Podcasts about patent trial

board discovery production routine relevant patent trial

Play Episode Listen Later Jun 18, 2024 3:03

Question: What does routine discovery include? Answer: Routine discovery includes: Production of any exhibit cited in a paper or testimony; The cross-examination of the other sides declarants; and Relevant information that is inconsistent with a position advanced during the proceeding. Routine discovery places the parties on a level playing field and streamlines the proceeding. Board authorization is not required to conduct routine discovery, although the Board will set the times for conducting this discovery in its Scheduling Order. Chapter Details: This question comes from the following supplement “Patent Trial and Appeal Board Consolidated Trial Practice Guide November 2019”. This is… The post MPEP Q & A 304: What does routine discovery include? appeared first on Patent Education Series.

Ep138: Change Careers to a Major Airline! Interview with James

Ready 4 Pushback

Play Episode Listen Later May 6, 2024 43:48

Navigating a career transition is a universal challenge, yet specific frameworks can assist in overcoming obstacles. In this episode, James Maune, who successfully transitioned from being a lawyer to an aviator, leads us through the complexities of juggling work, family, and school. Discover effective strategies that'll propel you toward a successful professional aviation career. WHAT YOU'LL LEARN FROM THIS EPISODE Actionable tips to balance work, family, and pilot training Reasons to train in major airlines as a pilot How to leverage your network to prepare for an aviation interview Expert advice on how to become a professional pilot RESOURCE/LINK MENTIONED RTAG ABOUT JAMES MAUNE James is an airline transport pilot and a lawyer. He was selected as SuperLawyer's rising star in San Diego in 2020, 2021, 2022, and 2023. His practice focuses on drafting and prosecuting patent applications in the US and abroad. His practice includes complex patent infringement litigation cases in federal district courts, post-grant review proceedings before the Patent Trial and Appeal Board (PTAB), trademark prosecution, and ex parte review proceedings. He then transitioned to a career as a professional aviator: airline transport pilot (ME), 1st class medical, and FCC Radio Operator's License. CONNECT WITH JAMES Website: American Airlines | Kilpatrick Townsend LinkedIn: James Maune CONNECT WITH US Are you ready to take your preparation to the next level? Don't wait until it's too late. Use the promo code “R4P” and save 10% on all our services. Check us out at www.spitfireelite.com! If you want to recommend someone to guest on the show, email Nik at podcast@spitfireelite.com, and if you need a professional pilot resume, go to www.spitfireelite.com/podcast/ for FREE templates! SPONSOR Are you a pilot just coming out of the military and looking for the perfect second home for your family? Look no further! Reach out to Marty and his team by visiting www.tridenthomeloans.com to get the best VA loans available anywhere in the US. If you're a professional pilot looking for a great financial planning partner for your retirement, tax, and investment, go to www.tpope.ceterainvestors.com/contact or call 704-717-9300 ext 120 to schedule a consultation appointment with Timothy P. Pope, CFP®. Be ready for takeoff anytime with 3D-stretch, stain-repellent, and wrinkle-free aviation uniforms by Flight Uniforms. Just go to www.flightuniform.com and type the code SPITFIREPOD20 to get a special 20% discount on your first order.

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Legal News for Weds 5/1 - PTO New Rule on Pharma Patent Settlements, Jones Day SCOTUS Presence, J&J Seeks $11b Settlement in Talc Suit and Biden's FY2025 Unrealized Gain Tax Proposal

Play Episode Listen Later May 1, 2024 9:02

This Day in Legal History: First Union FormedOn May 1, 1794, a pivotal development in labor rights history occurred in Philadelphia with the formation of the Federal Society of Journeymen Cordwainers. This organization, consisting of skilled shoemakers, marks the establishment of the first trade union in the United States. The union was created as a response to the increasingly difficult economic conditions that tradesmen faced, including low wages and long working hours.The Cordwainers, recognizing the strength in numbers, aimed to leverage their collective bargaining power to negotiate better wages and working conditions. This was a significant step forward in the labor movement, as it introduced the concept of organized labor in America. The formation of this union was not just about improving pay; it was also about dignifying the labor force and providing workers a platform to voice their concerns.Philadelphia, being a hub of commerce and trade in the late 18th century, provided the perfect setting for such an organization. The city's workshops and bustling markets meant that there was a significant demand for skilled labor, which the Cordwainers could supply. However, with industrialization beginning to take root, these skilled workers found themselves under threat from cheaper, mass-produced goods.The Federal Society of Journeymen Cordwainers set a precedent that would be followed by other trades across the country. Their actions led to the establishment of similar societies and unions, which eventually contributed to the broader national labor movement. The Cordwainers themselves faced legal challenges, particularly in 1806, when they were involved in a landmark legal case concerning the rights of workers to organize, known as Commonwealth v. Pullis. In this case, the court ruled against the union, marking one of the first legal battles over the legitimacy of trade union activities in the United States.Despite the legal setbacks, the resilience and pioneering spirit of the Federal Society of Journeymen Cordwainers inspired subsequent generations of workers to fight for their rights. Their legacy is a testament to the enduring struggle for fair labor practices and workers' rights. This day in legal history not only marks the formation of America's first trade union but also celebrates the long journey towards justice and equity in the workplace.The US Patent and Trademark Office (PTO) recently proposed a rule that would require pharmaceutical companies to submit unredacted settlement agreements involving patent challenges to a new repository. This rule is aimed to assist the Federal Trade Commission (FTC) and the Department of Justice (DOJ) in detecting antitrust violations. The proposal arose from concerns that these settlements, often reached in administrative tribunals like the Patent Trial and Appeal Board (PTAB), could be used to delay cheaper biosimilar drugs from entering the market.Evan Diamond, special counsel, noted that the PTO has not clearly defined "good cause" for accessing these agreements, which might increase third-party access and create confidentiality concerns. The fear is that the database could enable federal agencies to easily assess the frequency of potentially anticompetitive pay-for-delay settlements—a practice scrutinized under the Supreme Court's 2013 decision in FTC v. Actavis, which ruled such deals could be illegal.The proposal aligns with an executive order from President Joe Biden encouraging interagency cooperation to prevent practices that unjustifiably delay generic and biosimilar competition. This move has heightened the pharmaceutical industry's fears of increased antitrust enforcement, particularly as the FTC has been actively challenging questionable patent listings that could hinder the approval of generic drugs.Agencies like the FTC and DOJ already have certain reporting requirements under the Medicare Modernization Act for pharmaceutical companies, but the PTO's rule could capture additional agreements that do not meet existing criteria. This has sparked debate over the necessity and potential overlap of the new rule.The pharmaceutical industry, represented by major lobbyist groups like Pharmaceutical Research and Manufacturers of America and the Biotechnology Innovation Organization, has expressed strong opposition, citing concerns over the scope of PTO's authority and the ambiguity around the "good cause" criterion.This development highlights a broader regulatory push against anti-competitive practices not only in pharmaceuticals but also in other sectors like technology, where companies like Apple and Google are frequently involved in patent litigation.In summary, the PTO's proposed rule could significantly impact how pharmaceutical settlements are handled, potentially exposing companies to greater antitrust scrutiny. This measure reflects a governmental shift towards stricter oversight of patent practices to foster competition and reduce drug prices.Drug Makers Exposed to Antitrust Probes if Patent Cache AdoptedThis term, Jones Day had the highest number of attorneys—five in total—arguing cases at the U.S. Supreme Court, more than any other firm. Among them, John Gore and C. Kevin Marshall presented for the first time at the high court. Other experienced attorneys like former U.S. Solicitor General Noel Francisco, and partners Hashim Mooppan and Traci Lovitt also argued cases, contributing to the firm's visibility.In comparison, other leading law firms such as Gibson Dunn, Hogan Lovells, and Williams & Connolly had slightly fewer representatives. Gibson Dunn introduced three new attorneys to the Supreme Court lectern, including Theane Evangelis, D. Nick Harper, and Eugene Scalia, who is a son of the late Justice Antonin Scalia. Hogan Lovells' Jessica Ellsworth argued for the first time, including in a significant case regarding the abortion drug mifepristone. Williams & Connolly had Lisa Blatt argue all four of their cases, marking her 50th Supreme Court appearance.Overall, the season saw a mix of seasoned veterans and newcomers. Of the total 152 arguments made, over half were by attorneys who had appeared at least five times before, while a quarter were by first-time arguers. This highlights both the depth of experience and the ongoing introduction of new talent in the legal field's highest echelons.Jones Day Leads in Supreme Court Arguments With New FacesJohnson & Johnson (J&J) is currently seeking approval for an $11 billion settlement to resolve ongoing litigation concerning its talc-based baby powder, which has been alleged to cause ovarian cancer. This amount is a significant increase from a previous offer of $8.9 billion. J&J's strategy involves a third attempt at a bankruptcy filing, specifically a pre-packaged bankruptcy, which allows for faster processing if they secure enough creditor support—in this case, needing the approval of 75% of the talc plaintiffs.The company proposes to pay $6.48 billion over 25 years to settle ovarian cancer claims, but it has not specified how funds will be divided between existing and future claims. Additionally, J&J has nearly settled all claims regarding mesothelioma believed to be caused by asbestos in the powder. This settlement approach follows multiple failed attempts to use Chapter 11 to manage these lawsuits, which now number almost 60,000.These lawsuits have been a significant factor depressing J&J's stock price, according to analysts. Despite the legal challenges, J&J maintains that its talc products do not cause cancer and asserts that it has marketed its baby powder responsibly for over a century. A recent verdict, however, led to a $45 million payout to a family, implicating J&J and its spinoff Kenvue in the ongoing litigation.The company's persistence in seeking a bankruptcy-based settlement reflects its strategic approach to managing a complex legal challenge that impacts thousands of plaintiffs and could potentially set a precedent in how large corporations handle mass tort liabilities through bankruptcy court.J&J Seeks Backing for $11 Billion Baby Powder Cancer SettlementIn President Joe Biden's Fiscal Year 2025 Budget Proposal, a notable change is the suggestion to tax unrealized gains—value increases in assets not yet converted into cash through a sale. This marks a significant shift from traditional tax frameworks, which typically avoid taxing unrealized gains due to their complexity, potential liquidity issues, and difficulties in implementation.The rationale behind this proposal is to ensure tax fairness by capturing increases in wealth that currently escape taxation. For example, if a billionaire's stock appreciates significantly without being sold, they realize no taxable gain. However, if they borrow against these increased values, they effectively use this appreciation as a means to generate wealth without incurring tax liabilities. This situation presents a loophole where wealth can grow and be leveraged without contributing to the tax base.The FY2025 budget aims to address these disparities by proposing a tax on unrealized gains for very high-net-worth individuals and entities that have not been subject to a tax event in the last 90 years. This approach seeks to broaden the tax base without raising rates, aiming to increase tax revenue from the wealthy without additional burdens on middle and lower-income individuals.This policy shift acknowledges the need to adapt tax strategies to a changing economic environment where traditional taxation methods no longer capture all forms of wealth accumulation. The proposal suggests that a more equitable tax system requires taxing wealth as it grows, even if it is not realized through a sale. By proposing to tax unrealized gains, the administration intends to correct imbalances allowing substantial wealth to accumulate tax-free, signaling a significant potential change in how wealth is taxed in the U.S.Unrealized Gain Tax—A Coming Sea Change in FY2025 Budget Proposal? Get full access to Minimum Competence - Daily Legal News Podcast at www.minimumcomp.com/subscribe

MPEP Q & A 295: Which of the new trial proceedings can the patent owner file a preliminary response for?

Play Episode Listen Later Feb 13, 2024 2:49

Question: Which of the following new trial proceedings can the patent owner file a preliminary response for? Answer: The patent owner is afforded an opportunity to file a preliminary response for inter partes review (IPR), postgrant review (PGR), and covered business method patents (CBM). Chapter Details: This question comes from the following supplement “Patent Trial and Appeal Board Consolidated Trial Practice Guide November 2019”. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may… The post MPEP Q & A 295: Which of the new trial proceedings can the patent owner file a preliminary response for? appeared first on Patent Education Series.

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MPEP Q & A 293: Who conducts derivation proceedings, inter partes reviews, and post-grant reviews?

depending inter proceedings partes conducts derivation patent trial

Play Episode Listen Later Jan 16, 2024 2:23

Question: Who conducts derivation proceedings, inter partes reviews, and post-grant reviews? Answer: The Board is to conduct derivation proceedings, inter partes reviews, and post-grant reviews. Chapter Details: This question comes from the following supplement “Patent Trial and Appeal Board Consolidated Trial Practice Guide November 2019”. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable. Section Summary: This question comes from the following supplement: “Patent Trial and Appeal Board Consolidated Trial… The post MPEP Q & A 293: Who conducts derivation proceedings, inter partes reviews, and post-grant reviews? appeared first on Patent Education Series.

Legal News for Tues 1/9 - Volatile 2024 for Law Firms, Google's AI Patent Trial, New 'Gig' Work Rule, J&J $700m Talc Settlement and I Argue for a Water Tax

IP Talk with Wolf Greenfield

Play Episode Listen Later Jan 9, 2024 10:36

This Day in Legal History: Great Britain Introduces an Income TaxOn January 9, 1799, a significant milestone was marked in the history of taxation with the introduction of Great Britain's first income tax. Initiated by British Prime Minister William Pitt, this tax was a revolutionary step in the country's fiscal policy. The context of its introduction was deeply rooted in the exigencies of war. In December 1798, Pitt announced the tax as a means to amass funds for the escalating war efforts against Napoleon Bonaparte, a critical juncture in European history.Pitt's income tax was not merely a financial mechanism but also a strategic tool, reflecting the gravity of the geopolitical situation at the time. It was a progressive tax, a concept relatively novel for its era, aiming to levy heavier taxes on the wealthier segments of society. This progressive nature marked a departure from the flat taxes commonly used, signifying an evolution in the understanding of equitable taxation.The tax, however, was short-lived in its initial form. In 1802, Henry Addington, Pitt's successor, repealed the tax. This repeal was a response to the temporary subsidence in hostilities. The peace was fleeting, and the return of conflict in the following year prompted Addington to reinstate the income tax. This on-and-off nature of the tax during these years mirrored the tumultuous period of the Napoleonic Wars.Significantly, the model of taxation that Addington implemented laid the groundwork for what would become the modern British income tax system. It set a precedent in tax structure and collection that has had a lasting impact. The evolution of this tax model reflects the interplay between fiscal policy and social priorities, a theme that has persisted through centuries of tax law development.Today, as we reflect on the introduction of Great Britain's first income tax, it serves as a reminder of the dynamic nature of tax law and its deep entwinement with the broader socio-political landscape. The story of this tax is not just a tale of revenue collection; it's a narrative about war, peace, and the ever-evolving understanding of economic justice.In a 2024 report by Georgetown Law's Center on Ethics and the Legal Profession and the Thomson Reuters Institute, law firms are facing a challenging year due to various factors including client demand, staffing, and the rise of artificial intelligence. The report, analyzing trends since 2009, indicates a shift in the legal market towards a buyer's market for legal services. Despite a marginal increase in the overall average demand for legal services in the previous year, transactional work has seen a decline. This is significant as many firms relied on transactional practices, particularly in mergers and acquisitions, to boost revenue in the past decade.The report highlights that midsize law firms performed better than top-grossing firms in terms of demand growth. However, the legal sector can no longer depend solely on transactional work due to reduced client spending and evolving market conditions. Interestingly, counter-cyclical practices like litigation and bankruptcy experienced growth in demand, contrasting the slowdown in transactional demand.The survey revealed a 6% increase in billing rates on paper, but actual charges to clients and collection rates have decreased. Law firms are also grappling with rising overhead and direct expenses, not yet accounting for recent associate salary increases. In response to these financial pressures, law firms are adjusting their staffing strategies, with midsized firms increasing their associate numbers more than larger firms.Clients are increasingly seeking more affordable legal services, opting for lower-priced firms, reflecting a cost-conscious attitude. Additionally, the emergence of generative AI poses uncertainties for the legal industry. Its impact on staffing, efficiency, and profitability is still unclear, but it could lead to clients handling more legal work in-house or enhance the efficiency of legal services.The report's authors expect 2024 to be volatile, particularly as election years often bring unpredictability. This projection suggests that the legal industry may not experience stability for some time, indicating a period of significant change and adaptation for law firms.Law firms face 'volatile' 2024 amid demand, staffing and AI risks - report | ReutersGoogle is facing a significant patent infringement lawsuit brought by Singular Computing, which could potentially cost the tech giant up to $7 billion in damages. The lawsuit, set to be tried in a federal court in Boston, accuses Google of infringing patents held by computer scientist Joseph Bates, the founder of Singular Computing. Bates alleges that Google used his patented technology in its processors to enhance AI features in various services such as Google Search, Gmail, and Google Translate.Google has responded by questioning the validity of Singular's patents and asserting that its processors were independently developed over many years. The company has also argued that its technology operates differently from the patented technology of Singular. In parallel, a separate legal proceeding is underway, where a U.S. appeals court in Washington will hear arguments on whether Singular's patents should be invalidated, a case that Google appealed from the U.S. Patent and Trademark Office.The trial, expected to last two to three weeks, centers around Google's Tensor Processing Units introduced in 2016 and subsequent versions in 2017 and 2018. These units are crucial for Google's AI capabilities, including speech recognition and content generation. The outcome of this trial could have significant financial and technological implications for Google.Google faces multibillion-dollar US patent trial over AI technology | ReutersThe Biden administration, through the U.S. Department of Labor, has issued a new rule that aims to redefine the classification of workers as employees instead of independent contractors. This move, set to affect industries reliant on contract labor, including trucking, manufacturing, healthcare, and app-based gig services, is anticipated to increase labor costs significantly. Under the new rule, workers will be considered employees if they are "economically dependent" on a company, a shift from the previous Trump administration's regulation which allowed more flexibility in classifying workers as contractors.The rule, which takes effect on March 11, has sparked concern among business groups and is expected to face legal challenges. It is designed to combat the misclassification of workers, a common issue in industries such as construction and healthcare, but its impact on gig economy companies like Uber and Lyft has attracted the most attention. These companies have expressed concerns but also believe the rule won't necessarily lead to their drivers being classified as employees.Acting U.S. Labor Secretary Julie Su emphasized the importance of this rule for low-income workers who would benefit from employee legal protections such as minimum wage and unemployment insurance. However, some business groups argue that the rule goes too far, potentially depriving millions of workers of flexibility and opportunity. Marc Freedman of the U.S. Chamber of Commerce criticized the rule for its potential to create confusion and inconsistency in worker classification, potentially leading to costly legal battles. Despite these concerns, the Labor Department will evaluate factors like a worker's chance for profit or loss, the level of control a company has over a worker, and the relevance of the work to the company's business to determine employee or contractor status.Biden administration issues rule that could curb 'gig' work, contracting | ReutersJohnson & Johnson (J&J) has tentatively agreed to pay approximately $700 million to settle an investigation by over 40 U.S. states into claims that it improperly marketed its talc-based baby powder without adequately warning about potential health risks. This settlement aims to prevent potential lawsuits that allege J&J concealed links between its talc powder and various cancers. The agreement, still in finalization, follows J&J's failed attempts to use bankruptcy courts to settle numerous lawsuits accusing it of hiding the health risks of its baby powder.The litigation, which has been ongoing for a decade, has had a noticeable impact on J&J's stock price and overall market performance. Initially, J&J had proposed a $9 billion settlement for all current and future baby powder claims through a bankruptcy filing of one of its units. The company had previously set aside $400 million to resolve U.S. states' consumer protection claims, which was increased following mediation.However, the proposed settlement does not include suits by Mississippi and New Mexico, which are seeking higher settlements due to their ongoing litigation efforts. These states argue for significant damages based on the extensive sale of baby powder without cancer warnings over several decades.J&J faces broader legal challenges beyond this settlement, with over 50,000 lawsuits alleging that its talc-based products, contaminated with asbestos, pose a cancer risk. Despite maintaining that its products do not cause cancer and appropriately marketing its baby powder for over a century, J&J has faced numerous court losses and large damage awards. In response to declining sales and ongoing litigation, J&J discontinued its talc-based powders in the U.S. and Canada in 2020 and pledged to replace talc with cornstarch in its products globally by the end of the previous year.J&J to Pay $700 Million to Settle States' Talc Investigation (2)In my latest column, I explore the potential of tax policy as a solution to address the critical issue of water depletion. Water, our most finite resource, has been overexploited for decades, leading to alarming groundwater depletion in the United States since 1900. As climate change disrupts the distribution of freshwater resources, tax policy emerges as a possible remedy.Drawing inspiration from the success of the Pajaro Valley's water tax, which effectively curbed water usage while mitigating saltwater infiltration and crop destruction in the California desert, I delve into the implications of such a tax on a broader scale. Overuse of aquifers goes beyond water depletion; it can result in aquifer failure, which is often difficult and expensive to repair.Tax policy, a tool for making resource users bear the true cost of their actions, is especially pertinent to address the tragedy of the commons observed in groundwater use. By internalizing the cost of water extraction and its associated damages, a water tax can incentivize responsible water use.However, the effectiveness of a water tax not only lies in its implementation but also in wise investment of the revenue generated. I propose allocating funds toward promising technologies like hydropanels that generate clean drinking water from the air, as well as improving existing water transport, storage, and recapture systems.Investments in desalination, water recycling, and more durable water storage and transport methods can further mitigate water loss. Research grants and public-private partnerships can accelerate technology development and infrastructure improvement.In conclusion, the Pajaro Valley's success with a water tax demonstrates the potential of tax policy to manage our vital water resources effectively. By deterring overuse, internalizing costs, and directing revenue toward innovative solutions, we can shift from water consumption to responsible stewardship, ensuring the sustainable management of this essential resource.Taxing Water Is the Only Way to Limit Use and Reduce Depletion Get full access to Minimum Competence - Daily Legal News Podcast at www.minimumcomp.com/subscribe

Wolf Greenfield Attorneys Preview What's Ahead in 2024

Play Episode Listen Later Jan 4, 2024 12:52

2024 is upon us and it's going to be another busy year for intellectual property law. In this episode of IP Talk with Wolf Greenfield, you'll hear Wolf Greenfield attorneys from a variety of practice areas offering their insights on what to expect in the months ahead. Here are some of the highlights.01:06 - Jeff Hsi commented on the impact the Amgen v. Sanofi decision may have on the biotech and pharmaceutical industries in 2024. 01:59 - Jonathan Roses with thoughts on the In re Cellect case. 03:11 - Following the Columbia Sportswear case, Jen Wang discusses the importance of choosing a good title in a design patent application.04:04 - John Harmon on artificial intelligence (AI) and the importance of filing patent applications in a timely manner.04:57 - In the wake of the Supreme Court's decision in the Jack Daniels case, John Strand's thoughts on the line between free expression under the First Amendment and trademark law.05:56 - John Welch previews the Vidal v. Elster trademark case to be decided by the Supreme Court in 2024.06:43 - Scott McKeown on the Patent Trial and Appeal Board's (PTAB) much anticipated updated rules package.07:32 - Zach Piccolomini expects a great deal of focus on the new Unified Patent Court (UPC) and European unitary patent. 08:27 - Ed Russavage offers some thoughts on how President Biden's Executive Order on Artificial Intelligence may impact IP, including some patent and copyright issues. 09:24 - With a number of cases challenging the drug pricing scheme in the Inflation Reduction Act, Dan Young comments on the possible implications for a company's patent strategy.10:11 - Rob Sahr on the Biden Administration's Executive Order stating that “when new technologies and products are developed with support from the US Government, they will be manufactured in the United States whenever feasible and consistent with applicable law.” 11:32 - Libbie DiMarco says 2024 may see a rise in Section 337 non-patent claims before the ITC.###

MPEP Q & A 291: When did the derivation rules go into effect?

depending aia derivation patent trial

Play Episode Listen Later Dec 19, 2023 2:30

Question: When did the derivation rules go into effect? Answer: The derivation rules went into effect 18 months after AIA enactment (March 16, 2013). Chapter Details: This question comes from the following supplement “Patent Trial and Appeal Board Consolidated Trial Practice Guide November 2019”. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable. Section Summary: This question comes from the following supplement: “Patent Trial and Appeal Board Consolidated Trial Practice… The post MPEP Q & A 291: When did the derivation rules go into effect? appeared first on Patent Education Series.

Nota Bene Episode 168: How Patent Disputes Affect the Semiconductor Industry

Sheppard Mullin's Nota Bene

Play Episode Listen Later Dec 6, 2023 37:00

In this episode, Harper Batts, partner in Sheppard Mullin Silicon Valley's Intellectual Property Group and co-leader of its Semiconductor Industry Team, joins host Scott Maberry to discuss the different forums for patent lawsuits, the complex nature of resolving semiconductor patent disputes, the timing to resolve the lawsuits and more. What We Discussed in This Episode: What are the different venues to resolve patent disputes? What sort of timing is associated with the different forums? Why has there been an uptick in filing lawsuits in international venues? Besides money, what sort of damages or relief can parties get? What is the benefit of showing competitive harm? How do you best litigate these complex matters in front of a jury? About Harper Batts Harper Batts is a partner in the Intellectual Property Practice Group located in the firm's Silicon Valley office. He is also the leader of Sheppard Mullin's Post Grant Proceedings (PTAB) Group and Semiconductor Industry Team. Harper has almost two decades of experience as an intellectual property litigator and client counselor. Harper has obtained institution on more than 90% of the IPRs he has filed – a number unmatched across the country. Numerous Fortune 500 clients have relied upon his experience to represent them in highly contentious patent disputes in venues across the country. He has been selected multiple times as a Top IP Attorney in California by the Daily Journal (including this year), and IAM Patent 1000 noted that Harper “performs adroitly in post-grant proceedings on both the patent owner and petitioner sides.” In 2022 and 2023, he obtained institution of numerous petitions for inter partes review, obtained numerous final written decisions finding all claims unpatentable, and obtained an exceptional case finding and an award of attorney's fees in the Central District of California in 2020. He focuses on immediately determining the most relevant and effective pressure points against an adversary to quickly resolve a dispute with minimal disruption and cost to a client. Harper is one of the leading attorneys for handling complex PTAB challenges across a variety of technologies. Harper has represented patent challengers and patent owners in more than 80 CBM and IPR proceedings. He has extensive experience in cases before the Patent Trial and Appeal Board as well as related appeals. About Scott Maberry As an international trade partner in Governmental Practice, J. Scott Maberry counsels clients on global risk, international trade, and regulation. He is also a past co-chair of the Diversity and Inclusion Working Group for the Washington D.C. office, serves on the firm's pro bono committee, and is a founding member of the Sheppard Mullin Organizational Integrity Group. Scott's practice includes representing clients before the U.S. government agencies and international U.S. Department of Treasury's Office of Foreign Assets Control (OFAC), the Department of Commerce's Bureau of Industry & Security (BIS), the Department of Commerce Import Administration, the Department of Homeland Security (DHS), the Department of State Directorate of Defense Trade Controls (DDTC), the U.S. Department of Justice (DOJ), the International Trade Commission (ITC), and the Committee on Foreign Investment in the U.S. (CFIUS). He also represents clients in federal court and grand jury proceedings, as well as those pursuing negotiations and dispute resolution under the World Trade Organization (WTO), North American Free Trade Agreement (NAFTA) and other multilateral and bilateral agreements. A member of the World Economic Forum Expert Network, Scott also advises the WEF community in the areas of global risk, international trade, artificial intelligence and values. Contact Information Harper Batts Scott Maberry Thank you for listening! Don't forget to SUBSCRIBE to the show to receive two new episodes delivered straight to your podcast player every month. If you enjoyed this episode, please help us get the word out about this podcast. Rate and Review this show on Apple Podcasts, Amazon Music, Google Podcasts or Spotify. It helps other listeners find this show. This podcast is for informational and educational purposes only. It is not to be construed as legal advice specific to your circumstances. If you need help with any legal matter, be sure to consult with an attorney regarding your specific needs.

Fri 9/29 - Suffolk Law is Awesome, IRS May Furlough Staff, NLRB Nationwide Ruling Against Starbucks, USPTO Stays Open if Gov Shuts Down and SCOTUS Case on 2A

ai legal meat ip implications appeals potatoes intellectual property sterne kessler ainsworth united states court federal circuit patent trial garrett clark appeal board ptab

Play Episode Listen Later Sep 29, 2023 11:48

On this day in legal history, September 29, 1983, the War Powers Act was invoked for the first time – by President Ronald Reagan in order to keep a U.S. Marine presence in Lebanon.On September 29, 1983, the U.S. House of Representatives voted 270 to 161 to invoke the War Powers Act concerning the deployment of American Marines in Lebanon for an additional 18 months. The resolution had bipartisan support, including from President Reagan. This marked the first time the House invoked the War Powers Act, a law designed to limit the President's war-making powers, which was enacted a decade earlier. The Senate would go on to approve the resolution.President Reagan thanked the House for its bipartisan vote, emphasizing the importance of cooperation between the legislative and executive branches. However, the vote also revealed concerns among lawmakers about the U.S.'s role in the Middle East and the potential for the Marines to be drawn into a larger conflict. Some representatives warned that the resolution was tantamount to a declaration of war and could result in American casualties.The debate in the House was marked by a sense of urgency but also caution. Lawmakers were torn between the risks of pulling out and staying in Lebanon, with some describing it as a "very unhappy choice." Despite reservations, the prevailing sentiment was that Congress had to back the resolution to support the President during a crisis.The War Powers Act mandates that the President must notify Congress when American troops face combat and withdraw them within 60 to 90 days unless Congress authorizes their continued deployment. Interestingly, President Reagan had not made such a notification, but the compromise resolution asserted the Act's applicability, making Reagan the first President to acknowledge its validity. This failure to abide by the initial notification requirement, coupled with the later request for an extension, in full light of history, was a major step forward in placing the power to declare war in the office of the presidency.At the time, the Senate was also debating an amendment requiring more detailed reporting from the President on the Marines' mission in Lebanon. The House had rejected a similar amendment, which would have postponed a decision on the Marines' future for 60 more days. The debate touched on the balance of power between Congress and the President, the definition of success in Lebanon, and the long-term implications of U.S. involvement in the Middle East. In the ensuing 40 years, every president has either explicitly or tacitly leaned on the War Powers Act to substantiate action abroad. By way of brief background, the War Powers Resolution mandates that the U.S. President can only deploy armed forces abroad through a formal declaration of war by Congress, "statutory authorization," or in the event of a national emergency caused by an attack on the U.S. or its armed forces. The President must notify Congress within 48 hours of committing troops to military action and cannot keep them deployed for more than 60 days without an additional 30-day withdrawal period, unless Congress authorizes the use of military force or declares war. The resolution was enacted by a two-thirds majority in both the House and Senate, overriding President Richard Nixon's veto. Despite its provisions, allegations have been made that the resolution has been violated in the past, such as George W. Bush's invasion of Iraq in 2003 and Bill Clinton's involvement in the NATO bombing of Yugoslavia in 1999. While Congress has disapproved of these incidents, no successful legal actions have been taken against any President for such alleged violations.Suffolk University Law School in Boston has a significant impact on the Massachusetts legal landscape despite its lower ranking in national lists. As of 2021, the school is the leading source of judges in the state, contributing 118 out of 440 judges on the Massachusetts bench. Additionally, three of the seven justices on the state's highest court and Judge Gustavo Gelpí of the US Court of Appeals for the First Circuit are Suffolk alumni. High-profile roles in the state, such as the Secretary of State and Chief Public Defender, are also filled by Suffolk graduates.However, Suffolk Law ranks fifth in the Boston area and falls in the bottom third nationwide, according to U.S. News & World Report. Despite this, the school has a high retention rate for local graduates, which is crucial for Boston's legal market that faces competition from larger cities like New York and Washington, D.C. In 2022, 73% of Suffolk Law graduates took their first-year job in Massachusetts, a higher percentage than graduates from Boston University, Northeastern, and Boston College law schools.The school's strong presence in the state judiciary and public service sectors has created a cycle that attracts students interested in these fields. For example, state Sen. John Cronin chose Suffolk for its reputation in producing practice-oriented lawyers with distinguished careers in public service. The school's curriculum focuses on experiential programs, allowing students to gain real-world experience.Suffolk Law School also addresses a growing need in Boston's legal market by training scientists to become lawyers for biotech clients. The school offers a nighttime program in intellectual property law, attracting individuals with doctorates in science. Firms like Foley Hoag LLP and Foley & Lardner LLP have hired these specialists and sponsored their education at Suffolk's evening program.In summary, Suffolk University Law School plays a pivotal role in Massachusetts' legal ecosystem, particularly in the judiciary and public service sectors, despite its lower national ranking. Its strategic programs and high local graduate retention rate make it a cornerstone in the state's legal community. It stands as a clear example of the shortcomings and difficulties in trying to reduce a school's educational worth to a hierarchical ranking scale. Underdog Boston School Churns Out Judges, Big Law Partners (1)The IRS has released a plan outlining its operations in the event of a government shutdown, which appears increasingly likely if Congress fails to reach a funding agreement by October 1. The plan involves furloughing approximately 60,000 IRS employees, a change from last year's contingency plan. About one-third of the workforce will continue to work, funded by the Inflation Reduction Act, special compliance funding, and user fees. Essential functions like mail processing, criminal law enforcement, disaster relief transcript processing, and income verification for mortgage lenders will continue.However, the IRS will halt all audit functions, return examinations, non-automated collections, and will not answer taxpayer phone calls. Doreen Greenwald, President of the National Treasury Employees Union, expressed concern over the stress and financial insecurity that furloughed IRS workers would face. She also warned that a shutdown could exacerbate the agency's existing backlog by preventing new hires.Initial discussions had suggested that the IRS would remain fully operational by using funds from the Democrats' Inflation Reduction Act, which are not subject to annual appropriations and are available until September 2031. During the last government shutdown in 2018-2019, many IRS operations were halted, but tax refund checks would have been issued if the shutdown extended into tax-filing season. Eileen Sherr of the American Institute of CPAs advised taxpayers to use e-filing for error-free and direct-deposit refunds, as these will be the only ones processed during a shutdown.IRS to Partially Close, Furlough Staff in Federal Shutdown (2)A National Labor Relations Board (NLRB) judge has ruled that Starbucks violated federal labor law by increasing wages and benefits only for employees in non-unionized stores across the U.S. This marks the first nationwide ruling against Starbucks, which has been resisting a wave of unionization for the past two years. The judge, Mara-Louise Anzalone, stated that Starbucks engaged in a "corporate-wide effort to manipulate its employees' free choice" by tying their pay and benefits to their willingness to avoid organizing. The ruling orders Starbucks to compensate thousands of unionized workers who were unlawfully denied increased wages and benefits.This decision is significant as it is the first to find Starbucks in violation of labor laws on a nationwide scale, as opposed to previous rulings that were limited to individual stores. The unionization campaign against Starbucks has led to nearly 350 organized cafes in 37 states, and the NLRB has filed almost 100 complaints against the company. Of these, at least 75 are still pending.Starbucks has publicly denied any legal wrongdoing and argued that increasing pay for unionized workers would itself be illegal, as federal law prohibits unilateral changes to union workers' conditions. However, Judge Anzalone dismissed this argument, stating it wasn't made in good faith. She also ruled that Starbucks' actions illegally discouraged other workers from joining the union. While the judge did not order additional training for Starbucks managers on labor laws, she did mandate that the CEO read a notice of employee rights to U.S. workers and post it in every store.Starbucks Illegally Kept Wages, Benefits From Union Workers (1)The U.S. Patent and Trademark Office (PTO) has enough funds to continue operations for about three months in the event of a government shutdown. The agency plans to use its $1.04 billion operating reserves to cover patent and trademark expenses. The PTO is primarily self-funded through patent and trademark filing fees but still requires annual appropriations from Congress. In the past, the PTO has remained open during government shutdowns, including the 35-day shutdown from December 2018 to January 2019.However, some patent attorneys have expressed concerns about the PTO's long-term ability to function if appropriations are not made. The agency's financial stability during short-term shutdowns is a change from the past when Congress would divert part of the PTO's revenue to fund other government activities. Although a provision to prevent such diversion was removed from the America Invents Act of 2011, Congress has since committed not to divert PTO fees.Legal practitioners seem largely unconcerned about a potential shutdown affecting the PTO, as the agency has successfully weathered past shutdowns. The Patent Public Advisory Committee and PTO officials have planned for such contingencies by increasing the reserve fund. If a shutdown were to last beyond the reserve's capacity, most PTO employees would be furloughed, and the agency's regional offices would close.A prolonged shutdown could also affect the rulemaking process, including proposed changes to the Patent Trial and Appeal Board and requests for comment on artificial intelligence issues. Other agencies involved in the rulemaking process, like the Office of Information and Regulatory Affairs, could be impacted by furloughs. Finally, while the PTO would continue to collect fees, it would not be able to use those funds without congressional authority.Patent Office Has Funds to Stay Open Three Months Amid ShutdownThe U.S. Supreme Court is set to hear a case involving Zackey Rahimi, who argues that his Second Amendment rights were violated by a law preventing individuals under a domestic violence restraining order from owning firearms. This case could have broader implications for where guns can be carried, including in malls and parks. The court's decision will be its first opportunity to clarify its 2022 ruling in New York State Rifle & Pistol Ass'n v. Bruen, which has led to varying interpretations in lower courts.In Bruen, the Supreme Court established that the government must prove a law restricting gun access aligns with the nation's historical tradition of firearm regulation. However, this has led to inconsistent rulings, as judges lack clear guidance on how closely a modern law must resemble historical laws to pass constitutional muster. The ambiguity has particularly affected laws prohibiting gun possession in "sensitive places" like parks and libraries.Judges have been divided on what counts as a "sensitive place," leading to contrasting rulings. For example, a New Jersey judge ordered the state to stop enforcing provisions that prohibit gun possession in parks and libraries, while a similar challenge in New York received the opposite treatment. Legal experts anticipate that the Rahimi case could provide much-needed clarity on how to apply the Bruen test.If the court sides with Rahimi, it could have far-reaching implications for existing gun legislation, including laws about carrying firearms in "sensitive places." The case also raises questions about linking modern rights to historical contexts that did not contemplate contemporary issues, such as domestic violence, which was not prosecuted as a crime until the late 20th century.New Supreme Court Case a Test for Carrying Guns in Malls, Parks Get full access to Minimum Competence - Daily Legal News Podcast at www.minimumcomp.com/subscribe

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M&P Ep. 224 Paul A. Ainsworth, Sterne Kessler

Silicon Slopes

Play Episode Listen Later Sep 13, 2023 32:00

In this episode of Meat and Potatoes, host Garrett Clark meets with seasoned director in Sterne Kessler's Trial & Appellate Practice Group, Paul Ainsworth. In our discussion, Paul shares his experience as an intellectual property trial attorney. He shares his practice in patent and trade secret disputes, which has taken him to federal district courts, the U.S. International Trade Commission (ITC), and even the United States Court of Appeals for the Federal Circuit. Paul also shares how he frequently represents clients in proceedings before the Patent Trial and Appeal Board (PTAB). Join us in this exciting episode as we tackle everything intellectual property. So, if you are wondering when you should apply for patents, this episode is just for you. 0:00 Introduction to the show 1:00 What is IP 3:25 Paul A. Ainsworth 4:45 More popular industries and marketing approach 7:40 How to protect IP 10:15 Sterne Kessler advantage 16:35 Reasons to protect 21:55 Implications of AI 31:00 Closing remarks Show links: https://www.sternekessler.com Social: Twitter - https://twitter.com/siliconslopes Instagram - https://www.instagram.com/siliconslopes/ LinkedIn - https://www.linkedin.com/company/silicon-slopes/ YouTube - https://www.youtube.com/channel/UC8aEtQ1KJrWhJ3C2JnzXysw

M&P Ep. 224 Paul A. Ainsworth, Sterne Kessler

Meat & Potatoes Podcast

Play Episode Listen Later Sep 13, 2023 32:00

In this episode of Meat and Potatoes, host Garrett Clark meets with seasoned director in Sterne Kessler's Trial & Appellate Practice Group, Paul Ainsworth. In our discussion, Paul shares his experience as an intellectual property trial attorney. He shares his practice in patent and trade secret disputes, which has taken him to federal district courts, the U.S. International Trade Commission (ITC), and even the United States Court of Appeals for the Federal Circuit. Paul also shares how he frequently represents clients in proceedings before the Patent Trial and Appeal Board (PTAB). Join us in this exciting episode as we tackle everything intellectual property. So, if you are wondering when you should apply for patents, this episode is just for you. 0:00 Introduction to the show 1:00 What is IP 3:25 Paul A. Ainsworth 4:45 More popular industries and marketing approach 7:40 How to protect IP 10:15 Sterne Kessler advantage 16:35 Reasons to protect 21:55 Implications of AI 31:00 Closing remarks Show links: https://www.sternekessler.com Social: Twitter - https://twitter.com/siliconslopes Instagram - https://www.instagram.com/siliconslopes/ LinkedIn - https://www.linkedin.com/company/silicon-slopes/ YouTube - https://www.youtube.com/channel/UC8aEtQ1KJrWhJ3C2JnzXysw

ai legal meat ip implications appeals potatoes intellectual property sterne kessler ainsworth united states court federal circuit patent trial garrett clark appeal board ptab

Ex-USPTO GC Nick Matich on Rulemaking & the PTAB

The SEP Couch with Tim Pohlmann

Play Episode Listen Later Jul 14, 2023 59:59

USPTO Director Kathi Vidal's decision to issue the Advance Notice of Proposed Rulemaking (ANPRM) is the latest major controversy surrounding the Patent Trial and Appeal Board (PTAB). The American Invents Act (AIA) created the PTAB to supposedly provide a cheaper, faster alternative to district court patent litigation. However, the PTAB quickly gained a reputation for being a patent “death squad” that allows defendants to repeatedly challenge the same patents until those patents are invalidated. During the last administration, former USPTO Director Andrei Iancu tried to correct that by limiting when patents could be challenged at the PTAB. Because those changes never finished going through the federal government's rulemaking process, Vidal was able to quickly roll them back. The ANPRM now presents a litany of its own proposals for fixing fix how the PTAB operates and heated opposition on all sides. Nicholas Matich joins Eli to talk about the ANPRM and what's likely to happen with its proposals. Nick, who is now Principal at the patent litigation powerhouse McKool Smith, served as USPTO's general counsel under Iancu after working at the White House and as Deputy GC of the OMB. This provides him with an unmatched understanding of how the rulemaking process actually works for proposals emanating from the USPTO. Nick and Eli also discuss: What Nick learned from working with Viet Dinh and/or Paul Clement at Bancroft PLLC How the OMB reviews & approves agency rules Serving as USPTO's GC Advice for influencing USPTO's rules Iancu's Fintiv factors & how to explain swift reversal Why the ANPRM was a mistake Advice for future USPTO Directors

law advice white house serving laws lawyers principal vidal omb uspto rulemaking paul clement iancu patent trial ptab appeal board ptab matich anprm

#24 Eli Mazour | The art of SEP claim drafting

Play Episode Listen Later Jul 4, 2023 42:11

Eli Mazour is a Partner with Harrity & Harrity LLP where he leads the firm's patent prosecution team. Eli's practice focuses on helping large technology companies build valuable, high-quality SEP portfolios in an efficient manner. In this role, he develops and implements best practices for managing workflow and innovative, data-driven patent prosecution strategies for reaching favorable results at the USPTO. Eli also helps clients evaluate existing patent portfolios, identify strategic areas for patenting, and create processes for harvesting disclosures of patentable inventions. In addition, he has been involved with licensing negotiations, patent infringement investigations, clearance of products (freedom to operate opinions), and patent litigation. As a result, he is keenly aware of the pitfalls to avoid and opportunities to grasp during patent prosecution. Eli is also the creator and host of the Clause 8 podcast, which features interviews with the most interesting members of the IP community.Eli has a strong track record for drafting SEPs for clients that have high-quality SEP portfolios such as Qualcomm. In the SEP Couch podcast, Eli elaborates on why SEPs are so special and different from other patents. He explains that drafting SEP claims is much more complex since the language used in an invention disclosure may be different compared to the language used in a standards document. And a standard still develops and changes which makes it even more difficult to keep mapping claims to evolving standards section. Eli works closely with the inventors while also monitoring standards development. He also interviews the USPTO examiners to better understand what scope of a claim will likely be accepted.SEPs must not only be essential but also valid. An additional feature described in a claim creates the risk that prior art exists somewhere. Therefore, if a feature does not make it in a standard, he rather focuses on claim language to use more specific language.The USPTO allows third parties to submit prior art in a so-called inter partes review (IPR) presented before the Patent Trial and Appeal Board (PTAB). This possibility has created new business models such as the company Unified Patents which helps its clients to “kill” SEPs in targeted invalidation campaigns. Such practices have increased the requirements for drafting valid patents, even though Eli explains that especially large SEP holders such as Qualcomm have such a high-quality patent portfolio that it does not matter if a few patents are found invalid. There is a proposal for patent reform in the US patent system (USPTO's new Catch-22) that could make it much more difficult to file IPRs, but Eli does not believe it will pass.Finally, Eli comments on the EU Commission's draft of a proposed SEP regulation which includes a register of essential SEPs. Eli argues that he cannot see how third parties should be able to efficiently determine essentiality which is a very complex task that may take days or even weeks to just claim chart one patent.

partner ip claim drafting qualcomm clause uspto eu commission ipr seps patent trial iprs appeal board ptab

Mon 6/5 - Law School Admissions Normalize, SEC Dismisses Data Access Cases, Solicitor General Whoopsies and LOTR Unauthorized Sequel Lawsuit

Play Episode Listen Later Jun 5, 2023 8:12

On this day in legal history the landmark Supreme Court decision of Sweatt v. Painter was decided. In 1946, Heman Marion Sweatt, an African American man, applied to the all-white University of Texas School of Law but was denied admission based on his race. This decision was made in accordance with the segregated policy outlined in Article VII, Section 7 of the Texas Constitution. Sweatt took legal action with the support of the NAACP, seeking enrollment at the university. Initially, a temporary law school called the School of Law of the Texas State University for Negroes was established for black students. It provided access to resources such as the Texas Supreme Court library and had faculty members from the University of Texas School of Law. Sweatt's case was dismissed by a state court after the black law school was established. However, Sweatt appealed to the United States Supreme Court, arguing that the Texas admissions system violated the Equal Protection Clause of the Fourteenth Amendment. On June 5, 1950, the Supreme Court ruled that in states where white students had access to graduate and professional schools while black students did not, black students must be admitted to the white institutions. This decision led to Sweatt's admission to the University of Texas School of Law, along with the enrollment of other black students in subsequent years. The impact of the case was limited to graduate and professional programs at the University of Texas, as black undergraduate students were still not admitted, although graduate students could take undergraduate courses if necessary for their program.With Sweatt v. Painter and another case, McLaurin v. Oklahoma State Regents for Higher Education, the Supreme Court began the long process of overturning the separate but equal doctrine in public education–first by requiring graduate and professional schools to admit black students.Law school applications in the United States have returned to normalcy after the pandemic-induced surge in 2021. The number of applicants has decreased for the second consecutive year, indicating that the previous year's increase was an anomaly attributed to COVID-19. As of Thursday, law school applicants were down by 2.4% compared to the previous year. The Law School Admission Council expects the national applicant pool for this cycle to be slightly smaller than the year before, which was already 12% smaller than in 2021. The decrease in applications aligns with the trend of the past five years, where the number of applicants remained relatively consistent. The increase in applications in 2021 was attributed to various factors, including the disruption of the job market for college graduates caused by the pandemic, protests over racial inequality, and the political climate. The pool of law school applicants continues to become more diverse, with applicants of color comprising 46.5% of the current pool. It's a 'return to normalcy' for law school admissions | ReutersThe U.S. Securities and Exchange Commission (SEC) has dismissed 42 enforcement cases after discovering that its enforcement staff had unauthorized access to materials intended for commission officials handling those cases. The SEC conducted a review of the matter, which was initially raised in April 2022 when it was revealed that certain databases allowed enforcement staff to view legal materials meant for the in-house court officials. The SEC acknowledged the error and expressed regret, emphasizing its commitment to rectify the situation. The improper access was deemed accidental, as administrative staff in the enforcement arm unintentionally accessed adjudication materials while collecting relevant information. An internal review concluded that the improper access had no impact on the decisions made by the enforcement staff or the officials reviewing the cases. However, the SEC decided to dismiss all pending cases that were affected by the improper access, primarily involving individuals and smaller firms. Additionally, the SEC agreed to lift industry bans on 48 individuals who had requested relief from the agency and were also implicated in the incident.US SEC to dismiss 42 enforcement cases after internal data mishap | ReutersThe US Solicitor General has admitted to misleading the Supreme Court in a 2017 patent case involving Nike and Adidas. The misrepresentation occurred during an argument about the validity of inter partes review, a process that allows the US Patent and Trademark Office (USPTO) to reexamine issued patents. By way of very brief background, inter partes review is a process in the United States patent system that allows a third party to challenge the validity of an issued patent before the Patent Trial and Appeal Board (PTAB). It provides a mechanism for reviewing and potentially invalidating patents based on prior art and other grounds, offering an alternative to litigation in resolving patent disputes. In this case, the Solicitor General apologized, stating that the USPTO failed to alert them about the mistake. This is not the first time the Solicitor General has corrected statements made to the justices. The admission came in the context of a separate whistleblower dispute raised by Judge Michael Fitzpatrick, who expressed concerns about attempts to expand the number of judges in the Nike case. The Merit Systems Protection Board ruled in favor of the judge, noting that the Solicitor General's office was not made aware of the potential mistake. The government acknowledged the need for absolute candor and accuracy in its representations to the Court. Solicitor General Office Admits It Misled Court in Patent CaseThe estate of J.R.R. Tolkien, the renowned author of "The Lord of the Rings" trilogy, has filed a copyright lawsuit in Los Angeles federal court against author Demetrious Polychron. The estate accuses Polychron of writing and selling an unauthorized sequel titled "The Fellowship of the King." The lawsuit comes after Polychron himself filed a copyright suit against the Tolkien Trust and Amazon Inc., alleging infringement of his sequel's copyrights following the release of the TV series "The Lord of the Rings: The Rings of Power." The estate discovered Polychron's unauthorized sequel online in March and sent a cease-and-desist letter. Despite the estate's policy of not licensing writers to create sequels, Polychron persisted in pitching his written sequel. The estate attempted to resolve the dispute through a call, but Polychron continuously postponed, citing illness and instead Polychron filed a lawsuit against the Tolkien Estate and others. The estate's complaint states that Polychron's sequel incorporates various copyright-protected elements from the original trilogy, including verbatim passages, characters, and the entire plot premise. Online reviews of the sequel suggest that readers were aware it was an unauthorized derivative work.Tolkien Estate Sues Over Unauthorized ‘Lord of the Rings' Sequel Get full access to Minimum Competence - Daily Legal News Podcast at www.minimumcomp.com/subscribe

IP Offices Series 3/3 - What Does it Take to Transform IP, with Kathi Vidal, Director of USPTO, USA

Brand & New

Play Episode Listen Later Apr 26, 2023 30:49

Most organizations around the globe have faced a significant number of challenges over the last couple of years. The same can be said for intellectual property (IP) offices. From the pandemic to financial market turmoil, through supply chain issues, increased cyberthreats, IP offices have navigated these hurdles and probably more, stretching their IT, budget, and organizational resources in unexpected ways. Yet, IP asset registrations have been soaring globally, and IP offices generally seem to have been riding those waves with success, often transforming challenges into opportunities to evolve to better meet the needs of creators, businesses, and the market.Beyond their role as processors of IP applications and registrations or an inventory of registered assets, how do IPOs envision their mission in 2023? What sort of initiatives do they carry out to ensure they stay in tune with innovators, businesses big and small, and the market at large? How much of a transformative force can they be for the IP world? Our guest today is Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO)—America's Innovation Agency. As the chief executive of the USPTO, Ms. Vidal leads one of the largest IP offices in the world, with more than 13,000 employees and an annual budget of more than US $4 billion. She is the principal IP advisor to the U.S. President and its administration through the Secretary of Commerce, and is focused on incentivizing and protecting U.S. innovation, entrepreneurship, and creativity. Prior to joining the USPTO, Ms. Vidal was Managing Partner for the Silicon Valley office of the law firm Winston & Strawn, a position she held since 2017, representing both patent holders and defendants, both innovators and startup companies with limited resources, and some of the most successful and well-known companies, in U.S. courts and the International Trade Commission. She has also been deeply involved in practice before the U.S. Patent Trial and Appeal Board (PTAB), Federal Circuit appeals, and the Supreme Court. Join Ms. Vidal for a fireside chat at INTA's upcoming 2023 Annual Meeting Live+ in Singapore. This event takes place on Thursday, May 18, 12:45 pm–1:15 pm.Brand & New is a production of the International Trademark AssociationHosted by Audrey Dauvet - Contribution of M. Halle & S. Lagedamond - Music by JD BeatsFOR MORE INFORMATION, VISIT INTA.ORGTo go further: https://www.linkedin.com/in/kathividal/ Also of interest:www.uspto.gov/about-us/executive-biographies/kathi-vidalJumpstart your career with LEAP! (Director's Blog: the latest from USPTO leadership, November 1, 2022)USPTO Ideas For Bolstering Robustness And Reliability Of Patents Demand Attention And Stakeholder Input(foley.com, October 31, 2022)Where are U.S. women patentees? Assessing three decades of growth (USPTO - Office of the Chief Economist, October 2022)Engagement, Collaboration, and Outreach: A Conversation with the USPTO's Kathi Vidal (INTA Bulletin, February 8, 2023)

Commissioner Stoll on Being Part of ‘First Family' of Patent Law

america director office ip commissioners legislation proposals patent international affairs clause first family stoll uspto patent law patent trial

Play Episode Listen Later Mar 24, 2023 42:53

Former Patent Commissioner Robert Stoll joins the Clause 8 podcast to talk about working his way up from being an examiner to being the commissioner over his 30+ year-long career at the USPTO. As commissioner, Bob helped former USTPO Director David Kappos implement the American Invents Act (AIA) and transform how the USPTO's patent examiners operate. Before that, he served as USPTO's head of the Office of Legislation and International Affairs under Director John Dudas. Now out of government, he freely shares what he thought about what happened at the USPTO during his time there as an executive, why he stayed, and what he thinks about the current state of America's patent system. He also talks about what it's like to be part of the “first family” of IP law, which includes Federal Circuit Judge Kara Stoll. In this episode, Eli and Bob also discuss: How so many of Bob's family members ended up serving in senior IP roles in every branch of US government and internationally Bob's secrets for longevity & success at the USPTO How he became Commissioner Relationship with David Kappos Whether the USPTO Director is really in charge of an administration's patent policy Creation of the Patent Trial and Appeals Board (PTAB) and post-grant proceedings Role of “patent troll” narrative Whether there is a “patent quality” problem Director Vidal's exercise of her Director review power Proposals to record examiner interviews Importance of IP bar organizations in shaping policies

How the PTAB Killed Molly Metz's Patents

IP Talk with Wolf Greenfield

Play Episode Listen Later Feb 10, 2023 62:21

Five-time world jump rope champion Molly Metz and her husband Dirk Tomsin talk about the highs and lows of innovation, entrepreneurship, and relying on America's patent system. A serious car accident spurred Molly to invent a new type of jump rope that revolutionized jump roping and the use of jump roping for CrossFit. Thanks to patents that were awarded to her by the US Patent Office (USPTO) for the invention, Molly's company – JumpNrope – started making the jump ropes completely in America and licensing the patents to various fitness companies that eagerly relied on her jump roping technology. It should've been the perfect story that the USPTO could tout about how America's economy benefited from a woman inventor taking advantage of the patent system. Instead, Rogue Fitness - the largest fitness distributor for CrossFit –challenged Molly's patents at the USPTO's Patent Trial and Appeal Board (PTAB). Molly and Dirk are now dealing with the aftermath of that and fighting for a better future for other inventors. On this episode, Molly, Dirk, and Eli discuss: Molly's start in the world of jump roping in Boulder, Colorado How a car accident spurred her to invent Decision to file patent applications Examination process at the USPTO & rewarding feeling of obtaining a patent Decision to manufacture the jump ropes in Colorado and not China Experience of successfully licensing the patented jump rope technology to other companies When the patent system worked for Molly Rogue Fitness' initial interest in selling Molly's jump rope, licensing negotiations, and decision to infringe Negative impact of Rogue Fitness' refusal to license the technology Working with patent litigation attorneys to enforce patents Rogue Fitness challenging the patents at the PTAB based on two patents from 1978 and 1979 Molly and Dirk's experience with the subsequent PTAB proceedings and Federal Circuit appeal Prof. Dennis Crouch's analysis of the PTAB decision Supreme Court petition to secure pre-cancellation damages USPTO's effort to increase number of women patentees Advice for other women and small business inventors

Blaine Hackman on Wolf Greenfield's Thriving Post-Grant Practice

Play Episode Listen Later Feb 8, 2023 21:25

Blaine Hackman focuses his Wolf Greenfield practice on post-grant proceedings before the US Patent and Trademark Office (USPTO), and related patent litigation, prosecution, and counseling. He regularly represents clients in inter partes review (IPR) and post-grant review (PGR) proceedings before the Patent Trial and Appeal Board (PTAB), with an emphasis on biotechnology and pharmaceutical technologies. In this episode of IP Talk with Wolf Greenfield, Blaine offers an overview of the firm's post-grant practice. Here are some of the highlights: 00:49 - An overview of Wolf Greenfield's post-grant practice. 03:12 - The difference between a jury trial and post-grant proceeding. 05:57 - For biotech and pharma companies, choosing the right path is a crucial choice. 07:51 - Changes for companies looking to claim newly discovered life science technologies or improvements to existing technologies. 08:55 - How to evaluate the likelihood of success prior to either a PTAB proceeding or jury trial. 11:04 - Recent changes to post-grant proceedings. 14:40 - The importance of expert testimony in PTAB proceedings and jury trials.16:32 - Life sciences companies often miss opportunities by overlooking the PTAB. 18:50 - Implications for future legal proceedings after going the post-grant route. 20:10 - Wolf Greenfield's expanding post-grant practice in 2023.

practice wolf thriving implications greenfield hackman pgr us patent ipr trademark office uspto patent trial ptab appeal board ptab

One group of administrative judges needs more independence from its agency

Federal Drive with Tom Temin

Play Episode Listen Later Jan 18, 2023 17:14

To keep patent disputes out of the courts, Congress formed the Patent Trial and Appeal Board a few years back in the America Invents Act. A survey of patent judges conducted by the Government Accountability Office came up with a disturbing finding. Three quarters of the judges said U.S. Patent and Trademark Office management pressured them to change their decisions. To get more on this story, Federal Drive host Tom Temin spoke with Candice Wright, GAO's Director for Science, Technology Assessment, and Analytics. Learn more about your ad choices. Visit podcastchoices.com/adchoicesSee Privacy Policy at https://art19.com/privacy and California Privacy Notice at https://art19.com/privacy#do-not-sell-my-info.

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One group of administrative judges needs more independence from its agency

Federal Drive with Tom Temin

Play Episode Listen Later Jan 18, 2023 17:14

To keep patent disputes out of the courts, Congress formed the Patent Trial and Appeal Board a few years back in the America Invents Act. A survey of patent judges conducted by the Government Accountability Office came up with a disturbing finding. Three quarters of the judges said U.S. Patent and Trademark Office management pressured them to change their decisions. To get more on this story, Federal Drive host Tom Temin spoke with Candice Wright, GAO's Director for Science, Technology Assessment, and Analytics. Learn more about your ad choices. Visit megaphone.fm/adchoices

director science congress agency independence judges analytics patent administrative government accountability office trademark office one group technology assessment appeal board patent trial america invents act federal drive tom temin

Mind the Gap: Episode 6: AI or Humans: Which is the Inventor?

To the Extent That...

Play Episode Listen Later Oct 17, 2022 58:18

From self-driving cars to voice automation in homes, inventors are developing ambitious AI technologies that will continue to impact the ways in which we learn, work, communicate, and travel. According to the United States Patent and Trademark Office (USPTO), the number of AI-related patents increased at an astonishing number, from 4,598 in 2008 to 20,639 in 2018. In this episode of Mind the Gap, Rama Elluru, a former Administrative Patent Judge on the Patent Trial and Appeal Board at the USPTO, and Christian Hannon, a patent attorney in the USPTO's Office of Policy and International Affairs, share their perspectives on how AI is impacting patent law and the inventor community.

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Turning Your Intellectual Property Into a Company with Keegan Caldwell

Retire As You Desire

Play Episode Listen Later Sep 1, 2022 37:16

In this part 2 episode, Bill is joined once again by the Founder and Managing Partner of Caldwell Intellectual Property Law, Keegan Caldwell. Today they talk more about intellectual property, creating and applying for patents, and how you can use them. Keegan also shares what keeps him motivated to take action daily. Dr. Caldwell has extensive and diverse experience with advising clients from innovation conception to 9-figure monetization events. Keegan works with start-ups and established entities to develop patent portfolios with as many options as possible for an ROI. Keegan has assisted clients with a broad spectrum of tech and life sciences patent issues and takes pride in curating high-value patent portfolios. Keegan is exceptionally knowledgeable with respect to Patent Trial and Appeal Board (PTAB) procedures. His experience working at the United States Patent and Trademark Office in the Central Reexam Unit and his deep patent prosecution experience uniquely position him to provide valuable insights during a PTAB procedure to help clients win. Outside of work, Keegan enjoys contributing to his community and his family. He has served as both a volunteer and an executive board member of RESET since 2010. RESET is a DC-based philanthropic organization that enhances STEM programs with hands-on science and related field trips. He has served as the Chair of the MIT Enterprise Forum of Cambridge's Innovation Series since 2018. The MITEF is a thought-leadership program that features a wide variety of speakers from multiple industries and technologies, bringing a wide-ranging look at the issues, technologies, and market forces that drive innovation, commercialization, and market adoption. Additionally, Keegan sits on the Board of Trustees at the Boston Children's Museum. Learn more about Keegan at: Website: https://caldwellip.com/ LinkedIn: https://www.linkedin.com/in/keegancaldwellphd/ Email: keegan@caldwellip.com Show notes: [2:15] What was his motivation to run daily? [6:17] What is patentable? [12:45] Creating and applying for patents [25:43] What can you do with IP? And how do you enforce it? [32:17] His advice for someone who wants to create value for their company [37:04] Outro Connect with Bill Bloom Web: https://www.bloomfinancialco.com/ https://bloomfinancialco.kartra.com/page/bNJ87 Email: bill@bloomfinancial.us LinkedIn: https://www.linkedin.com/in/bloomfinancial/ FB: https://www.facebook.com/retireasyoudesirepodcast Securities and investment advisory services offered through Woodbury Financial Services, Inc. (WFS) member FINRA/SIPC. WFS. is separately owned and other entities and/or marketing names, products or services referenced here are independent of WFS. Views expressed in this podcast are for general informational purposes only and are not intended to provide or be a substitute for specific professional financial, tax or legal advice or recommendations for any individuals. Information is based on sources believed to be reliable; however, their accuracy or completeness cannot be guaranteed.

Your Thoughts Could Be Worth Millions with Keegan Caldwell

Retire As You Desire

Play Episode Listen Later Aug 25, 2022 44:20

Today Bill is joined by the Founder and Managing Partner of Caldwell Intellectual Property Law, Keegan Caldwell. They talk about intellectual property law, how Keegan started in the industry, and what made him get into it. He also shares his journey from childhood, the Marine corps, and finally making the first step to his success. Dr. Caldwell has extensive and diverse experience with advising clients from innovation conception to 9-figure monetization events. Keegan works with start-ups and established entities to develop patent portfolios with as many options as possible for an ROI. Keegan has assisted clients with a broad spectrum of tech and life sciences patent issues and takes pride in curating high-value patent portfolios. Keegan is exceptionally knowledgeable with respect to Patent Trial and Appeal Board (PTAB) procedures. His experience working at the United States Patent and Trademark Office in the Central Reexam Unit and his deep patent prosecution experience uniquely position him to provide valuable insights during a PTAB procedure to help clients win. Outside of work, Keegan enjoys contributing to his community and his family. He has served as both a volunteer and an executive board member of RESET since 2010. RESET is a DC-based philanthropic organization that enhances STEM programs with hands-on science and related field trips. He has served as the Chair of the MIT Enterprise Forum of Cambridge's Innovation Series since 2018. The MITEF is a thought-leadership program that features a wide variety of speakers from multiple industries and technologies, bringing a wide-ranging look at the issues, technologies, and market forces that drive innovation, commercialization, and market adoption. Additionally, Keegan sits on the Board of Trustees at the Boston Children's Museum. Learn more about Keegan at: Website: https://caldwellip.com/ LinkedIn: https://www.linkedin.com/in/keegancaldwellphd/ Email: keegan@caldwellip.com Show notes: [1:59] What was Keegan's childhood like? And how did he start his journey? [27:59] Was going to the Marine corps the smartest thing he did? [29:26] How did he start in IP? [41:04] Where to find Keegan [42:07] Keegan's core advice [44:08] Outro Connect with Bill Bloom Web: https://www.bloomfinancialco.com/ https://bloomfinancialco.kartra.com/page/bNJ87 Email: bill@bloomfinancial.us LinkedIn: https://www.linkedin.com/in/bloomfinancial/ FB: https://www.facebook.com/retireasyoudesirepodcast Securities and investment advisory services offered through Woodbury Financial Services, Inc. (WFS) member FINRA/SIPC. WFS. is separately owned and other entities and/or marketing names, products or services referenced here are independent of WFS. Views expressed in this podcast are for general informational purposes only and are not intended to provide or be a substitute for specific professional financial, tax or legal advice or recommendations for any individuals. Information is based on sources believed to be reliable; however, their accuracy or completeness cannot be guaranteed.

A Response to: Ten Years On: The America Invents Act and the role of the Patent Trial and Appeal Board in resolving patent disputes

Teleforum

Play Episode Listen Later Jul 28, 2022 63:14

Join us on July 27 to hear three experts give a response to our April 26th event on The America Invents Act and the role of Patent Trial and Appeal Board in resolving patent disputes. Featuring:-- Prof. Thomas D. Grant, Senior Research Fellow (Wolfson College); Fellow (Lauterpacht Centre for International Law), Faculty of Law, University of Cambridge-- Prof. F. Scott Kieff, Fred C. Stevenson Research Professor of Law and Director, Planning and Publications, Center for Law, Economics, & Finance, George Washington University Law School-- Moderator: Hon. Paul Michel, U.S. Court of Appeals, Federal Circuit (ret.)

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Pink Sheet Podcast: Trial Diversity, More PTAB Issues, US FDA Controlled Substance Leader Elevated

Pharma Intelligence Podcasts

Play Episode Listen Later Jul 22, 2022 19:22

Pink Sheet reporter and editors discuss another project to improve clinical trial diversity in the US, the Patent Trial and Appeal Board director review process, and the FDA promoting its head of controlled substance policy to deputy CDER director.

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Bob Giles – Exclusive Interview with Qualcomm's New Chief IP Counsel

The Ricochet Audio Network Superfeed

Play Episode Listen Later May 10, 2022 61:40

Qualcomm is responsible for the smartphone revolution. It started working on the technology back when many thought it was impossible. Besides everyday users, one of the biggest beneficiaries of Qualcomm' technology was Apple. Apple relied on the technology to make iPhones that grew its market cap to a record of $3 Trillion. However, eventually, Apple decided it was paying Qualcomm too much for the technology. And, instead of agreeing to one fair arbitration process to settle the dispute, Apple decided to rely on scorched-earth litigation. The dispute between Apple and Qualcomm quickly blossomed into more than 100 cases around the world. But it wasn't long before Qualcomm was racking up wins in China, Germany, and the US. Apple finally agreed to settle on the eve of another trial in the US in 2019. Bob Giles was one of the people responsible for that Qualcomm victory. Two years after that, he was named Chief IP Counsel at Qualcomm. He now shepherds a team that is responsible for managing and growing 140,000 IP assets and handling some of the most high-profile patent disputes in the world. On this episode, Eli talks to Bob about his new role and the ongoing disagreements between innovators like Qualcomm and implementers like Apple. Episode Highlights [02:07] What's Qualcomm all about?: Giles discusses how Qualcomm began, the early challenges it faced, and its business mission. [05:37] Keeping the lights on: Giles tells the story of how Qualcomm entered a licensing agreement with Motorola in its early days. [07:23] Qualcomm's business model: Giles explains why Qualcomm's model works and how it encourages innovation. [10:01] Does the current system for standards and SEPs work?: Giles discusses the policy debates regarding these topics. [19:55] Getting the dream job: Giles talks about what it was like to transition from patent litigation to Chief IP Counsel at Qualcomm, and what the Chief IP Counsel job entails. [28:42] What makes a great portfolio?: Qualcomm isn't like other companies when it comes to patents. As chief IP counsel, Giles discusses what needs to be part of the company's portfolio. [35:37] The million-dollar question: The law, and our interpretation of it, is changing all the time. How does a company like Qualcomm, with over 140,000 IP assets and offices all over the world, navigate those developments? [39:57] Apple v. Qualcomm: Giles discusses how he helped Qualcomm beat Apple [43:13] Lessons learned: Giles discusses his major takeaways from litigating a large-scale, multinational case. [47:06] Why Qualcomm thrives: Giles shares the underappreciated aspects of Qualcomm and his take on why it has been so successful. [50:37] The innovation climate: Qualcomm was able to get an injunction for its patents in China and Germany, but not in the U.S. When impact does this have on American companies trying to innovate and protect their IP? [52:18] The ‘death squad of patents'?: The 2011 creation of a Patent Trial and Appeal Board, has been controversial, but has it damaged the U.S. IP system? What went wrong? Giles shares his thoughts. [57:17] Know your field: Giles offers his advice for being successful in the IP field.

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The Federalist Society's Teleforum: Ten Years On: The America Invents Act and the role of the Patent Trial and Appeal Board in resolving patent disputes

Play Episode Listen Later May 4, 2022

On September 16, 2011, President Obama signed the American Invents Act (AIA) into law. The first major overhaul of the U.S. patent system since the 1952 Patents Act, the AIA received overwhelming bipartisan support in both chambers when enacted. But, with the recent ten-year anniversary of the AIA, a new director poised to take the […]

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Ten Years On: The America Invents Act and the role of the Patent Trial and Appeal Board in resolving patent disputes

Teleforum

Play Episode Listen Later May 4, 2022 60:03

On September 16, 2011, President Obama signed the American Invents Act (AIA) into law. The first major overhaul of the U.S. patent system since the 1952 Patents Act, the AIA received overwhelming bipartisan support in both chambers when enacted. But, with the recent ten-year anniversary of the AIA, a new director poised to take the helm at the USPTO, and Congress ramping up debate on reforms to the AIA, is now the time for a reexamination? Our speakers will consider the role of the PTAB in resolving patent disputes and the legality of the exercise of significant discretionary authority by the USPTO Director to implement policy outside the authority granted the director under the AIA.Featuring:-- Joseph Matal, partner in the Intellectual Property Practice Group in the Washington, D.C. office of Haynes and Boone, LLP-- Paul Brian Taylor, who served over 20 years as Counsel and Chief Counsel for the House Judiciary Committee's Subcommittee on the Constitution and Civil Justice. He also served as Senior Counsel at the House Committee on Oversight.-- Moderator: Hon. Bob Goodlatte, Former Congressman, United States House of Representatives

Louis Carbonneau on Brokering Patents After the Patent Gold Rush

Play Episode Listen Later Mar 15, 2022 63:33

The golden age for patent brokers has come and gone but that doesn't stop Louis Carbonneau. “There are very, very few patent brokers nowadays. We're just one of a handful left. And frankly, we get about four or five portfolios every single day that people want us to broker. We only say yes 1% or 2% of the time.” As one of the world's leading patent brokers, the CEO and Founder of Tangible IP has brokered over 4,500 patents and boasts close to 30 years in the industry. With experience as Microsoft's former General Manager of International IP & Licensing, Carbonneau has sat on many sides of the table. He shares his adventures in the industry (and lessons learned). Carbonneau tells behind-the-scenes stories from his time at Microsoft, the common pitfalls of patent licensing, and why price isn't always an essential part of the conversation when buying and selling intellectual property. “Some people will not even want to acquire patents for free if they don't like the patents because then they have to start paying for maintenance fees and prosecution fees. It's like a free puppy. It's only free for a few hours, and after that, you start paying,” says Carbonneau. The episode also offers insight into a typical IP transaction at Carbonneau's firm, helping those interested in selling their patents to understand what brokers — and buyers — are looking for in a deal. Episode Highlights [02:45] Dinosaurs and Microsoft: joining Microsoft's legal team as a result of the acquisition of Softimage, the computer graphics company behind Jurassic Park. [05:18] How a cross-licensing deal saved Apple: how a creative deal offered by Microsoft – in midst of its antitrust battles in the late 90s – helped save Apple. [08:45] From licensing products to IP: under the direction of Marshall Phelps, a new addition to Microsoft's team, Carbonneau began harvesting the intellectual property from Microsoft's many research labs around the world. [14:13] Balancing budgets: the complicated role of finance in licensing and monetizing intellectual property within a corporation. Which department owns a patent can make a big difference in how the intellectual property is managed. [17:38] The golden age of patent brokerage: the creation of Intellectual Ventures and how he eventually founded his own brokerage firm, Tangible IP. [24:49] What makes a good deal?: Carbonneau walks us through what makes (or doesn't make) a good patent transaction. Ultimately, it is challenging to calculate the ROI of large deals. [28:11] Changing tides: Carbonneau explains the change in the patent landscape as a result of the creation of the Patent Trial and Appeal Board (PTAB) and the subject matter eligibility mess. [32:53] A typical transaction: Carbonneau outlines his brokerage firm's intake process and share what he's looking for when he's helping to sell patent assets. [37:10] The dirty little secret: Carbonneau shares the strategy used by many big corporations. [39:35] Seller pitfalls: Who's looking to sell their patents and what do they do wrong? [44:47] Patent prosecution is ‘part art, part science': discussion of what makes patents valuable and best practices for patent law. [49:37] The perfect patent: It's hard to find the patent that everybody likes and it's not always about price. Carbonneau talks about the challenges he faces helping his buyers find patents worth acquiring. [52:46] The IP ecosystem: Carbonneau walks us through the many players within the intellectual property industry and discusses the division of labor for the buying and selling of intellectual property. [59:48] You've been warned: the challenges of being a patent broker with the current legal landscape

Sarah Burstein & Saurabh Vishnubhakat on the Truth About Design Patents

Ipse Dixit

Play Episode Listen Later Feb 23, 2022 34:12

In this episode, Sarah Burstein, Professor of Law at the University of Oklahoma College of Law, and Saraubh Vishnubhakat, Professor of Law at Texas A&M University School of Law, discuss their article "The Truth About Design Patents," which will be published in the American University Law Review. Here is the abstract:Design patents are hot. Scholars and policymakers are increasingly focusing on this once-niche area of law. However, many of the empirical studies in this area—including old ones that still get cited—rely on statistics and empirical conclusions that were methodologically questionable from the start, or have become outdated, or both. In this paper, we make two sets of contributions to that important and underdeveloped literature. First, we review the empirical studies of design patents thus far, including those that pre- and post-date the creation of the Federal Circuit, and we update the findings of those studies. Second, we consider a set of institutional questions that, to our knowledge, the prior literature has not even broached. Beyond the federal courts, we explore design patent enforcement at the ITC and the use of administrative process to challenge design patents in the Patent Trial and Appeal Board. These contributions put the design patent system into much-needed context with broader debates about U.S. intellectual property policy.This episode was hosted by Brian L. Frye, Spears-Gilbert Professor of Law at the University of Kentucky College of Law. Frye is on Twitter at @brianlfrye. See acast.com/privacy for privacy and opt-out information.

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Prof. Dan Brown and Dan Jr.'s Patent Battle Against a Retail Giant