Podcasts about bclt

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

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

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

Trademark and copyright are important areas of Intellectual Property. Career paths, however, are less obvious than in other areas of IP. How, or should, you pursue a career in trademark and copyright law? More on Olivia Poppens and Dennis Wilson! SPEAKERS Olivia Poppens, Wayne Stacy, Dennis Wilson Wayne Stacy 00:00 Welcome, everyone to the Berkeley Center for Law and Technology's Career in Tech podcast. I'm your host Wayne Stacy, the Executive Director for BCLT. And today we're talking about careers and trademark and copyright law. So often when people talk about IP, they immediately gravitate toward patents. Trademarks, copyrights, brand protection, content protection are incredibly important areas of the law, and they just don't often get the attention that they deserve. And to talk about these important areas of the law today, we have two experienced attorneys from Kilpatrick Townsend and Stockton joining us. We have Dennis Wilson. Dennis is a partner at Kilpatrick and Townson. And we have Olivia Poppens, who is a Berkeley alumni. So welcome to both of you. Dennis Wilson 00:50 Thanks. Olivia Poppens 00:51 Thanks so much for having us. Wayne Stacy 00:52 So Dennis, what we'll start with you, maybe the best way to explain what a path in brand protection content protection looks like is to tell us what your typical day looks like, what kind of cases do you handle? Dennis Wilson 01:05 So I think goes back to understanding that area of the law a little bit. Copyright law, for example, protects artists expressions. And so the idea is that if you create a song or a video or a book, that we want to encourage that kind of creative output. And so we give those artists the chance to control how that content is distributed. And so you want to, as a society, protect those artists rights. And then at the same time, most of the people listening want to be able to take a clip of the TV show they're watching and text it to their friend or post it online, and they don't want to pay for it. And they want immediate access to everything. And so we have this, this constant balancing of artists rights and users rights. And we see that play out all the time in our clients work. So we look at a filter that's going to be pushed out and developed for a social media platform. And we think about the balancing of does this infringe anyone else's rights? Or does it parody anyone? And is that okay, from a First Amendment protection kind of standpoint. Daily process that we go through is looking at the underlying rights that may be implicated by a new product or service that's being offered, or a new name, or title of a, of a product or movie, and trying to decide whether or not it's fair to use it, or whether it impinges the rights of others. And so it's a constant balancing. And that could be just in advice and counseling and giving people a gut check on whether or not something should go through, or it could be a full kind of litigation analysis. And sometimes that those are the kinds of disputes that we end up litigating, but at their core, it can be, you know, five minute phone calls, two years long litigation, but it all kind of comes down to the same thing. Wayne Stacy 03:09 Did I say I'd love to hear a little bit more about that, that point that in your practice, you end up doing counseling, and a fair amount of counseling, in addition to litigation, where some people may think litigators are just litigato

Patent prosecution and patent litigation are very different career paths that broadly fall under the heading of “patent attorney.” How do you know which one is right for you? More on Neslihan Doran-Civan and Ruthleen Uy! SPEAKERS Ruthleen Uy, Wayne Stacy, Neslihan Doran-Civan Wayne Stacy 00:00 Welcome, everyone to the Berkeley Center for Law and Technology's Careers in Tech Podcast. I'm your host Wayne Stacy, the Executive Director of BCLT. And today we'll be talking about the different paths for becoming a patent attorney, and what the actual work of a patent attorney day to day looks like. We have two experts from Kilpatrick, Townsend and Stockton. Joining us today to help us understand what these paths look like. We have Neslihan Doran-Civan. She's a partner at Kilpatrick and Ruthleen Uy, who is senior counsel at Kilpatrick. Townsend. Thank you both for joining us and welcome. And before we talk about patents, I wanted to actually set out some terms. We talked a little bit before the recording started about what the term patent attorney means to different people and in different firms. And what I wanted to remind any the students that are listening is you got to ask when people say patent attorney, are they referring to the license? That you just you're just been approved to practice before the USPTO? Or are they talking about a particular branch within the patent practice like patent prosecution, you always have to ask, because firms are different. So with that in mind, I think both Ruthleen and Neslihan would describe themselves as patent attorneys. And I was going to ask you to kick off this this discussion by telling us what what are your days looks like? Neslihan Doran-Civan 01:32 Alright, so I'll go first, this is Neslihan, the typical day would include two main tasks, I would say. One would be drafting a patent application. And the second major task is responding to Office actions that you receive from the patent office. And when we open these two boxes, the patent application preparation will include, obviously this all of them may not happen in a single day, you will talk to the engineers about their ideas that they came up with this invention. So that's when your engineering side kicks in. Right. So you have the technical background, speak the language with the inventor. So when you get your details, then it's pretty much on your own, you draft your patent applications, you may start with the different sections. So I'm not going to go into the details of that there is usually a preferred way or you can develop your own preferred way. And once you have your application filed with the USPTO, and then you sit tight for a few years, and then you get your first office action. So at that point, that's our second box, second tasks, set of tasks when you this office action comes in, there are references cited in there, which requires you to kind of review them again, your engineering background comes into play. And then you identify the differences with your application and this references and prepare a response to the patent office. A part of that also may include interviews with the examiner's so you call up the examiner to discuss the case. And then it becomes a negotiation at the end of the day. And if both sides agree what is the distinction is that needs to be captured in your claims in your application. And hopefully your application that will proceed to allowance. Wayne Stacy 03:26 So Ruthleen I'll get this question to you. And both of you are very senior and very expert level. In your practice. How does your practice day to day

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

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

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

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

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

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

How can you best preserve the option of pursuing an academic career? What courses and jobs should students be thinking about? More on Peter Menell and Andrea Roth. SPEAKERS Wayne Stacy, Peter Menell, Andrea Roth Wayne Stacy 0:00 Welcome, everyone to the Berkeley Center for Law and Technology's Careers in Tech podcast. I'm your host, Wayne Stacy, the Executive Director for BCLT. Today, we're going to be able to talk about academic careers, and what you need to do to at least prepare for getting to an academic career at some point. We have two of the leading professors in the country with us today and two of the BCLT faculty co-directors, Andrea Roth, and Peter Menell. Thank you both for joining us. Andrea Roth 0:31 Thanks for having us. Wayne Stacy 0:32 First thing I wanted to talk to you about is really the full scope of your work. When people hear "professor" they think "teacher", and there's so much more to what you do then get up in the morning and teach a class. I know that's an important piece of what you do. But there's a whole lot more. So can you let people know kind of the full scope of your work? Peter Menell 0:51 My career, I think is mostly about public policy that entails doing research, working with legislative and administrative agencies, and trying to prepare students who are going to go out in the world and work and hopefully promote better public policies. That was my goal. I never went to law school to be a lawyer, I was doing a multidisciplinary academic preparation. It's only after I became a professor that I got involved in consulting and expert work. And that exposed me a lot more to what lawyers do. I did clerk, which gave me a very good bird's eye view. But my real focus is trying to improve public policy. Andrea Roth 1:37 And I would say my focus is, you know, I was a public defender for many years before going into academia. I'm not a practicing attorney with clients anymore. But I'm hoping to improve outcomes in the criminal system, especially as technology changes it every day. And so to answer your question directly, what do I do all day. And it's not just teaching, but it's consulting with lawyers on the ground and learning what's going on on the ground in real courtrooms. It's doing research, including historical research on how technological advances have been dealt with in the past by the legal system and learning from the lessons of the past. It's service, I serve on a legal task group of the National Institute of Standards and Technologies, organization of scientific area committees. So I actually work with scientists on the ground, to think of legal issues that are going to come up and how labs should be doing forensic work on the front end. Then everything in between. Service for the University Press inquiries, mentoring students who are interested in this work. It turns out to be a lot more than just prepping for class. Wayne Stacy 2:50 The reason I was excited to have the two of you is because your careers to the academic or your past the academic world are very different. You know, Peter was dedicated to that path from day one. And Andrea, you went through a career and then came to the academic world. And both of them have been very, very successful. So I guess I would start that discussion for people that are thinking they might want to be a professor, or move into the academic world, is one path better than the other? Peter Menell 3:21 I will say that, although I would have answered the question, what do you want to be doing 30 years later, when I was in law school to say that I would be sitting here at a university doing the kind o

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

Trademark and branding practices offer attorneys a unique blend of transactional and dispute-resolution work. What types and sizes of clients can an attorney in this practice area accept to work with? And how can attorneys get involved with both transactional and dispute-resolution work? More on Charles Bahlert and Lisa Greenwald-Swire. SPEAKERS Wayne Stacy, Charles Bahlert, Lisa Greenwald-Swire Wayne Stacy 00:00 Welcome, everyone to this week's Careers in Tech Law podcast series from the Berkeley Center for Law and Technology. I'm Wayne Stacy, the Executive Director for BCLT. And we're lucky today to have two of the nation's top trademark and branding experts here with us. We have Lisa Greenwald-Swire and Charles Bahlert, both from the law firm of Fish and Richardson. So I'm just going to throw the the first question out to you to help us understand what's going on. But it seems like when we talk about brand protection, there are really two parts to this story. You know, one of them is creating new brands, and the other is protecting existing brands. So at a high lawyer, what are sorry, at a high level can what our high end lawyers doing in this two part brand protection space? Lisa Greenwald-Swire 00:55 Sure, I'll start and then Charles, you could dive in with anything that I've missed. Wayne, first of all, thank you very much for your time. It's a true honor for us to be here and be able to speak with you today. So what are brands doing to make sure that their new marks are being protected? Was that the question? Wayne Stacy 01:15 Yeah, the new mark protection and then old mark protection. Lisa Greenwald-Swire 01:22 Yeah. So I mean, the general answer, on a high level is clearance searching. So there are a lot of smaller firms out there that will say, Oh, yeah, we'll do this search for, you know, $95. And essentially, what they're doing is going to uspto.gov and Googling sort of doing a direct hit. A real trademark search really goes through all the likelihood of confusion factors goes through sort of similar equivalence, and meaning and commercial impressions, swapping out vowel sounds, really getting to the core of where there could be an issue, either in prosecution of the mark at the trademark office, in the US or globally. We're thinking of meaning, like the iconic Nova, no-go can't go for a car is not such a great brand. We're really thinking through all the issues and meaning and commercial impression and making sure that once we've cleared it, we're really filing it in all the countries where the client thinks they may have business in three to five years. And even defensively in some countries is sort of have this acronym of BRICK, which is Brazil, Russia, India, China, and Hong Kong. And we've seen a lot of enforcement infringement issues in those countries. So those are some key countries. Defensively, we're we're counseling clients to file as well. Wayne Stacy 02:50 Go ahead, Charles. Charles Ba

Tech impacts almost every major company. New types of disputes and problems are constantly arising—all of which present opportunities for general litigators with a broad understanding of the regulations and laws impacting tech. What can the new attorney expect, and how should they prepare? More on Mike Whalen. SPEAKERS Wayne Stacy, Mike Whalen Wayne Stacy 00:00 Welcome, everyone to the Careers and Technology podcast from the Berkeley Center of Technology. I'm your host, Wayne Stacy, the Executive Director for BCLT. And today, we're fortunate to have Mike Whalen from Paul Hastings with us. Mike is an attorney in the litigation department of Paul Hastings, specializing in general litigation with most of his clients in the tech space. So he gives us a really interesting view of how litigation is impacting tech companies and how to get ready for a career in that. So Mike, let me let me start with the idea about, you know, General litigation versus specialty litigation. You know, what should what should a student be thinking about? Mike Whalen 00:49 So I think, for a student, and when it's great to be here, and to talk with you, and hopefully help students figure out what they potentially want out of their career, especially those looking at litigation, which is what I'm familiar with, and students thinking about, it should really think broadly, I think about, you know, what they enjoy what led them to go to law school. And what led me in particular down the path of general litigation is really the notion of problem solving, and being able to think through problems across different industries, across different procedural matrices, whether you're in court or out of court, and maybe a post judgment proceeding. And I think that's really the skill of a generalist litigator, the ability to see a lot of industries see a lot of problems and see a lot of areas of the law. And if that's something that interests students, then they should really think hard about being a general litigator, because I do think there's a general shift, in this day and age you're either hyper specialized, or there's a real emphasis in larger firms like Paul Hastings, on having a broad base of skills as a generalist. Wayne Stacy 01:53 So that's a it's an interesting point about being hyper specialized. You know, I spent nearly all of my life doing patent litigation, which would be that hyper specialization, and not a lot of other things. 20 years ago, people said that, well, General litigation is dead. In big firms, you've got to be hyper specialized. But it seems to be drifting back towards the two specialization, you know, specialization and general litigation coexisting very, very well. Mike Whalen 02:25 Yeah, I think that's right. And I think that's the nature of where legal practice, again, at firms like Paul Hastings and other firms that you've spoken with on the podcast, I think that's where it's headed, in that, in general, the practice is driven by our clients hardest problems. And for some of our clients, particularly say, in the biotech space or in the pharma space, those hardest problems will consistently recur in the IP space. And there's absolutely an area for that hyper specialization. And you do see that a lot. But in other situations, our clients hardest problems change day to day, week to week, month to month, and that really cries out for a generalist who both can react to those problems, but also know when it's time to collaborate and work with specialists. And I think more often than not our teams, particularly in traditional specialist fields, such as antitrust, you're r

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

Emerging companies typically need a combined legal and business advisor. Junior attorneys in emerging companies practice get access to clients early in their career and are often thrust into the critical advisor role. What does a typical day look like, and how can you best prepare to support an emerging company? More on Avi Emanuel and Lianna Whittleton. SPEAKERS Avi Emanuel, Wayne Stacy, Lianna Whittleton Wayne Stacy 00:00 So welcome everyone to the Berkeley Center for Law and Technology's Careers in Technology podcasts. I'm Wayne Stacy, the Executive Director for BCLT. Today we are talking about how lawyers help with funding in managing early stage innovation companies. And I'm here with two attorneys from Wilson Sonsini, Wilson Sonsini handles a tremendous percentage of the emerging company work on the west coast, really among the great pioneers in this field. And we have two of the leading experts from Wilson. So this is a great podcast. We have Lianna Whittleton, she's the partner specializing in advising early stage companies, and in handling IPOs. And we have Avi Emanuel, a corporate attorney specializing in early and mid stage companies and equity financing. So before we talk about what the practice of law looks like, in the, in this emerging company space, tell us a little bit about what your practice looks like from day to day, week to week. Lianna Whittleton 01:06 Sure, so I'll go ahead and take that first. As, as Wayne said, I have a bit of a broader practice, which has actually been very interesting to me. I think the core of what you think about when you are a corporate attorney is that you are a service provider to your clients. And your entire goal is to help these companies grow, build, develop and succeed. And so at Wilson, what that tends to mean is you get staff on a company, you develop a relationship, and then you support that company through their entire lifecycle. And what that often means is you are doing whatever it is your company needs you to do. And so depending on what clients are staffed on, when you start what's going on economically, that can actually change what your day to day client base looks like. In my case, I started over 10 years ago now. And I started working just with exclusively, early early stage companies two kids in a garage, right, your classic quintessential startup. And so what that meant is I was often doing board consents, right, a lot of the housekeeping in creating a corporate entity, and making sure that that functions from a legal perspective, forming the company. Doing the board and your stockholder approvals, granting equities, we did a fair amount of offer letters, because often new companies are hiring people as they get started and ramp up. And then over time, that starts to expand. Right. Um, one thing to understand as a student, that's always not clear is corporate attorneys tend to do the back office work. So what that means is we are more focused on the corporate structure and not the business itself. So we don't do licensing agreements, we don't do commercial arrangements, right, we do the fundraising, we do the the equity on the back side of how that company grows. And so I think it's contracts writ large, but often a very different type of contract. As your company grows, the types of things you're looking at on that back end, will start to change as well. And so you move from one on ones with your founders doing offer letters, doing board consents to more complicated transactions, that can mean your debt financing your bridge or your stakenotes, that it means seriously financing, it can mean the series A financing. And the longer

Life sciences legal work is generally booming. But what about life sciences patent litigation? And if you are interested in this career path, what type of technical background is required? The answers may surprise you and open up new opportunities. More on Priya Patel and Derek Walter. SPEAKERS Derek Walter, Wayne Stacy, Priya Patel Wayne Stacy 00:01 Welcome, everyone to the Berkeley Center for Law and Technology's Career Series podcast. I'm Wayne Stacy, the Executive Director for BCLT. Today, we are talking about the types of litigation work needed by Life Sciences companies, and in particular, talking about what patent litigation looks like for Life Sciences companies. So I'm here with two attorneys from Weil that are both leading experts in patent litigation, we have Derek Walter, he's a patent partner focusing on patent litigation in both the biological and chemical areas. And then we have Priya Patel. She's an attorney in the patent litigation practice also focusing on the life sciences areas. So thank you both for joining us today and describing a little bit about your practice. Derek Walter 00:49 Thank you. Wayne Stacy 00:51 So I want to start with, you know, the life sciences, patent litigation is a very specialized practice. Can you tell us a little bit about what you do day to day and what your practice would look like? Derek Walter 01:04 Sure, I'll go ahead and start. day to day what you do as a patent litigator, it changes over the course of your career. When you start out as an early associate, you do a lot of case building, you do a lot of analyzing prior art that might relate to patents in the case, you do a lot of analysis of the products that are an issue in the case, you do spend some time looking at documents that might be relevant to the case, you draft a lot of briefs you do spend some time doing discovery, drafting, interrogatory, ease, responding to discovery requests, drafting requests for admissions, you do a lot of that fairly often. And as you get more senior, you know, the tasks change a little bit, you know, you end up being more of a manager, you spend a lot more time doing a lot more emails with clients and other associates that are part of your team, you take on some more executive advanced skills, you know, you might spend a lot more time doing depositions, you probably spend a lot more time arguing in court. You spend less time doing kind of the work that you did early on. But, you know, those are the main tasks that go on. And on a day to day basis for patent litigator Priya might have a slightly different take on it. But that's my take. Priya Patel 02:26 No, I agree. I think it's coming from as I'm a mid level associate at this point. So I'm kind of seeing that transition happen slowly. So definitely, when I was more junior associate, it was more research assignments, building, the record generally as Derek's talking about and I continue to do that sort of thing. But now it's more drafting responsibilities. Specifically, I also, I started out Weil and then I left to go to a clerkship and then I returned to Weil and I think since my return, I've been used often to draft briefs and memos, things like that, which I thoroughly enjoy. So I hope that continues even as I get senior, but my day to day sounds a lot like what Derek described. Derek Walter 03:07 One thing I think is worth adding on this point that I think is true of patent litigation, regardless of what stage you're at i

General litigation for social media companies requires a broad skill set and offers exciting variation--from privacy to copyright to class action defense to breach of contract. What does it take to prepare for this type of breadth? More on Kathryn Cahoy and Kanu Song. SPEAKERS Kanu Song, Wayne Stacy, Kate Cahoy Wayne Stacy 00:01 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 focusing on careers in technology. And in particular, we're talking about the types of legal work needed by social media companies. I'm here with two attorneys from Covington that are both leading experts in what I'm going to leave as the teaser here in helping social media companies, but I'm going to let them explain exactly what that means because the phrase carries a lot of different meaning to a lot of different people. So with us, we have Katherine Cahoy, who specializes in complex commercial litigation, including antitrust privacy, and consumer protection, and Kanu Song who specializes in complex commercial litigation, including class actions and consumer protection. So before we talk about generally what the practice looks like in the social media space, I'd love for the two of you to explain just what your practice looks like day to day in the technology field. Kate Cahoy 01:13 Sure, hi, Wayne, I can go first. This is Kate Cahoy. I am a litigator and I have practiced since since I began in private practice in Silicon Valley. So and with a heavy emphasis on tech companies. So I have kind of created my specialization in class action litigation. But there are lots of different types of class action litigation that are prevalent in, in this area and for tech companies in general and social media companies as well. So I have done, you know, the heavy component of privacy type issues that are privacy class actions, anti trust and other types of consumer class actions, things. For example, claims brought under California's unfair competition law, claiming that you know, a statement was misleading on a website or you know, something related to that. Wayne Stacy 02:16 How about you Kanu? Kanu Song 02:18 So I am like a litigator, I am actually in general commercial litigation, most of the time, I'm a generalist by choice. So, I do all kinds of litigation, but because my practice is based in San Francisco, a lot of my clients do tend to be tech companies, including social media companies. And in that space, the substantive work that I've done has been in intellectual property, privacy, class actions, and contract disputes the classic breach of contract, but also like state law claims that's sort of tail off to that. Wayne Stacy 02:54 So maybe, to broaden out a little bit, you know, when people think about social media companies, class actions, and consumer protection, maybe don't come to mind, at least aren't the first thing that that comes to mind. Can you explain a little bit about what those practices look like, for a tech company or a social media type company? Kate Cahoy 03:17 Sure, so I think, you know, for many companies that are growing or, you know, either now are fairly successful, or getting to that point, I mean, class action litigation is sort of a risk and cost of doing business and, and I for a lot of different companies. So I think it's something that that many companies face in, you know, they're some of th

With the fall of Privacy Shield and the Safe Harbor program, what can we expect for the future of transatlantic data transfers? Can the EU and US work out a trade deal? More on Lothar Determann. SPEAKERS Wayne Stacy, Lothar Determann Wayne Stacy 00:00 Welcome, everyone to the Berkeley Center for Law and Technology's Experts Series podcast. This is Wayne Stacy, the Executive Director for BCLT. And today we're going to talk about the future of transatlantic data transfers. And we have with is one of the great experts in the field, Dr. Lothar Determann. Doctor Determann or I'm gonna go with Lothar for now was or is a professor, I guess lecturer is the right title. But he's a lecturer since 2004 of computer law and data privacy at Berkeley Law. And since 1995, he's been a tenured professor in Germany. So he brings expertise on the academic side from both sides of the Atlantic, if you look at his publications, Determann's Field Guide to data privacy law in California privacy law, practical guide and commentary. He's actually teaching out of that this semester. And this semester, or next semester, he's got the California privacy law course that he'll be teaching at Berkeley Law. So actually, if you go through the whole list, we can spend the 15 minutes talking about the scope of all of his work, but I'll just leave it at this: he knows a lot about transatlantic data transfers. So thank you for coming today. Lothar Determann 01:29 Thanks for inviting me, Wayne. Wayne Stacy 01:31 So what I want to turn to first is the fact that there seem to be some large finds coming out of out of Europe these days, and a slow eroding, or maybe a fast eroding of some of the shields that we used to have. So the Privacy Shield went down, you saw the Safe Harbor program go down in 2015. And now you're starting to see these new standard contract contractual clauses coming out. The real question about all of this is people get nervous is what does this mean for transatlantic data transfers, and in what's the big picture going to look like over the next few years for for US companies. Lothar Determann 02:14 For US companies, the biggest challenge has been that the general data protection regulation has extended and clarified the realm of applicability to some US companies, but also that European companies are under evermore pressure and transferring personal data to the US. European Union is a trade zone Originally, it was called the European Economic Community when they started looking at harmonizing data protection law. And the main goal was to make it easy for companies to cooperate within the bloc and transfer data across borders. So the official title of what is now often referred to as the Data Protection Directive was really about the free flow of data in Europe. And it was kind of a compromise to say, if we're all trusting each other with data, the Germans and the Spaniards and the French and the Brits at the time before Brexit, then we do need to have a prohibition from just transferring it onward somewhere else. And that was in the directive of 1995. That was there to allow more Corporation more sharing more flow within Europe. And this prohibition of transferring to the US wasn't a real big deal in the first years, because there was a general understanding that the US has privacy laws, too. And the commission worked out a compromise where US companies could sign up for a voluntary program, the Safe Harbor program, and commit to basically complying with the European rules. And then European companies could share data with them, just as if they were in Europe. But after the Snowd

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

The Federal government is joining the state attack on unfair non-compete agreements. With the FTC preparing to draft new rules limiting the use of non-compete agreements, what should companies be considering and how can they get involved in the rule-making process? More on Christopher Cox and Joe Spoerl. SPEAKERS Wayne Stacy, Chris Cox, Joe Spoerl 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 talking about why President Biden raised non compete clauses in his recent executive order. I'm here with two attorneys from Hogan Lovells that are both leading experts in trade secret litigation, both California and across the country. We have Chris Cox, and Joe Spoerl. Welcome to both of you. And thank you for joining us today. Chris Cox 00:34 Thank you, Happy to be here. Joe Spoerl 00:36 Thanks for having us. Wayne Stacy 00:38 Well, let's start with the executive order itself. You know, President Biden's executive order asked the Federal Trade Commission to curtail the unfair use of non compete clauses and other clauses or agreements that may unfairly limit worker mobility. So with everything going on right now, why are noncompetes so interesting that the White House would get involved? Chris Cox 01:04 If you listen to the Biden administration, the president from the very beginning of his administration has said that he's looking out for lower wage workers and blue collar workers so they could have good paying jobs. And if you look at the National landscape, non competes are a creature of state law. And when you look at the changes that have happened recently, most of the protections are for low wage workers and blue collar workers. So places like Maine, have instituted a threshold income for non competes to apply or not apply. And if you're below the threshold, you can't use a non compete. And that's a way to protect people who are in lower level jobs, who are striving to get promotions and get better jobs and non competes prevent them from doing that. And I my sense is that the Biden administration is trying to look out for the blue collar worker or lower wage worker to make sure that there are protections in place for those people. Wayne Stacy 02:12 Well, you mentioned that there are states like Maine, and then we know California has already has restrictions on non compete clauses. I mean, is the issue so pervasive across the country, that the White House and the federal government needs to get involved? Joe Spoerl 02:30 My concerned is that, I mean, if you look at the statistics, they sort of provide some numbers with this order. And so President Biden noted himself, that but you know, one in five American workers without a college degree, are subjected to non compete agreements. And the fact sheet that came out with the order stated that roughly half of private sector businesses require at least some employees to enter non compete agreements. And so they state that that affects some 36 to 60 million workers. And then separately, there was a 2019 report from the economic policy institute that stated that 31.8% of private sector businesses reported that all of their employees had to sign a non compete agreement, regardless of their job duties or compensation, which is, you know, kind of insane. It doesn't matter where you fall in the food chain.

Proving non-obviousness with secondary indicia is hard on the best of days. It is even harder when the PTAB creates additional hurdles. The Federal Circuit, in the Chemours case, had something to say about these new hurdles. More on Nitika Fiorella. SPEAKERS Wayne Stacy, Nitika Fiorella Wayne Stacy 00:00 Welcome, everyone to the Berkeley Center for Law and Technology's Expert Series podcast. This is Wayne Stacy, the Executive Director for BCLT. And today I have Nitika Fiorella. From Fish and Richardson joining us. Nitika. Thank you for joining us today. And I wanted to lead off with the fact that you had a very successful Federal Circuit outcome. You'll be too modest to brag about it. But it was a it was an impressive win and a very interesting win. Before we talk about that, I think it's important to know who the client was and what that industry is. So would you please set the background for us? Nitika Fiorella 00:41 Sure, happy to and thank you, Wayne, for having me on, very excited to be here. So our client in this case is Chemours, which is a global Chemical Company. It traces its roots back over 200 years, to the start of the DuPont company, actually, which is a relatively household name, especially here in the northeast. It's both Chemour and DuPont are headquartered in my hometown of Wilmington, Delaware. But since separating from DuPont, Chemours really created a name for itself as a world leader, in really a host of different industries, ranging from everything from automotive, paints, plastics, to things like electronics, energy, you know, the list goes on and on. They are, they're really a company of innovation through chemistry. And you know, that, for me has been something that's been very exciting to get to work with a client like that, you know, who's just so their technology is so important to so many things that are essential in society, you know, they, they do things like make semiconductors, but they also help to fight climate change. So it's really just a very exciting company. And it's a really exciting client for a patent litigator, you know, to really be involved with and help them protect their many inventions and innovations in a lot of fields. Wayne Stacy 02:16 Well, in this particular case, the Federal Circuit reversed a PTAP finding, which is somewhat rare in itself. But in this case that the Federal Circuit didn't even remand, which is even even more rare. Federal Circuit goes through several different reasons. But the one I wanted to focus on today was the the secondary indicia portion of the Federal Circuit decision. And and to some degree, what the the PTAB had to say. I mean, as anybody that litigates patent, no patents knows, wins on secondary indicia are almost non existent these days. But this was a win on secondary indicia. So can you tell us how, how the case developed and why this was different? Nitika Fiorella 03:03 Sure, yes. So I think it as you mentioned, getting the Federal Circuit to go against the PTAB is extremely difficult. So I I clerked at the Federal Circuit, you know, I've seen many of these cases come up. And as you mentioned, just just getting the Federal Circuit to disagree with the patent office is is hard. Getting it to reverse instead of remand is extremely rare. And getting it to do it on the basis of secondary considerations in particular, is is definitely something we were very excited to see. And I think can be a good guidance point, I guess, for future cases on secondary inicia. So So how we got here. Well, when we got the board decision, we really wanted to look at just like any good appellate l

When is winning an IPR a handicap in District Court litigation? One District Court issued—in its own words—a “counterintuitive” result allowing the patent owner to try claims invalidated by the PTAB in a FWD while prohibiting the accused infringer from challenging the validity of those same claims. More on Travis Jensen. SPEAKERS Wayne Stacy, Travis Jensen 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's topic is the world of PTAB estoppel. And some of the odd outcomes that are impacting litigations with me to go over this topic is Travis Jensen, one of the country's top patent litigators from Orrick. So, Travis, thank you for joining us today. I look forward to hearing your thoughts on this odd case. Travis Jensen 00:31 My pleasure. Thanks for having me. Wayne Stacy 00:33 So the the case have been hinting at here is that the trust ID versus Next Caller case out of Delaware chat a little bit of write up and a little bit of head scratching. So tell us why this case is of any interest to people? Travis Jensen 00:49 Well, I think it's because the case contrasts two aspects of PTAB related estoppel. And those are the statutory IPR estoppel provision and the equitable doctrine of collateral estoppel and it analyzed these in the same order and reached what the district court itself characterized as a counterintuitive result. It's something that I think a lot of practitioners kind of instinctively felt, you know, perhaps was unfair. And let me just read, I think, one statement from the the court's order that that highlights this, the court said, "The court understands that allowing plaintiffs to proceed at trial on claims that have been found by the PTAB to be invalid, while at the same time preventing defendant from asserting prior art defenses against these claims based on estoppel under 315 E2 seems counterintuitive. That said it is a permissible result that follows from the statute and relevant case law. So I think it's really the contrast of those two different types of estoppel that caught people's attention. Perhaps standing alone, you know, either of the court's rulings may not have been quite as interesting. Wayne Stacy 02:07 So we're 10 years into the AIA and this estoppel provision, you know, doesn't seem to me that when Congress drafted the original estoppel provision, they were contemplating this particular result. Not sure what, what exactly they were contemplating on this interplay. But, but why are we still talking about estoppel, 10 years into this? Travis Jensen 02:31 I think that's a fair question. And, you know, certainly the statutory estoppel provisions have received a lot of attention and airtime and have been, you know, the subject of numerous court decisions. But even those issues aren't fully resolved. Right, the Federal Circuit has yet to weigh in, at least in a definitive matter on the scope of the statutory estoppel. And, you know, what is reasonably could have raised mean, you know, on the collateral estoppel front here, the issue preclusion, you know, I think that's received a lot less attention for a few different reasons. You know, number one is, you know, in the early days, you know, the, the IPR's we're essentially validating a lot of patents, and so they wouldn't come back to the district court. Right, which is the only place or the primary place where this issue would would come up o

On the podcast this week is Olivia Hellewell, a translator from Slovene to English of literary fiction, children's fiction, and non-fiction. Olivia is talking to Rebecca DeWald, our Emerging Translator Mentorships Programme Manager. They discuss Olivia's route into literary translation, the challenges of making a living from translation, and the importance of translating cultural references. This is a treasure trove for anyone interested in translation and also contains a surprising amount of discussion about Wotsits. Olivia was BCLT's translator in residence earlier in the year. Meanwhile, Flo Reynolds is back on the pod to introduce the new NCW Book Club book - Sudden Traveller by Sarah Hall! Find out more and join up here: https://nationalcentreforwriting.org.uk/the-ncw-book-club/ Here's the Meet the World video mentioned during the conversation: https://youtu.be/U_7niLTXT0g  And the Mythical English Reader video: https://www.youtube.com/watch?v=J8oFttUu2bI  Join our Discord community! https://discord.gg/3G39dRW  We'd love your support. Find out more and donate here; https://nationalcentreforwriting.org.uk/support-us/  Music by Bennet Maples.

From patents to privacy to export control, innovations in artificial intelligence present attorneys with significant career opportunities. David and Jenn from Morgan Lewis explain how AI impacts their work and advise on ways students can prepare for future work. More on David Sanker & Jenn Wang. SPEAKERS David Sanker, Wayne Stacy, Jenn Wang Wayne Stacy 00:00 Welcome, everyone to Berkeley Center for Law and Technology's Career Podcast. I'm Wayne Stacy, the Executive Director for BCLT. And today we have two attorneys from the the law firm of Morgan Lewis, David Sanger and Jenn Wang. And we wanted to talk with him a little bit today about what the the practice of law looks like around artificial intelligence. It is, especially artificial intelligence and patents, and what is a, what is a practitioner do for day to day? And what does it practice gonna look like over the next decade? So, David, I'll start with you. You know, tell us a little bit about your background and what your legal practice looks like. David Sanker 00:48 Oh, thank you. Yeah. So fortunately, I was able to go to Berkeley Law a few years ago. And while I was at Berkeley Law, I was a summer associate at Morgan Lewis. And I started my work, thinking that I was going to focus on patent litigation. And I did mostly patent litigation. But I also did quite a bit of patent prosecution. Sort of an ancillary basis. And then, so I saw a lot of familiarity with with the patent litigation side, as well as the patent prosecution side. And after about four years that I've been doing exclusively, patent prosecution work. Prior to law school, I actually did software development for 12 years. So I have a lot of background in software. And that has been very, very helpful. Most people don't have that much background before they go into patent law. So that's, that's, that's my, my background and how about Jenn, why don't you say a little bit about what you do. Jenn Wang 01:55 Yeah. So I work with David Sanger, together on patent prosecution. So we do a lot of software hardware, different kind of technology or patent applications and do prosecution. But my background comes from technical background comes from undergraduate in finance and a graduate degree in electrical engineering, then I also worked in our technology company for three and a half years. Then I come to law school, and I'm working in a law company together at the same time. So I'm in the part time in Santa Clara. It's not Berkeley, but it's close neighbor. Then after graduation, I start to practice full time on patent prosecution. It has been like six years, so kind of close to your law school students. So I may have a lot of experience in terms of early career development to share with you. So that's my background. Thank you. Wayne Stacy 03:00 So one of the things I heard when I was at the PTO you talk with with new companies, and they would inevitably say, well, we read on the internet, that software isn't patentable. So we didn't worry about software patents. And, you know, the first time I heard it, I thought it was an anomaly. Oh, here's a company that didn't didn't talk to anybody. But then we started looking across the country between all the regional directors, and it came up over and over again. And so we started looking, and you can find a lot of information on the web that says, you know, software's basically not patentable. And then if it's not patentable, that means there's no real career path in it. For people looking to do software patent work, what do you have to say to that?

Minerva, on its face, seems relatively straight forward--assignor estoppel survives in some cases. But how will District Courts handle mandatory fact discovery? And what can companies do to anticipate the future? More on Robert Merges. SPEAKERS Rob Merges (BCLT/Berkeley Law), Wayne Stacy Wayne Stacy 00:01 Welcome to the Berkeley Center for Law and Technology's Expert Series podcast. I'm Wayne Stacy, the Executive Director for BCLT. And with me today is Professor Rob Merges from the Berkeley School of Law. Today, we're talking about the Supreme Court's recent Minerva surgical case, and its impact on tech companies. Rob, thank you for joining us. Rob Merges 00:25 Good to be here. Wayne Stacy 00:27 Well, let's start, as they say, at the beginning, the Supreme Court in Minerva held that assignor estoppel survives in some cases, but not all, and then it remanded it back for more fact finding. And what we know is that it's still an equitable matter that the court will get to decide based on whatever facts it comes up with. So how do you see these types of cases playing out practically in the future? Rob Merges 00:58 Well, I think we, we have some guidance from Supreme Court. But you know, I think the remand you mentioned is suggestive of the fact that they expect the case law to have to flesh out the factors that will be important. In the Supreme Court opinion, the idea was to return the doctrine to its equitable roots. They seem to pay attention to the fact that, like a lot of patent applications, the claims here were amended, you know, long after the priority date. And in a way that the inventor suggested, you know, deviated from his understanding of the nature of the invention. But I think the equitable factor is is just going to be whether it's fair under the circumstances, to find an estoppel, given certain facts. And the facts that they seem to be suggesting, need to be considered are, you know, what the inventor knew how the inventor understood the invention. And maybe you might say, the magnitude of the amendments, and how far the continuation application was stretched or pushed beyond the boundaries of what the inventor, you know, can be shown to have understood. I think that's really the those are the equitable factors that they're pushing on. Wayne Stacy 02:31 How do you see these equitable factors interplaying with the continuation practice, that's become so commonplace? Rob Merges 02:42 Yeah. So, you know, I think the the Supreme Court didn't make a per se rule or didn't didn't directly address head on perceived abuses of continuation practice. But I think latent in the opinion, is some suspicion about, you know, aggressive amendment practicing. And that might suggest to the courts that, you know, if they want to limit the, the effect of the Minerva case, they might just say that this is a case that applies to you know, sort of radical amendments, because we can assume that they weren't contemplated, but the inventors contemplation would sort of be an afterthought. And the real purpose would be to turn this into a tool. In some cases, you know, only where an inventor is willing to attack his own patent. But in those cases, you could turn this into a tool to limit continuation practice. And maybe that's a suggestion that we ought to take a hard look at that practice, outside the estoppel context. I'm not the first person to suggest that continuation practice, and, you know, the purchase of open applications has been subject to some manipu

US trade representatives have been focusing their attention on getting the Chinese government to adopt criminal and administrative sanctions for IP theft. What does this focus mean for patent infringement? And what should US companies do about it? Related article: The Criminal Bias in U.S. Intellectual Property Diplomacy More on Mark Cohen. Speakers: Mark Cohen (AsiaIP/BCLT), Wayne Stacy Wayne Stacy 0:00 Welcome, everyone to the Berkeley Center for Law and technologies expert series podcast. I'm Wayne Stacy, the Executive Director for BCLT. And with me today is Mark Cohen, from the Berkeley School of Law. Mark is not only a lecturer, he is the director of the Asia IP Project, and a director at Berkeley Center for Law and Technology. So Mark is one of the leading experts in the world on Chinese IP law. And today, we're going to be talking about the role of criminal IP enforcement in China. Mark, thank you for joining us today. Mark Cohen 0:38 Thank you, Wayne. It's a pleasure to be here. Wayne Stacy 0:40 So Mark, you recently wrote an article and it talks about two types of IP enforcement it worldwide but in particular, in China. One is private enforcement, kind of what we would call civil enforcement, and the other is government enforcement, criminal and administrative rights. So my first question for you is why is a strong Chinese government enforcement enforcement option worrisome in the IP world? Mark Cohen 1:07 Well, it's worrisome for a bunch of reasons. One is that from the WTO context, the obligation is to really have private remedies for all IP rights. So there's no obligation to have a criminal patent remedy in the US, except for marking requirements really has no criminal or public enforcement of the patent law. Nor is there an obligation to have a criminal trade secret remedy, the US has it China has many other countries have it. Moreover, the scope of criminal activities covered by the criminal law are limited, it doesn't capture non willful infringement, criminal law captures largely willful infringement, and according to the WTO on a commercial scale, so if you know criminal law is very important in addressing the need for society to respect IP, provide some measure of social deterrence, address criminality, but it may not work so well, when it comes to technology related issues, certainly not with patents. And even some difficulties on trade secrets, plant varieties. So it has it has its limits in terms of how the system functions. More importantly, perhaps you go back to the preamble, the TRIPS agreement, and it says IP is a private property, right, a private right. Now, if it's a private, right, does that mean the government is the principal agency to enforce it? Or does that mean, it's the individual that has to enforce it. And I think the TRIPS agreement, consistent with other aspects of the WTO, the global trading system was really looking at private actors protecting private rights. And that means robust civil remedies, and everything that goes along with it, not public remedies. And in China, we have, by the way, not just criminal remedies, of which China has roughly 12,000 cases a year, a lot more than the United States. But we're also talking about a vast administrative system, including for patents where you're fined. kind of think of it as if the PTO had a police force, you get fined for infringement after determination by the administrative agency. And that applies to patents, trademarks, copyrights, trade secrets, plant varieties, a whole bunch of a whole bunch of things, as well as product quality and related issues. So that

Patent venue challenges often turn on a company's operations within a particular venue. As companies permit and even encourage remote work, this venue analysis may be changing. And with remote work growing in the Austin area, what can you anticipate happening in the Western District of Texas? More on Sarah Guske. SPEAKERS Sarah Guske (Baker Botts), Wayne Stacy Wayne Stacy 00:00 Welcome, everyone, to Berkeley Center for Law and Technology's Expert Series Podcast, where the focus is on important legal issues impacting technology companies and individual innovators. I'm Wayne Stacy, the Executive Director for BCLT. And your host today. With me, we have a partner from the law firm of Baker Botts, Sarah Gusky. Sara has been litigating for many, many years, we'll just say leave it a t that. But she's one of the nation's leading and most recognized patent litigation experts. She's also been an adjunct professor teaching IP law and patent litigation at several universities around the country. So welcome, Sarah. Sarah Guske 00:46 Thank you, and thank you for implying that I'm old. Well, Wayne Stacy 00:52 we let's say we're roughly the same age. So whatever you are, I am too . So today's topic is a is an old one that unfortunately keeps coming up and keeps requiring more and more attention. And that is venue for patent litigations. But today, we're going to look at it from a slightly different perspective, one that involves some of today's issues around the pandemic, remote working, and something very close to the Bay Area is the movement of Bay Area tech employees to other markets, and particularly to the Austin market. So with that in mind, you know, Sarah, why? Why does venue and movement of employees to the Austin market matter to anyone? Sarah Guske 01:42 Well, it's a little bit to quote, Yogi Berra, deja vu all over again, it's a lot of what we were seeing back in the early 2000s with respect to the Eastern District. But today in 2021, we now have the Western District of Texas, which has become the front runner in terms of patent or patent venues for patent litigations. And where does Austin sit? Well, it's right in the Western District of Texas. So as as employees and companies migrate that direction, they're putting themselves in the crosshairs, so to speak. Wayne Stacy 02:25 Well, as I study what's going on in the Western District of Texas, it's not really the Western District of Texas that has got companies scared these days. It's one particular division in the Western District of Texas, Waco, and I understand judge Albright there in Waco, in just a few short years on the bench has now amassed about 20%, of the nation's patent litigation in his courts. Is that roughly what you're hearing? Sarah Guske 02:57 That's right. And as you said, a very short period of time he has attracted and outpaced his competitors, if you want to call them that, in attracting those patent lawsuits, and the growth is sort of a hockey stick, and it just keeps on going. Wayne Stacy 03:19

Translator William Gregory joins us on the pod to discuss translating for the stage, how he started his professional career and the challenges of working on translated material in the UK. William was a (virtual) translator in residence at BCLT from October 2020 to January 2021, and ran the theatre translation workshop during 2020's BCLT Summer School. On the other side of the conversation is special guest interviewer Sue Healy, Literary Manager at the Finborough Theatre in London. It's a wide-ranging conversation full of practical tips for early career translators and fascinating insights for anyone who enjoys a diverse mix of entertainment. Hosted by Simon Jones and Steph McKenna, who tease upcoming episodes, talk about their current reads and reminisce about people bringing cakes into the office. Find out more: https://nationalcentreforwriting.org.uk/ BCLT: http://www.bclt.org.uk/  Join our Discord community: https://discord.gg/3G39dRW  Music by Bennet Maples. Thumbnail photo by Felix Mooneeram on Unsplash

Jeremy Tiang returns to the pod, this time accompanied by fellow translator Anton Hur and Kate Griffin. In this wide-ranging chat they take in their inaugural Dragon Hall translator residencies, the BCLT summer school, how mentorships can help people getting into translation, the work of Tilted Axis, the history of Singapore and queer Korean literature. The residencies were supported by the National Arts Council of Singapore and the Literature Translation Institute of Korea. Hosted by Simon Jones and Steph McKenna. Find out more about our work at https://nationalcentreforwriting.org.uk Get your Noirwich tickets: https://noirwich.co.uk http://www.jeremytiang.com/ https://antonhur.com/ http://www.bclt.org.uk/summer-school https://nationalcentreforwriting.org.uk/emerging-translator-mentorships/ https://nationalcentreforwriting.org.uk/article/erasing-histories/ https://www.tiltedaxispress.com/ https://www.wordswithoutborders.org/article/june-2019-korean-queer-korean-litearture-is-stepping-outanton-hur http://www.cedilla.company/ https://smokingtigers.com/ https://literarytranslators.wordpress.com/2019/02/07/focus-on-literary-translation-collectives-an-interview-with-the-smoking-tigers/ Music by Bennet Maples.

Does one infringe a copyright by in-line linking? If so, how much will our internet be shrinking? Just how pervasive are in-line linking, embedding and framing in today’s digital media? A content development and distribution pro first explains the present state before envisioning a hypothetical internet without these tools. Then counsel who won the two […]

The European Union’s General Data Protection Regulation has been in effect for nearly a year, and California’s expansive Consumer Privacy Act is set to go into effect in 2020. This panel of regulators, in-house and outside counsel will review enforcement trends that have the greatest impact on online platforms, and actions that platforms have taken […]

Many decisions that affect public discourse on online platforms are made before the first user logs on. Speech on the internet is shaped by platforms’ structural choices including: the length of permitted submissions; whether posts are permanent or disappear over time; how the content that users see is selected; the control granted to users over […]

This session will take an in-depth look at legal strategies for protecting anonymous speech online from the perspective of the platforms that provide the channels of communication, as well as from users seeking to maintain their online anonymity. A panel of expert inside and outside counsel will consider: • What are the legal standards for […]

In its landmark decision in Carpenter v. United States, the Supreme Court held that the Fourth Amendment requires that law enforcement obtain a warrant before gathering historic cell site location data about a suspect from cellular service providers, calling into question the validity of the “third-party doctrine” in the online context. The decision has opened […]

Practioners from Europe will bring us the latest developments on global takedown cases working their way through the European courts (e.g., CNIL v. Google; Glawischnig v. Facebook); and controversial provisions of the EU Copyright Directive that threaten to impose a so-called “link tax” on platforms that aggregate news content and to require platforms to take […]

New machine-learning technology is allowing even amateur video editors to conjure videos that convincingly replace people’s faces with those of others – frequently unwitting celebrities – to both creative and destructive ends. This digital face-swapping tech has been used for satirical internet videos and perhaps most famously to recreate a younger Princess Leia in the […]

Increasingly, platforms have been under pressure on a number of fronts to take down, moderate and/or stop hosting objectionable groups and content, such as content originating from white supremacists, alleged sex traffickers, terrorist groups and the like. The pressure is coming from political forces seeking legal reforms, such as the recently passed Section 230 exception […]

Whether by foreign governments like Russia, or by fraudsters and other individuals wishing to influence opinion and actions on the internet for their own ends, disinformation campaigns have become an acute problem that social media sites are facing calls to address. Beginning with a tech tutorial on how fake news and other misinformation is created […]

This session will begin with a tutorial on how algorithms and machine learning work in order to provide lawyers with a better understanding of how these technologies apply to solving real world problems. For example: how does machine learning help a review site spot fake reviews, a social media platform identify misinformation campaigns, or sites […]

It has been approximately a year since the Uber scandal uncovered a culture of sexual harassment and gender bias in the tech community. Silicon Valley still faces a dearth of female founders and women are still underrepresented at executive levels in tech companies and law firms. But is the outlook showing signs of improvement? What […]

The Computer Fraud & Abuse Act was enacted by Congress in 1986, primarily as a tool to criminally prosecute hackers, in an era before the web and online publishing, when the internet was mostly used by a small universe of academics, government and military staff. Although the CFAA has been updated by Congress several times, […]

Kara Swisher, influential technology journalist and co-founder of Recode, speaks with fellow journalist, Sarah Jeong, on the state of the tech world in a climate where Silicon Valley is facing growing scrutiny from public officials and the public at-large.

This session will bring together government agents and in-house counsel, who often must call upon one another to investigate and stop cyber threats from hackers, terrorist organizations and violent extremist groups. What issues arise when digital companies seek the aid of government in response to hacking and other online threats, including those from state actors […]

Copyrights are granted globally and digital content on platforms is distributed globally. Therefore, publishers and digital platforms must consider a global approach to content management and copyright. In the U.S., the notice and takedown provisions of the Digital Millennium Copyright Act give platforms breathing room to avoid liability for the distribution of user generated content […]

Europe’s War on U.S. Platforms Many government entities in the EU appear to be gunning for U.S.-based digital companies. This is reflected in the new copyright law discussed in the earlier panel, but is also seen in a variety of data protection & privacy regulations: GDPR, Privacy Shield, right to be forgotten (including possibility of […]

The new FCC Chairman, Ajit Pai, has announced his intention to repeal the FCC’s 2015 Open Internet Order that had brought the internet under Title II common carrier regulation and to reclassify ISPs as Title I information services. There is sure to be a contentious battle over these new rules and a fierce debate about […]

During the past year or so, a number of court decisions have chipped away at the protection of Section 230. Recently, courts have appeared receptive to claims that fall outside the usual ambit of publishing torts, where, e.g., a duty to warn was alleged (Doe v. Internet Brands), or where an online marketplace site takes […]

This panel will explore increasingly common (and sometimes controversial) situations where digital companies must balance free speech, liberty, security and other interests of their users (along with the platform’s own right to speak and create an atmosphere that is representative of its corporate values) where the law doesn’t demand a particular action. This session will […]

Remarkable advances in technology now allow every person with a smartphone, tablet or GoPro the ability to produce and distribute their own video content, immediately and globally. The recording of events from all angles presents challenges to content developers, who struggle to balance perspectives both literally and figuratively. What opportunities does this create for new […]

Our lightning round panel will discuss the key takeaways from new developments in topics critical to clients publishing, monetizing, and utilizing digital content, including: (1) the Lanham Act (including commercialization of online content), (2) the Computer Fraud and Abuse Act (including delegation and authorization to access on behalf others), (3) copyrightability (including APIs, and also […]

While the legal battle between Apple and the FBI created a firestorm of controversy, this session will aim to take our audience beyond the sensational headlines and political rhetoric, and delve into the technology, legal issues and public policy concerns at stake. The discussion among these distinguished panelists will be geared to educate conference attendees, […]

Copyright law is increasingly being used – contrary to its intended purpose of incentivizing works of creation by authors and artists — by aggrieved persons wishing to remove negative or embarrassing content about them from the internet. While Section 230 and strong First Amendment protections obviate many avenues available to plaintiffs, copyright law – be […]

With Ad Blocker software reaching critical mass, both on desktop and on mobile platforms, what will be the impact on a digital media that is so largely driven by advertising revenue? This session will cover the differences between the different ad-blocking apps, the reasons for their emergence, and how platforms, publishers, advertisers, and consumers are […]

By role-playing a series of take-down and user data request scenarios involving the EU, South America and elsewhere–even the US–a panel of experienced digital media counsel/insiders will provide both legal and practical guidance on facing the crazy quilt of challenges posed by national and cross-national demands and conceptions of privacy, security and free speech. The […]

http://www.medialaw.org/images/events/PreparingForTheNext_May2015_ki.mp3 https://medialawmlrc.wordpress.com/2015/06/23/preparing-for-the-next-round-in-net-neutrality-audio-only/feed/ 0

Some companies are hoping the CDA will protect them even as they engage in activities in the physical world, while at the same time, courts are pushing back in certain areas, even where the claim involves publisher activities. Our expert panel will discuss: • The real-world impact of Roomates.com‘s “material contribution” standard for participating in […]

As information increasingly moves to the cloud, as systems become ever more interconnected, and as remote access to data becomes the norm, issues concerning digital privacy and data security have come to the fore.  The aggregation and sharing of information in digital environments have led to significant innovations and improvements in commerce, services, and other […]

Fair use and the bounds of the transformational use have been front and center in a range of copyright cases this past year. A panel of experts from all sides of the fair use landscape will discuss fair use as it applies to search, digitization and accessibility. Are mass digitization projects simply mass infringement? Is […]

Content bundles are fraying as one content producer after another announces that it is going “over the top” – streaming content that is accessible online without the need for a traditional cable television subscription. Format distinctions driven by traditional commercial models are breaking down as network shows rub shoulders with feature films, original programming from […]

Counsel will discuss their experiences coping with the demands of a cross-border legal environment as a practical matter: evaluating international needs, finding and working with counsel, dealing with foreign governments and crisis management. When do you worry that your company’s activities will trigger international scrutiny or liability? Do you have counsel on call in every […]

This session will begin with a technical tutorial on the architecture of the Internet to provide a solid basis for a discussion about net neutrality — how edge providers send traffic to ISPs, how “peering,” “throttling,” and “fast lanes” work in the real world, and how the Internet can support services such as high-definition video […]

Digital Media Venture Capital 2014 This session will continue our tradition of closing the conference with a discussion among venture capital professionals, who will offer their views and forecasts on what to expect in the digital media landscape in the near term. Panelists: Stephanie Zeppa, Partner, Sheppard Mullin (Moderator); Stephen Bernardez, Principal, ONSET Ventures; Saad […]

Online Advertising Mashup This session will explore the biggest issues in online advertising today, including: Interest-Based Advertising:  the latest on Do Not Track, the implications of platform-based opt outs such as Apple’s IDFA and Android’s Advertising ID, and how recent technological changes affect how companies engage users and how publishers monetize advertising inventory. Recent changes […]

Is Mobile Different? The evolution of mobile platforms and content:   As mobile usage and content explodes, and wireless devices proliferate into every aspect of our lives, how is mobile different from the wired internet?  This panel will explore the differing business models and legal issues, including FCC and regulatory, privacy and consumer protection and contracting […]

Digital Media in the Age of NSA Surveillance This panel will cover the implications of US spying and data-collection on American digital media domestically and around the world, and explore how digital companies should respond in the wake of government demands for user information.  Should digital companies be standing up for their users’ privacy and […]

Scraping Content: the CFAA, DMCA, and Terms of Use The Computer Fraud and Abuse Act—created in response to fears of cybercriminal attacks—has morphed into a potential tool for policing third-party scraping and access to websites. How and why are content hosting websites, such as LinkedIn, craigslist, and Facebook using the CFAA to police third-party uses […]

From Kochanowski to Huelle and Beyond: Translating Polish Literature Before and After 1989. Panel session Presenters: Antonia Lloyd-Jones, (UK Translators Association, Mentor for BCLT), Ursula Phillips (Honorary Research Associate of UCL SSEES). George Gömöri (University of Cambridge). Chair: Jan Fellerer (Wolfson College, Oxford).

Designers of the first electronic telephone switches nicknamed them the "large immortal machines" because switches last decades. The 1994 Communications Assistance for Law Enforcement Act (CALEA) requires that all digital-switched telephone networks be built wiretap enabled; the law took longevity of switches into account by authorizing funding to update switches in place. But by failing to analyze how threat models would change in a highly connected IP-based world, CALEA did not consider the longevity of switches prospectively. As an architected security breach, CALEA compliance is a ticking time bomb. Alleviating this is the subject of this talk. Berkeley Center for Law & Technology: http://www.law.berkeley.edu/bclt.htm

Two translators – Shaun Whiteside and Mike Mitchell – went head to head with their versions of a previously untranslated work. Novelist Daniel Kehlmann provided the challenge, with the event chaired by Daniel Hahn, interim director of the BCLT and chair of the Translators Association. See acast.com/privacy for privacy and opt-out information.