a pleasure to be here. Wayne Stacy 01:03 Well, Stuart, I want to just start at the highest level possible. You know, a lot of times when we talk about tech policy and tech regulation, people just immediately jump into the minutiae. But at a 30,000 foot level, tell us how effective the tech industry has been in helping to shape the digital privacy policy at the national level? Stuart Brotman 01:26 Well, I think a lot of it has been reactive, it'd be somewhat critical, I would say. And this is not different than virtually every other industry that operates in Washington. Typically, it operates reflexively, meaning that it waits for Congress to take a lead in the area and then offer some pushback. I think the tech area is quite different, just because it's so dynamic. And developments happen so quickly, that Congress clearly is not in the position to have an overall framework for tech policy, and often it needs to be educated and guided by the industry first. So I think there needs to be a much better interplay if we wanted to think of it as being proactive versus reactive, I would say at the 30,000 foot level, my perception is that I think the tech policy area has been quite reactive. And certainly the industry has great lobbying resources. But I think most of them have been directed at how to react to specific developments as opposed to this much larger area. Here's why it's important from a political standpoint, as we all saw the election returns from this week, and where the tea leaves seem to be guiding us, and looks highly likely that we are going to not have a unified White House, House and Senate under democratic control, beginning in 2023. And obviously, 2022 is an election year. What that means is that I think many of the themes and perspectives can change quite dramatically. And if I were to have one 30 thousand foot recommendation for the tech policy community, it's to begin to think of strategic areas of development in the new Congress in the 118th Congress. At this point, I think it's safe to say there probably is not going to be any federal privacy legislation that will be enacted in the 117th Congress, and it doesn't look like the Biden administration is going to be pushing any specific legislation. So that means that we're going to be deferring this for at least another

This week, we interview Brian Matsui: Is the USPTO bonus system for APJs still vulnerable if challenged by a factually-armed patent owner? And how much clearer can the Federal Circuit be—District Court judges have significant discretion on inequitable conduct. Every other week, BCLT Executive Director Wayne Stacy conducts interviews with a Morrison & Foerster team member to discuss the Federal Circuit’s recent patent decisions. We all know the basic holdings. The key, however, lies in the nuances of how the Federal Circuit reached its decision. If you want to know more—with an eye toward predicting the future—we have the nuanced information for you. SPEAKERS Brian Matsui, Wayne Stacy 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, Brian Matsui from Morrison Foerster will walk us through a few of the recent interesting rulings from the Federal Circuit. Brian, thanks for joining us again. Brian Matsui 00:20 Thanks a lot, Wayne. Wayne Stacy 00:21 Well, Brian the last two weeks have been lied at the Federal Circuit on on precedential decisions. But we did get two interesting cases. So I'd love to start with the Mobility Workx case, which is another constitutional challenge to the PTAB structure. As we maybe haven't had enough yet. We get another one that's fairly unique. So you want to tell us about this one? Brian Matsui 00:45 Yeah, I mean, this is sort of like the ghost of Arthrex, or something like that, since we're right around the time of Halloween right now. This is another IPR appeal, and the patent owners claims were cancelled. So again, since it's a constitutional challenge, we don't ever get to the merits of the actual IPR decision on what happened to the claims themselves. There were a couple of constitutional issues here. The patent owner requested to remand under the Supreme Court's Arthrex decision, you know, which, of course everybody knows, found an appointment clause violation. But actually, rather than just remanding the case and being done with it, the Federal Circuit first addressed a couple other constitutional challenges that the patent owner made. And I think that's probably the reason why we have a precedential opinion here, rather than just a straight remand, the Federal Circuit was able to sort of address these two issues and potentially, you know, foreclose them or make them more difficult for future litigants that want to raise them. Wayne Stacy 01:46 So Brian, one of the issues that that came up earlier in this case, and that seems to be coming up frequently is the government forfeiture arguments. You want to explain why the government keeps raising and losing this one? Brian Matsui 01:59 That's a good question. I mean, I think to take a step back, we should just look at why the government's involved in this case, because you know, it's an IPR dispute. And, of course, you know, the government can defend and does defend the final written decisions, but they're not usually in these IPR decisions. And whenever you raise a constitutional challenge to a federal law on appeal, you have to tell the Court of Appeals that you're doing so, so the court can tell the attorney general, and then the Department of Justice typically comes in and intervenes to defend the law. And that's what happened here. And what the government has been doing in these types of constitutional challenges to IPRs,

With the SEC evaluating new disclosure regulations and companies already being held responsible for sloppy ESG statements, in-house attorneys cannot afford to look past their environmental and ESG statements. What does the future hold? And what traps are already waiting for you? More on Jonathan Brightbill and Jennifer Porter! SPEAKERS Jennifer Porter, Wayne Stacy, Jonathan Brightbill Wayne Stacy 00:00 Welcome, everyone to the Berkeley Center for Law and Technology's Expert Series podcast. I'm your host, Wayne Stacy, the Executive Director for BCLT. And today we're here to talk about environmental issues in particular, environmental issues and how they impact tech companies. So we know that innovators and emerging tech companies like to see themselves as doing good things, helping out the environment. But is that always true? And if it's not true, when do they need to call outside experts, when do issues need to be raised up the chain within an organization? So to guide us through that discussion today, we have two leading experts from Winston Strawn. We have Jonathan Brightbill and Jenny Porter. Thank you both for joining us. Jonathan Brightbill 00:52 Thanks Wayne. Wayne Stacy 00:55 So let me just just start with the highest level question. Can you describe some of the environmental issues that those in the tech sector need to be thinking about, need to be looking out for basically, this is almost a law school issue spotting question, what should they issue spot? Jonathan Brightbill 01:14 Well, sure. So some of the things they want to be thinking about is, of course, energy is an important attribute of the tech sector, and how they make things and the fact that then that their products are being used by consumers downstream. So the tech sector is an important contributor to ultimately or can be a contributor to energy output, and therefore to carbon emissions. So it's one sector that has been identified by policy regulators in the environmental space as one where more scrutiny needs to be applied. And in particular, on the disclosure and the reporting side, the so called ESG. There are a number of innovators in the tech space who are looking at new technologies to bring energy to the those who need it, to the public, and even to themselves. Looking at solar panels, wind power, other things. And while those types of technologies are carbon free, or largely carbon free in their production, they can have other environmental impacts over their lifecycle. There are waste impacts, there can be impacts on wildlife and other things. Another key area is in the area of toxics and chemicals. Obviously, a lot of tech is built using batteries, using heavy metals, rare earths other things, and there are disposal concerns on the backside. And another area is that while a lot of tech companies don't really think of themselves as having a significant environmental footprint on the manufacturing side, because a lot of their manufacturing is occurring overseas, in Asia, and oftentimes in China. There is a a growing and developing Chinese environmental regulatory system that has really changed in the course of the last five years to become much more rigorous, and much more consequential such that companies and entrepreneurs and developers here in the United States that haven't kind of historically thought of themselves as having a significant manufacturing environmental footprint, may begin to see those things. Wayne Stacy

Would anyone tolerate Federal judges being paid based on the number of cases they dispose of? Probably not—it looks bad and erodes faith in the system. With faith in the USPTO at a low point, why then does the USPTO compensate PTAB judges using a bonus system that appears biased? Judge Newman elegantly points out that the appearance of propriety is critical to build faith in any adjudicative process—including those at the PTAB. More on Sarah Guske and Eliot Williams, Baker Botts. SPEAKERS Sarah Guske, Wayne Stacy, Eliot Williams Wayne Stacy 00:00 Welcome, everyone to the Berkeley Center for Law and Technology's Expert Series podcast. I'm your host, Wayne Stacey, the Executive Director of BCLT. And today we're talking about the USPTO. And a few issues that the next director might want to look into quickly. Two issues in particular, were recently raised by Judge Newman, the bias and appearance of bias and the director review ability of institution decisions. So both of these came up in a wonderful dissent written by Judge Newman in the mobility works case. To talk about these issues today. We have two experts from Baker Botts, Sarah Guske and Eliot Williams. Thank you both for joining us today. Sarah Guske 00:41 Thanks for having us. Eliot Williams 00:42 Good to be here, Wayne. Wayne Stacy 00:43 So I want to talk about the the bias issue first, this case had a really interesting section in the majority opinion about how PTAB judges are bonused. And how bias may or may not arise from those bonuses. So Eliot, I wanted to kick it to you first, you want to give a little background on how PTAB judges are paid and why somebody might perceive a bias. Eliot Williams 01:09 Yeah, this is definitely an interesting issue that comes out of out of this this opinion. And, you know, here the patent owner obtained some information through the Freedom of Information Act, although I think generally most practitioners knew this was how PTAB judges are paid. But essentially, the way they're evaluated, they're obviously several components that go into that. But one of them is sort of how many decisions they write. And for PTAB judges, those come in a couple from a couple different places. One is the institution decision, which I'm sure we'll talk more about in this conversation, which is kind of the beginning of an PTAB trial proceeding. And it's the first the first step in deciding whether the petitioner has made enough of a showing that patents may be invalid to sort of begin the trial. The second phase is in the final written decision, which is of course, the decision that comes at the very end of the trial. The third thing that PTAB judges can do, however, is to write decisions in ex parte appeals, which has nothing to do with these sort of IPRS and PTAB trials, but has to do with just regular prosecution coming up from the examiner core. And, so in this particular case, what the petitioner noted is, the patent owner should say noted is that because the PTAB judges are paid based on the number of decisions they write, or that goes into their bonus calculations, they have an incentive to institute, because they know that if they write the institution decision, they would then have the chance to get another, you know, piece of work product out at the end of the process when they write the final written decision. So that essentially, as I understand it, was the argument that was being made

Two trials and two patent owner losses. Who said Texas was a plaintiff's dream? Could 101 be the most powerful invalidity attack in front of the jury? And a venue argument that was too much for Judge Albright. 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. I'm your host, Wayne Stacey, and we're here again with the famous Michael Smith. Michael, you want to kick us off with what happened in Texas last week? Michael Smith 00:17 Well, sure, Wayne. I think the biggest news in Texas was last year, our annual Eastern District of Texas bench bar resumed in Plano. We had to cancel it last year because of the pandemic, but we were able to have it in person this year. And it was really great seeing everyone. We had almost 570 registered, and our previous high was in the high 400s. So we were very excited at the registrations. That really wasn't unexpected because we had over 100 people that flew to Texas for the planning meeting back in August. So we knew we'd have a lot of people there, but people were just very glad to be out. We didn't do the second night dinner at the Cowboys Stadium this year, we went to the Texas Rangers new ballpark in Arlington Global Life Gield. Of course, this being Texas, they'd already taken up the baseball diamond and put down the football field, because they'll be hosting the Army Air Force game on November the sixth. So we couldn't go on the field because they were still setting it up for football. But we went around, we went and had a line where attendees could practice in the Rangers batting cages, they fired balls at us. Everybody was wanting to know what the speed was. And I said and they told us it was 45, which I understand is a little slow. But I'm not a baseball guy. But we got to eat all the ballpark food, they have areas where you can go through a buffet and it has every food that is in the ballpark in one place. So it was incredibly unhealthy. But we got tours of everything. And it was just a great chance for everybody to socialize and visit and tell stories because obviously baseball is important to a lot of the people that are there, and they enjoyed visiting about it. So a great conference, very excited to get to do it. Wayne Stacy 02:02 It's good to start hearing about people getting together again. You and I have talked about the practice of law can be pretty isolating. And then practice of litigation can set up a lot of adversarial situations. Dinner beer hot dog at the ballpark helps make litigations go a little bit easier. And people reach some some reasonable resolutions on things. Michael Smith 02:22 Oh, it absolutely does. I talked to a number of people that are that are opposite me in cases right now. And it was a great to visit to visit with them. And oh yeah, it's good to be working with you again on such and such case. And the next day when I got back to the office, I could already tell if the problem came up, I was going to be able to email people realize that we were both trying to come to a reasonable solution on something. It really was great for that reason. And of course we get to hear a lot of great lawyers and a lot of good judges talking to us about what works and what doesn't work. A lot of in House Counsel, I learned things, a lot of things that I didn't know. Wayne Stacy 02:57 Well, Michael, I saw the panel that you are moderating incredibly important everywhere but especially for people from the Eastern District and Western District because it's drawing so much media attention these days. You know, everybody's coming to that docket looking for st

This week, we interview Seth Lloyd: Alternative rationales, attorney fees, and NDAs stretched too far. Can parties contract away their rights to file an IPR? And what can a party expect when it fails to appeal an alternative rationale? Every other week, BCLT Executive Director Wayne Stacy conducts interviews with a Morrison & Foerster team member to discuss the Federal Circuit's recent patent decisions. We all know the basic holdings. The key, however, lies in the nuances of how the Federal Circuit reached its decision. If you want to know more—with an eye toward predicting the future—we have the nuanced information for you. SPEAKERS Seth Lloyd, Wayne Stacy Wayne Stacy 00:00 Welcome, everyone to the Berkeley Center for Law and Technology's Federal Circuit podcast. I'm your host, Wayne Stacey, the Executive Director for BCLT. And we're here again to talk about some of the nuances from recent Federal Circuit decisions. We have today with us again, one of the experts from Morrison and Forester, Seth Lloyd specializes in appellate litigation, including appellate litigation at the Federal Circuit. So thank you for joining us today. Seth Lloyd 00:28 Thanks for having me. Wayne, really great to be here. Wayne Stacy 00:31 So there were two cases that popped out in the last two weeks that they can be glossed over when you when you look at some of the reporters that come out, but that really deserve a little bit of extra attention. The first is the Kannuu case. And you flag that one, because it really seems to tell us something about NDAs and this idea of pre litigation discussions. So would you walk us through kind of how it got to the Federal Circuit? Seth Lloyd 01:02 Yeah, sure. I think it's a little bit of a hot topic right now in the interplay between NDAs or arbitration agreements and the availability of review at the patent office. So IPR is in PTAB. So that's kind of this case, really, right in the center of all that, I thought was interesting, because it actually drew amicus briefing during the initial appeal briefing. So sometimes, at the Federal Circuit, it's not uncommon to see amicus briefing once there's a petition for rehearing but but this one actually had amicus briefing on both sides of the issue at the kind of initial appeal stage. And the cases, just kind of the background facts are, you have Kannuu, who's the plaintiff and patent owner. They're an Australian startup company focused on media related products. So kind of navigation of smart TVs. And several years ago, Samsung contacted Kannuu expressing apparently some interest in in technology. And before the parties got too far along, they entered into a standard kind of non disclosure agreement so that they could speak freely about their respective technologies and businesses. The agreement contained a fairly common forum selection clause. And the clause stated that any legal action suit or proceeding, and this is kind of that the key language arising out of or relating to this agreement, or the transactions contemplated here by, must be instituted exclusively in a court of competent jurisdiction in Manhattan in New York. So that was the forum selection clause. The parties talked for a bit more than a year, but basically failed to reach any agreement. nothing came of it, at least initially, but about six years after the initial discussions Kannuu sued Samsung in District Court in New York, alleging patent infringement and breach of the NDA agreement, and Samsung responded as many defendants now do by filing several petitions for IPR, for intra parties reviews at the patent off

Using publicly available information, Clearview AI built a massive database of faceprints for commercial use and police use. Did they have the right to do so? Not in Illinois at least. What does this important case mean for those outside of Illinois? And how will other states be looking to provide similar protections? More on Catherine Crump. SPEAKERS Catherine Crump, Wayne Stacy Wayne Stacy 00:00 Welcome, everyone to the Berkeley Center for Law and Technology's Experts series podcast. Today we are talking about biometric privacy and the intersection of First Amendment and privacy law. To guide us through this discussion, we have the director of the Samuelson Law, Technology, and Public Policy Clinic. Catherine Crump. Catherine has been at the clinic since 2014, and is one of the nation's leading experts on this topic. So with that in mind, Catherine, can you start us down this discussion about Clearview AI? Catherine Crump 00:33 We're going to talk today about a really interesting new ruling from an Illinois State Court, which issued a decision in which the ACLU and other organizations sued a company called Clearview AI for violating an Illinois law famous to those of us in the privacy world called the Illinois Biometric and Identification Privacy Act, and specifically for building a massive database of face prints it scraped from the internet, and then it sells access to these images to police departments who want to use them for facial recognition. So this really is a decision that pits privacy and free speech against each other. Wayne Stacy 01:14 I just want to make clear to the listeners, that clear view is collecting all this information from public sources. Catherine Crump 01:22 Yes, yes, that's right. So the Clearview AI product really shook the privacy community. It was actually the subject of a really well publicized New York Times article by a reporter named Kashmir Hill, it was in the magazine. And so it's a private company. And what it does is it scrapes photos off the public Internet, and yes, they're publicly available, right? So you know, when you get a picture taken of you at a law firm event, or maybe someone posts something on a public page of Facebook, all of those photos are available for viewing. And so what Clearview AI did, is it harness the power of the internet to gather all of these images. And to create a truly massive database of publicly available images. I think it's said it had something like 3 billion such images. And then it created face prints of those, right, which are a particular way to calculate facial geometry to create a unique imprint of people. So what was really what was really remarkable about this was that it's just vast in scope compared to the biometric database has been created before. So it's not like no one hadn't used this technique. In the past, you know, law enforcement has been doing facial recognition for probably 20 years, at least. But it's always done so on carefully controlled databases. So for example, DMV photos. And so this was different because it involved a private company, creating a truly massive database of photos online. And so it was just bigger in scope than anything anyone had seen before. Wayne Stacy 02:55 I think back to the classic Fourth Amendment cases: you put your garbage on the streets, and the police can rummage through it. This resembles the garbage case, because I'm making these pictures publicly available. Why can't people just use them? Catherine Crump

The Data Protection Act of 2021 would change privacy regulation worldwide. Will growing hostility toward Big Tech drive this Congress to act? And if they do act, what can we expect from this new agency? More on Reece Hirsch. SPEAKERS Wayne Stacy, Reece Hirsch Reece Hirsch 00:00 Welcome everyone to the Berkeley Center for Law and Technolog expert series podcast. I'm your host Wayne Stacey. And today we're talking about proposed privacy legislation. In particular, we're talking about the reintroduced Data Protection Act, which if passed, and that's a big if, would create a new federal agency focused on privacy. To guide us through this discussion today, we have Reece Hirsch. He's the co-head of the privacy and cybersecurity practice at Morgan Lewis and one of the nation's leading experts on privacy nationwide. Notably, he's also an author of six published books on cybersecurity. That's important because it's always great to find a lawyer that's an expert and has a personality at the same time. We get a wonderful guest today to walk us through the Data Protection Act of 2021. Well, thanks for having me, Wayne. Let's just start with the basics. I saw that this was introduced back in June of 2021, with some new provisions. So the the Data Protection Act of 2021. Tell us what the key features are. There have been several attempts to pass comprehensive us privacy legislation. This is the latest, but it is a pretty comprehensive effort, pretty ambitious, and it is getting some early traction. So I think it's worth taking a look at. And it would establish a new independent federal agency called the Data Protection Agency, which would have the authority to enforce new privacy regulations that they would develop, punish violators, study tech platform data collection practices. A lot of the kinds of things that have been here recently scrutinized by Congress, they'd be able to regulate the acts and practices involving use or collection of personal data. And then also, they would be able to examine mergers that involve significant combinations of personal data, where this new agency would be reporting on mergers to the FTC and the DOJ. And that also, they would be taking on a new role in regulating data aggregators, companies that are amassing large databases of personal information. So it's really targeting a lot of the things that have gotten the most scrutiny and criticism in recent years, It seems that this federal agency would be incredibly powerful when you compare it to the California agency. They're not really even equivalent, are they? I think it's really intended to address a perceived deficiency in US privacy regulation, because we do have the Federal Trade Commission, and they do good work with somewhat limited resources. But the US doesn't have any federal agency that's exclusively dedicated to privacy enforcement. And for example, when you look at the Organisation for Economic Cooperation and Development, they've got 38 member countries, including Germany, France, the UK, and the US is the only one that doesn't have a dedicated Data Protection Agency, this bill would be designed to try to remedy that, and also create a more kind of beefed up agency because the FTC has in the neighborhood of 40 to 50 personnel dedicated to privacy enforcement, when in the UK, their data protection agency has more in the neighborhood of 180 people concentrating on this subject. So that is kind of what they're aiming for with this bill, is to create that kind of really robust regulator in the privacy space. When I read through the proposed statute, the piece that caught my attention was a term that inevitably would be the focus of a lot of regulation, maybe litigation, and that is "high risk data practices." What's that supposed to cover? It c

Stealing signs is definitely cheating. But can it be considered theft of trade secrets? A creative lawsuit says "yes." More on Sheryl Garko. SPEAKERS Sheryl Garko, Wayne Stacy Wayne Stacy 00:00 Welcome to the Berkeley Center for Law and Technology's Expert Series podcast. I'm your host Wayne Stacey. And today we're here to talk about trade secrets, baseball, and stealing signs. It's an odd combination, but luckily we have Sheryl Garko from Orrick. to guide us through this rather odd topic today. Sheryl is a partner at Orrick and a nationally recognized IP litigator. not associated with either the Houston Astros or the Toronto Blue Jays. So Sheryl, how do we get from the world of trade secrets, which is usually about, or rather people think it's usually about high technology. But now we're all the way to baseball. How do we get there? Sheryl Garko 00:43 So this all comes out of the Houston Astros sign stealing cheating scandal that folks may recall. So this all kind of broke in 2019 2020. But related back to some conduct that occurred during the World Series and during the 2017 baseball season, then heading into 2018. This all came about because there was an article that was reported I believe in The Athletic that talked about the fact that the Astros were stealing signs stealing pitching signs, and it was subsequently confirmed by one of the Astros pitchers that was played on the team during that series, but that was in fact it was happening. So based on that, Major League Baseball launched an investigation, and in early 2020 confirmed that this was in fact the case. That the Astros had placed a camera out in centerfield to capture the pitching signals, and was relaying that video feed back to the dugout, where folks from the dugout would then communicate to the batter, what the pitch was that was coming. And it seems like this evolved a little bit in terms of their scheme where initially they were trying to clap or whistle, to demonstrate to tell the hitter what the signal was. And it eventually evolved to a they were banging on a trash can. And that a bang on the trash can meant that it was an off speed pitch. And no bang meant that it was a fastball that was coming. Because of that, there was a pitcher for the Blue Jays, he pitched during 2017 who claimed that he had an absolutely disastrous game, because the Astros were using the signal stealing scheme against him. And it resulted in him just having a terrible performance where I think he was up there for just a small portion of an inning and had four hits off of him. And he was subsequently sent down to the Minors immediately following that game. So he went on to say, to not have a particularly illustrious career following that. He spent some time in the Minors and then apparently, according to his pleadings, wasn't able to get a job in US baseball after that. And so he's been struggling a bit. So as a result, he filed a complaint against the Houston Astros, claiming that they misappropriated the Blue Jays or rather his trade secrets in those pitching sites. Wayne Stacy 03:01 This sounds like a classic case of cheating, orchestrated by a group that never saw Ocean's 11. This was not well done. Though, it seemed to be effective until they got caught. But how do we go from cheating in a baseball game to a trade secret lawsuit? Sheryl Garko 03:18 Yeah, so the claims are, you know, it's a creative tactic for sure. So the claims revolve around the fact that the pitcher was Michael Bolsinger. Basically, he says that those signals were his trade secrets that meet the definition of a trade secret that they were kept secret

The WSJ unnecessarily attacks Judge Gilstrap's integrity. And the Federal Circuit declares rural America as too inconvenient for patent cases. Does the Federal Circuit even care about In re Volkswagen anymore? SPEAKERS Wayne Stacy, Michael Smith Wayne Stacy 00:01 Welcome, everyone. This is the Berkeley Center for Law and Technology’s Last Week in Texas podcast. I'm your host, Wayne Stacy, the executive director of BCLT. And once again, we have Michael Smith with us, world famous lawyer and legal blogger, and probably the most knowledgeable person about Texas civil procedure and patent cases. With all of that introduction, Michael, we're gonna turn to media first and ask about what looked like an attack piece from the Wall Street Journal last week, presumably talking about judges and their duty to recuse themselves, but really going after Judge Gilstrap in an unfair way. What did you make of that piece? Michael Smith 00:50 When your take on it was the same as mine. The the journal initially had an article talking about how over 100 judges had not recused in cases where the journal thought that they should have because the judge or the judges spouse or a member their family had a stock in, in in a company that was in the case. It pointed out that in most cases, the judges thought that they didn't need to recuse, either because it was in a trust or it was blindly or privately managed. And in the journal says that's not the case. I don't know if that's true or not. But what we saw come out the next day was I thought a pretty clear attack piece on judge Gillstrap. But what was really funny about it to those of us who handle IP cases out there is that they they, they their data analysis showed that judge Gillstraps rulings have actually favored defendants more often than in patent suits nationwide. When you get down to trial, it showed that defendants won more often than they lost at trial. But nationally, defendants lose out almost 60% of the time, which is not news. We all knew this. But it was funny seeing the Wall Street Journal, explain how defendants do better in his court. But they were still trying to claim that there was something improper about about his cases. So it got a lot of attention locally in Texas. But it's just hasn't been our experience. Nobody. Nobody that I know of. And this includes the reporters that wrote the case that wrote the article. I don't think any of them think he ever did anything improper as a result of the ownership. They were simply looking for an excuse to say something bad about him. And and it's unfortunate that they did that, because this is an important issue. This is an issue where the courts, and possibly Congress should look at making sure that this is handled a little more transparently, but they undermine their analysis by taking shots at a judge where nobody thinks that is influencing his opinions. But But again, I had someone asked me the other day, well, where do you go from here is judge Gilstrap going to recuse is he not going to recuse? What happens if he does? I don't know. I had a scheduling conference with him last week in a case where I now know he holds stock in the company that's on the other side of me. I have no intention of asking him to recuse, because I'm very happy to have him here. In my case. If he chooses to recuse or if he decides that he is required to accuse recuse what happens to those cases? Well, most courts have rules dealing with that and the rule in the Eastern District is the cases then go to the other judge, Judge or judges that are assigned to that division. In this case, that means they go to judge Trey Schrader in Texark

Every other week, BCLT Executive Director Wayne Stacy conducts interviews with a Morrison & Foerster team member to discuss the Federal Circuit's recent patent decisions. We all know the basic holdings. The key, however, lies in the nuances of how the Federal Circuit reached its decision. If you want to know more—with an eye toward predicting the future—we have the nuanced information for you. This week, we interview Brian Matsui:Opening the floodgates with SRI? Did the Federal Circuit return willfulness tactics back to 20 years ago? And more Fintiv fallout? The Federal Circuit addresses a possible workaround to what some see as the Fintiv problem. SPEAKERS Brian Matsui, Wayne Stacy Wayne Stacy 00:00 Welcome, everyone to the Berkeley Center for Law and Technology's Expert Series podcast. I'm your host, Wayne Stacy, the Executive Director for BCLT. And today we're here to talk about the Federal Circuit and the recent rulings that are precedential. We have with us one of the nation's leading appellate experts and Brian Matsui from MoFo. Brian also helps drive MoFo's frequent if not weekly blog on Federal Circuit activity. But today, rather than focus on repeating what was in the blog, we want to have a discussion about two particular cases and what they might mean for the future. The first one is the SRI case, which is an incredibly old old case, it's been dragging around since 2013 and we're getting closer to final resolution, not quite there yet. But Brian, tell us why patent litigators should care about SRI. Brian Matsui 01:03 Well, thanks a lot when I'm very happy to be doing this. Sri is a pretty interesting case, both from a process perspective. And from a legal perspective, I think one of the reasons why I thought this case was interesting is it's a comeback case. And you don't see that all that often. It's a case that basically was decided once by the Federal Circuit, and then it went back down, and then it came back up again. And then it was decided again, and you sort of have to feel for the district court in this case. Now there were actually were two District Court judges in there. But the district court basically got vacated or reverse twice in a row on this. And I think the second time the one we're the one we're going to talk about, it may feel not entirely fair that it did actually get reversed.Wayne you mentioned this case, was way back from 2013 when the complaint was filed. The case really is about willfulness now. I mean, I think the thing to talk about is, is the issue of willfulness. This is a obviously it's a patent infringement action that SRI is the patent owner, and they sued Cisco as the defendant. And about five years or so ago, a jury found that Cisco directly and indirectly infringed SRI's patents, and the infringement was willful and awarded $23 million in damages. And then the district court enhanced the damages it doubled them that set up this this first appeal. And the panel was judges Laurie O'Malley and Stoll and judge Stoll wrote the opinion. Now it's a 2019 and in examining the willfulness issue. The panel said that the Supreme Court said in Halo, the sort of contact conduct warranting enhanced damages has been variously described in our cases as willful, wanton, malicious, bad faith deliberate, you know, the characteristics of a pirate. And then looking at the evidence, the court said, they said the evidence wasn't sufficient because Cisco's conduct didn't rise to the level of wanton, malicious and bad faith behavior. And so then it basically sent it back for the district court to decide whether or not it met this standard. So that's what basically was the setup of the case. And then it came back to the

When should you worry that too much advocacy feeds a fee motion? And is the Federal Circuit driving venue and convenience disputes to robust, early discovery? SPEAKERS Wayne Stacy, Michael Smith Wayne Stacy 00:00 Welcome, everyone to the Berkeley Center for Law and Technology's Last W`eek in Texas podcast. I'm your host, Wayne Stacy, the Executive Director for BCLT. And we have Michael Smith with us once again to tell us everything we need to know about last week in Texas. Michael, thanks for joining us again. Michael Smith 00:20 Good to be with you. Wayne Stacy 00:22 Well, let's start with something that many people think is as a mythical animal. And that is a summary judgment of non infringement in the Eastern District of Texas. Michael Smith 00:33 Well, it did catch my attention when it came out. What we got was a summary judgment of infringe of noninfringement or actually a report and recommendation for Magistrate Judge Roy Payne to Judge Gilstrap of noninfringement in a case that was getting ready to go to trial in the next few weeks and martial. But it's kind of an interesting case, it grows out of a case that I actually knew something about because back in the early part of the 2000s, we had multiple jury trials involving this one plaintiff in martial. And the plaintiff has another case getting ready to go to trial. And the defendants in that case pointed out that we had an appeal from that earlier case, where the Federal Circuit said, these claims are invalid. This is not infringement, and and so forth. So the issue here was the defendants came in and said, there's not a tribal issue for the jury, because under the federal circuit's prior decision, there, there's just not an issue. And judge Payne agreed with the defendants and said and pointed out that what the plaintiff was arguing here was, well, the Federal Circuit was wrong, you should disregard what the Federal Circuit said, This isn't what the Federal Circuit meant. So let us get to trial. And Judge Paine wasn't having any of it. He said that that argument is doomed to fail. He said, what you're telling me to do flies in the face of starry decisis, what you're doing is presenting me with a claim construction argument for the first time that should have been raised during claim construction. So he said, binding precedent for the Federal Circuit says that you have to show 1, 2, 3 in order to show infringement. And your evidence in this case, doesn't have 1, 2, and 3. So a very interesting case. And we're looking forward to seeing what judge Gilstrap does when the case gets to hit when the report and recommendation is passed on, which should happen in the next few weeks. Wayne Stacy 02:30 Well, Michael, there was a phrase that Judge Payne used, that seems like it's just fuel for a fee motion later on to say this is exceptional case. But it what's the quote, "binding precedent establishes that such evidence is insufficient." That seems pretty harsh. Michael Smith 02:49 I think you're reading that exactly right. He says repeatedly. And when I was studying this opinion, for my weblog, I kept having to put phrases in quotes, because he's using exactly that kind of language. He's saying, You're asking me to go against starry decisis, you're asking me to ignore binding precedent, you're not just telling me it doesn't apply? You're saying it's so wrong, you just need to not apply it. That's just you can't do that. So I think in that case, you may well be looking at all this feeding into a 285 motion. Now on the road, I think it is not using the term in its legal sense. It is a very exceptional case

Face it, few people read privacy policies. But when it comes to kids' privacy, can we afford not to understand how their data is being used? Will badging systems like those provided by Common Sense Media get us to actually pay attention? More on Jill Bronfman. SPEAKERS Wayne Stacy, Jill Bronfman Wayne Stacy 00:00 Welcome, everyone to the Berkeley Center for Law and Technology's Expert Series podcast. I'm your host, Wayne Stacey, the Executive Director for BCLT. And today we're here to talk about privacy and some of the tools that are there to help the average person deal with the rather complex privacy policies that are out there. So what we all know is privacy and tech doesn't happen by accident. Laws have been put in place to try to help everyone understand what their options are. And yet people still don't know what their options are. We get complex policies that are supposedly simplified. And what we hear is Americans over and over say they really care about privacy, just not enough to read those privacy policies. So with that in mind, what are the options that are available to help us as the country start thinking about privacy in a more sophisticated way, and especially privacy for our kids. So with that in mind, we are incredibly fortunate to have one of the nation's leading thinkers on this topic of privacy, and the realities of privacy as it applies to adults and children. So welcome. We have Jill Bronfman, the privacy counsel from Common Sense Media. Jill Bronfman 01:20 Thank you. I'm glad to be here. Looking forward to talking about privacy and kids and consumer protection and all the things we work on at Common Sense Media. Wayne Stacy 01:29 Well, let's just start with the the high level question, why does Common Sense Media care about privacy? Jill Bronfman 01:35 We care about it, because we care about kids. And I think one of the important things about protecting children is protecting their privacy and their safety and their security. And we're particularly in the privacy group at Common Sense Media focused on the technology that children are using the media that children are using, that includes technology they might be using in the classroom, as students as K through 12 students, or even college students, and it includes technology they might be using at home. Needless to say, in the last year and a half, those two categories are mixed together. So lots of surprises there, due to the pandemic, where kids have been doing school at home and accessing technology like gaming that they might normally only use at home, in schools with a gamification of education. So things have really mixed it up for us in the last year and a half. And we are trying to get a handle on kids privacy, and all of the technology that kids could be using both home and in the classroom. Wayne Stacy 02:44 I'm actually a little embarrassed to admit this. I mean, I've spent my life in technology law, tearing apart contracts, building contracts back up. But I don't pay much attention to the privacy policies that that I'm signing myself or I'm checking the box, I just find them a nuisance, I check and I move on. I know I'm in good company with lots of other lawyers. But when it comes to apps for my kids, I'm very, very thoughtful about it. But it's not easy, especially with the proliferation of school technology. How does Common Sense Media help people like me, and maybe even people that that are going to spend less time to keep up with the the technology and the privacy issues? Jill Bronfman 03:28

Contempt and attorney-fee motions are rarely received warmly by courts. Last week was no exception. And a 101 decision that proves pleadings matter. SPEAKERS Wayne Stacy, Michael Smith Wayne Stacy 00:01 Welcome, everyone to the Berkeley Center for Law and Technology's Last Week in Texas podcast. I'm your host, Wayne Stacy, the Executive Director for BCLT. And once again, we have Texas expert, and all around Civil Procedure expert, Michael Smith with us. Mike, thank you for joining us again. Michael Smith 00:21 Thank you for having me Wayne. Wayne Stacy 00:23 Michael, tell us what happened in Texas last week? Michael Smith 00:26 Well, we had some interesting cases, come out of several districts in Texas, let me start with Eastern District Judge Gillstrap granted a motion to dismiss for unpatentable subject matter. And that's a relatively unusual order. In that the judges usually find that you haven't met the burden on that. But in this case, the court found that the first step was meant that the patent was directed to an abstract concept. But when he got to the second one, he said, there's a clear absence of factual allegations to support the eligibility, the patents in suit. So he said that I'm going to grant the motion and dismiss the case, because there just aren't factual allegations to get you over the finish line and get you in front of a jury on this. But because he said, it wasn't that the defendant met their burden to show that it was unpatentable subject matter. It was more of a 12b6 trombly issue of you just haven't plated it. He said, I'm going to dismiss it but dismissed without prejudice, which is a little bit of an unusual resolution, but at least the defendant got their dismissal. Wayne Stacy 01:40 So it seems like the thing everybody should take away from this is not to get excited that 101 is now alive and flourishing in the Eastern District. But that procedures matter, you need to get your pleadings done correctly, you need to plead the correct facts. And if you don't, you're going to get at least one chance to try to correct your pleadings. Michael Smith 02:02 Right. And I actually had that in a case earlier this week, where a part the judge said, Okay, I think the defendant wins on this and in terms of the plaintiff and says, Okay, do you want to just take the order and take it up on appeal? Or do you want to replea? But he did at least give them a dismissal without prejudice. So you're right of procedure matters. Facts matter. You need to have facts in your complaint, you need to make sure you've got what the court needs in order to give you the ruling that you need. That's the thing we're seeing in the last few weeks. Wayne Stacy 02:37 So Michael, why here dismiss rather than, I guess, encourage them to replea? Michael Smith 02:46 Well, I thought that was kind of unusual, because I have seen before, it's pretty common when you get a defendant that shows that they're entitled to a 12b6 dismissal a plaintiff gets an opportunity to replea. And I guess that is what is actually happening here. It's a dismissal, but it's without prejudice. So they could simply file a new suit and replea, the only procedural distinction is because it's already been dismissed once the plaintiff isn't going to be able to dismiss it again, the next time they asserted a dismissal at that stage would be dismissal on merits. I'm not real sure why he didn't say they can plead. It may have been that in the briefing, it beca

Antitrust claims are difficult to maintain in patent cases. But with the growth of large portfolios—especially through acquisition—the legal landscape could be changing. What do practitioners need to know? More on Samantha Jameson and Aaron Nathan. SPEAKERS Aaron Nathan, Wayne Stacy, Samantha Jameson Wayne Stacy 00:01 Welcome, everyone to the Berkeley Center for Law and Technology's expert series podcast. I'm your host, Wayne Stacey, the executive director of BCLT. And today our topic is the resurgent interest in the intersection of patents and antitrust. We have two leading experts with us today from the tensegrity law firm, Samantha Jameson, and Aaron Nathan, welcome both of you. Samantha Jameson 00:26 Thank you. Aaron Nathan 00:27 Thank you for having us. Wayne Stacy 00:29 So, you know, I've spent my life doing doing patent litigation. And when it came to the the intersection of patents and antitrust, it was always interesting. But it only seemed relevant to a few select people and in just a few select occasions. It seems to be changing now. So what's happening that's making this an important topic today? Aaron Nathan 00:51 That's a great question Wayne. So, from our perspective, the intersection of patents and antitrust really holds a number of pitfalls and opportunities for practitioners and market participants alike. If you're defending against allegations of patent infringement, it's worth having litigation counsel, who are well enough versed in these issues, to know whether they apply in your case and to use them to your advantage if they do. If you're asserting patent infringement, we're representing a party who is, it's equally important to understand the antitrust issues that can arise so that you can avoid these pitfalls, hopefully avoid seeing those kinds of claims asserted against your client, and so that you know how to deal with them if they are asserted. Now, as you alluded to, this is not the most common thing in patent infringement setting. It's non standard. But it does arise repeatedly throughout the years. And it has arisen a number of times in recent years. And in an antitrust climate that is relatively pro enforcement, it becomes especially important to understand the different ways in which antitrust claims can arise in the context of patent infringement litigation. It's an area that sometimes gets overlooked, but practitioners in both fields should know enough about the other field and how the two fields intersect to recognize and address these issues when they come up. Wayne Stacy 02:09 Well, it's interesting, you mentioned that there may be a shift toward pro enforcement, which is why people need to know about this today. So what are the ways that patent litigation can become part of an antitrust claim? Samantha Jameson 02:23 There are actually a number of different ways an alleged antitrust violation can arise in the context of patent litigation. Without giving an exhaustive list we can say it's a complicated topic, largely because the First Amendment generally protects government petitioning activity, including patent prosecution and patent lawsuits. There are a number of relatively well known areas where antitrust claims can arise. You can have claims based on this conduct and the prosecution of later asserted patents and claims based on sham assertions of infringement. In those cases, the normal f

Obviousness proves to be tricky for partial product designs. After the Federal Circuit's ruling, what is the future of secondary considerations? And will the guidance on primary references make it harder to obtain design patents? More on Emily Bullis. SPEAKERS Wayne Stacy, Emily Bullis Wayne Stacy 00:00 Welcome, everyone to the Berkeley Center for Law and Technology's Expert Series podcast. I'm your host Wayne Stacy, the Executive Director for BCLT. And today we're here to talk about the world of design patents and the rule on what qualifies as a primary reference. It seems that the Federal Circuit in the Campbell Soup case gave us unique guidance, things that we don't don't hear a lot from the Federal Circuit. So we brought today Emily Bullis of Fenwick to discuss this. Emily is a patent prosecution expert, with that rare specialty in the prosecution of design patents in both the US and abroad. So welcome, and thank you for joining us, Emily. Emily Bullis 00:44 Morning. Thanks, Wayne. Thanks for having me. Wayne Stacy 00:46 So, you know, maybe we start with a little bit of a negative question here. But how did the PTab get it so wrong? Emily Bullis 00:55 Yeah, so I think we need to look at this in the wider context of how the PTO handles design patents, the allowance rate for designs is is incredibly high. I think the most recent number I saw on the PTO website was something like 85%. So for the most part, these these applications are not receiving art rejections, when we do get pushback from the examiner, it's usually on, you know, minor drawing inconsistencies, or, or wanting a fix to the broken line statement. But for the most part, we're really just not seeing art rejection. So these cases are getting allowed very regularly. I also think it's a little trickier in this case, than normal, because these these two patents at issue are for multi article designs, which is fairly unusual as well. The drawings both show this this soup dispenser that you might see in the grocery store, as well as a portion of the can itself this this cylindrical object, but not all of that is claimed, there are a ton of broken lines here, which which indicate unclaimed subject matter. And in each of the patents, the area that's actually claimed is it's it's really minor, it's just some vertical lines in the label area. It's a portion of the cylindrical object. And in one of the two patents, it's these these little tabs that are keeping the can in place. So I think coupling the fact that this is a multi article design, with the large number of broken lines here kind of creates even more ambiguity than there is for for more straightforward products. It makes the scope of the design patent harder to parse. Wayne Stacy 02:39 Let me bring everyone up to speed on something that's pretty fundamental. And that's really the the guard for issuance of both utility and design patents. And that's obviousnes

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

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

In an unusual move, the USPTO went to the Federal Register with a reminder on how to address prophetic examples. What does this guidance mean for those that rely heavily on translations? And how will this standard work its way into District Court litigation? More on Jenny Chen and Ewa Wojciechowska. SPEAKERS Ewa Wojciechowska, Wayne Stacy, Jenny Chen Wayne Stacy 00:00 Welcome, everyone to today's episode of the Berkeley Center for Law and Technology's Expert Series podcast. This is Wayne Stacy, the Executive Director for BCLT. And today we're going to talk about some unusual guidance the USPTO issued on the use of prophetic examples. To help us through this discussion, we have two experts from McDermott Will & Emery, we have Jenny Chen, a partner in the Boston office specializing in life sciences, and really kind of all aspects of the the IP world and life in life sciences, including prosecution, counseling, and diligence work. We also have with us, Ewa Wojciechowska, the author of a recent article on prophetic examples, and part of the IP litigation group, it was actually her article that created a lot of interest in this topic and got it out in front of a lot of people probably got it out in front of more people than the actual Federal Register did. So with that in mind, let me start with the first question. And that's that the fact that the USPTO took the unusual step, and published a warning to patent prosecutors in the Federal Register. And you know, it's it's a pretty stark warning, with the language that's used, the USPTO is reminding applicants. And when I went back, and I looked through the Federal Register, that's not what they typically put out there. They don't remind applicants in this kind of formal way. So my question is, why did the PTO need to go down this path of a formal warning? And why now? Jenny Chen 01:45 So I can share my thoughts on that the I assume there are more and more prophetic examples being presented in pan applications, specifically, after the law change back in 2013. I mean, prophetic examples have been used in pan applications over time, but in the past, the, when an applicant does not have real working examples, some of the many cases they will decide to push back the filing until they get enough data. However, after AIA, the law change on US is now also in the first inventor to file the ration. So really, the founding data does matter. And it's more like a race to file applications with the USPTO. And under this new, the the structure filing structure, people would tend to file early. And in that case, the inventors may not have enough time to collect enough data and present real world examples. So the alternative is really to present the prophetic examples. And during prosecution, I mean, prophetic is so like in the past that we don't see examiners question whether, you know, you have prophetical real working examples, and the examiners could rely on those to assess like a utility enablement requirement. However, when you have more working via the prophetic examples presented, it does raise the question as to whether the inventor actually had possession or had enabled the the invention they tried to claim. And if it's not clear to the examiner, whether you have real working example versus prophetic example, it will be hard for examiner to make decision on things like this. Wayne Stacy 03:49 The PTO went further than the warning and gave some best practices, which I assume was a collection of examiner complaints about different applications that had bubbled up. Things like using the proper verb tense, which is a pretty speci

A pair of unusual cases gives us a roadmap for invalidity and inequitable conduct standards. Judge Albright shows us that he will hold parties to their promises. And we learn more about the boundaries of privilege waiver. 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 for the Berkeley Center for Law and Technology Last Week in Texas. I'm Wayne Stacy, the Executive Director for BCLT. And we have with us today, Michael Smith, from Scheef and Stone and the author of the famous ED Tex Blog. So Michael, tell us what we need to know about Texas last week. Michael Smith 00:25 Well, in the last week since we spoke last, we've actually had a couple of patent trials in Marshall. The first one was a repeat plaintiff. It's a plaintiff who had a trial a few years ago, and he had another case against a group of wireless providers. The defendants were AT&T, Sprint, Verizon, and T Mobile, and it had to do with their use of HTC phones. The jury and Judge Gilstrap for court found that the claims were valid, but that they were not infringed. And that was after a six day trial. The other martial jury verdict came shortly after that, and that was actually a retrial on damages. In the Panoptus case, that case was brought by Panoptus against Apple. And back in April Judge Gilstrap set aside the original damages verdict in that case, which was $506 million. Wayne Stacy 01:23 So Michael, conventional wisdom is be careful when you ask for a retrial on damages when liability has already been determined. What what happened here that that gave somebody the boldness to seek a retrial? Michael Smith 01:37 Well, actually, they didn't. This came from the court. I mean, of course, Apple, Apple had lost on liability, they had lost on damages. And they asked for that to be set aside and to have a new trial. That wasn't what was granted here. Judge Gilstrap set aside the damages verdict on his own, because of his concern, after watching the trial that the parties never addressed, what a fair and reasonable licensing, right would be. And he said in the order, I realized that both sides had tactical reasons for not bringing this up. But when we got to the end of the case, and I could see what the evidence was, I think you were you were missing a key part of the damages analysis when you're talking about patents that are supposed to be essential to technical standards, and the jury really didn't have what it needed. So it was Judge Gilstrap that said, I'm not setting aside a liability verdict, but we're going to have a retrial on damages. Now, you raise a very good point, it's very dangerous to have a damages only retrial. I had one of those with Judge Mazzant April of this year, and it was not fun experience at all, on the defense side, and we have had some other damages retrials and martial. And generally speaking, the defendant does works on a damages retrial. So this is a little little out of the norm, that the verdict against Apple dropped from 506 million to $300 million. Wayne Stacy 03:02 Well, anything else out of the Eastern District of Texas last week? Michael Smith 03:06 Well, yeah. Again, going back to the first case I talked about about the wireles

Arthrex grabbed headlines, but will it actually be a useful tool for PTAB oversight? Will the USPTO Director be willing to take a hard look at PTAB decisions? And what can we expect from a new Director? More on Nimalka Wickramasekera and Juan Yaquian. SPEAKERS Wayne Stacy, Juan Yaquian, Nimalka Wickramasekera Wayne Stacy 00:00 Welcome 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 talking about Arthrex. And what we can expect going forward. I'm here with two attorneys from the law firm of Winston & Strawn that are both leading experts in patent litigation and PTab litigation. We have Nimalka Wickramasekera, she's a senior IP trial litigator specializing in life sciences and the medical device sector. And also we haveJuan Yaquian. He's an IP litigator specializing in PTab, litigation and PTab practice. I want to thank you both for joining us today and helping us look into the future and figure out what Arthrex may mean for us. So starting with you, Juan, I wanted to ask you, does any of this make a difference? We've been fighting about arthrex for over a year. And the Supreme Court finally gave us an answer and gave us the director review process. But the real question is, does any of it matter? Juan Yaquian 01:12 No. And I think that's that was, so the short answer is probably not there, this probably isn't going to make a big difference to the way parties approach the PTab and you know, probably isn't going to make a big difference. And one of the main reasons why probably doesn't make any difference to the way parties are going to approach PTab is because most parties and most people don't believe that this, what came out of the US Supreme Court's Arthrex decision is going to result in a big difference. A big difference being seen at the end of PTab proceedings. And I think that's the view probably there's a general view that most likely one we don't really see the director probably stepping in to overturn the board and we don't see the director being too involved. And so there's quite a few reasons why we probably see they're and they're really just practical reasons. I think, you know, if you look at this, there's a ton of activity going on at the IPR, there's hundreds of PTab judges alone, just to handle the entire PTab docket. And now to expect that one director is going to be able to go through with a fine, fine, detailed review and be able to identify issues to to pick up on review, I think nobody really expects that you would be able to do that. And at the same time know, the Supreme Court doesn't really even say that, the director has to do that the director just has to have the ability to review. And so just the volume alone of what's going on at the PTab we no one really expects the director to really be stepping in and cause any major disruption to the results of the what's going on at the PTab. And we also think about the the just the social aspects of the fact that the director is dealing with colleagues. And he doesn't also want to undermine his the the administrative pen judges of the USPTO. They want to support you know, the the staff, and all these administrative judges and the detailed work they do because in the riving edit boundary This is because we have to remember that really the the director review is only going to come into place after a final written decision. And to arrive at that final written decision. These PTab judges spent a lot of time detailed consideration to arrive at these final room decisions hearings went

How far is too far when it comes to hiding the truth? Should companies be prohibited from reporting factual, public information? The differences between the EU and the US illustrate the fight for disclosure vs. the fight for privacy. More on Ted Claypoole. SPEAKERS Wayne Stacy, Ted Claypoole Wayne Stacy 00:00 Welcome, everyone to the Berkeley Center for Law and Technology's Expert Series podcast. This is Wayne Stacey. I'm the executive director for BCLT. And today we have Ted Claypool from the law firm of Womble Bond, Dickinson . Ted is based in Atlanta. And he's here today to talk to us about a really interesting concept and a set of phrasing that he's been using in the privacy world. So, with that in mind, Ted, thank you so much for joining us. Ted Claypoole 00:32 Thank you for having me, Wayne, I appreciate it. Wayne Stacy 00:35 Well, Ted, we've we've heard for a long time about the right to be forgotten. But you wrote an article that was really thought provoking that talked about the right to hide the truth, is what that really should be titled. Tell us tell us about that phrasing and how you came about it? Ted Claypoole 00:54 Well, I've been thinking about the right to be forgotten for a long time, I'm a privacy lawyer, I do a lot of work in this space, both in Europe and and in the US and back and forth. And it's essentially a European concept, the right to be forgotten, that is starting to move over here. Although I'll be interested to see how much foothold it gains in the US, given our different laws and our different views on forgetting truthful things. The people that advocate for it, have always called it the right to be forgotten. I've also heard it as least when you're talking about business, the right to be deleted, from people's records. But the truth is, the way it is used is essentially the right to hide the truth from people. Now, I make that distinction because we have laws here just like they do in Europe, that say if people tell lies about you, online or elsewhere, you have a number of rights in order to pull those down to sue those people in defamation cases, and to make sure that you can prove to the world that those things are lies. However, this is a whole different discussion because what Europe has been looking at very closely here is the right to take something in your past that actually happened, and then remove it from the public record. Now, there's lots of us that would like to do that. I know that, you know, I'm very glad that I'm an old guy. And that when I was a teenager and a 20-something I wasn't on the internet. So there's not a lot of record of me, saying things that I probably shouldn't have been saying. And that would come back to haunt me later on. However, saying and doing things in the past, are are things that can come back on you. And we in this country in particular, think that it's important that people are able to get as much information as possible so they can make a decision about someone. And if somebody saw things I said or did in the past, and said, "Boy, Ted's an idiot." I mean, first of all, they may be right. And second of all they have in this country in general, they have the right to look at that information, and try and make that decision. Wayne Stacy 03:30 Well, to put things in context, tell us how the this right to be forgotten, I'll use the the original name, how it came about, and kind of what the original facts were that that brought it to the public's attention? Ted Claypoole 03:44 We