On Intellectual Property

Jeff Harty

We live in very innovative times where intellectual property rights - patents, trademarks, copyrights, and trade secrets - are a key component to the future success of almost any career or business.

Join Jeff Harty biweekly as he interviews patent and trademark professors, in house IP counsel, business leaders, IP trial attorneys and even members of the judiciary who will provide unique perspectives on what it takes to develop a successful strategy in dealing with intellectual property. Whether you are interested in intellectual property protection, enforcing IP rights or defending IP disputes, this is the podcast for you.


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A Strategic and Collaborative Approach to Navigating IP Matters with Carlo Cotrone
Nov 15 2022
A Strategic and Collaborative Approach to Navigating IP Matters with Carlo Cotrone
Our guests are so generous with their time. They allow us to have terrific conversations about this world of intellectual property, their roles, and strategies for effectively dealing with IP. That’s certainly the case with our featured guest today. Carlo Cotrone wears a lot of hats in the field of intellectual property. As chief IP counsel for Techtronic Industries, he manages innovation for the company’s well-known brands, such as Ryobi, Milwaukee, Hoover, Oreck, and Dirt Devil. In this episode, he shares his thoughts on the importance of strategy and collaboration as enterprises navigate the world of IP.  In this episode, Jeff Harty and Carlo Cotrone discuss: What about IP inspires and drives Carlo in his life and career. The breadth of IP issues that Carlo deals with as in-house IP counsel. Why strategy and collaboration are essential in IP.The mindset of collaboration locally and globally. Counterfeiting in the world of e-commerce.  Key Takeaways: Strategy is about outside-the-box thinking and moving beyond the tactical to find complementary ways that may not come to mind immediately without intentionally taking a different view.Knowing the client’s business and looking at IP from a business perspective is an excellent approach for both in-house and outside counsel. Collaboration comes down to human-to-human and human-to-group communication and relationships. It’s important to find partners with whom you can build relationships and who understand the risk profiles of the company.   “It’s really important to develop meaningful metrics internally, especially those that help hold the IP teams, and the company at large, to a rationality to the investments being made in IP and the result.” —Carlo Cotrone    About Carlo Cotrone: Carlo Cotrone is chief IP counsel at Techtronic Industries North America (TTI), a world leader in cordless technology spanning power tools, outdoor power equipment, and floor care appliances. He also is adjunct professor of law at University of Houston Law Center. He is a frequent speaker and author on topics such as IP strategy and asset management, legal ethics, collaboration and innovation strategies for law firms and corporate legal departments, and professional development. Previously, Carlo served as senior IP counsel at General Electric and at energy technology company Baker Hughes. He practiced law at firms on the East Coast and in the Midwest, most recently as a partner. He holds two U.S. patents as the inventor of technology directed to digital sheet music.  Connect with Carlo Cotrone: Website:  Twitter:  LinkedIn:    Connect with Jeff Harty: Website:    jharty@nyemaster.comLinkedIn:
A Strategic and Collaborative Approach to Navigating IP Matters with Carlo Cotrone
Nov 15 2022
A Strategic and Collaborative Approach to Navigating IP Matters with Carlo Cotrone
Our guests are so generous with their time. They allow us to have terrific conversations about this world of intellectual property, their roles, and strategies for effectively dealing with IP. That’s certainly the case with our featured guest today. Carlo Cotrone wears a lot of hats in the field of intellectual property. As chief IP counsel for Techtronic Industries, he manages innovation for the company’s well-known brands, such as Ryobi, Milwaukee, Hoover, Oreck, and Dirt Devil. In this episode, he shares his thoughts on the importance of strategy and collaboration as enterprises navigate the world of IP.  In this episode, Jeff Harty and Carlo Cotrone discuss: What about IP inspires and drives Carlo in his life and career. The breadth of IP issues that Carlo deals with as in-house IP counsel. Why strategy and collaboration are essential in IP.The mindset of collaboration locally and globally. Counterfeiting in the world of e-commerce.  Key Takeaways: Strategy is about outside-the-box thinking and moving beyond the tactical to find complementary ways that may not come to mind immediately without intentionally taking a different view.Knowing the client’s business and looking at IP from a business perspective is an excellent approach for both in-house and outside counsel. Collaboration comes down to human-to-human and human-to-group communication and relationships. It’s important to find partners with whom you can build relationships and who understand the risk profiles of the company.   “It’s really important to develop meaningful metrics internally, especially those that help hold the IP teams, and the company at large, to a rationality to the investments being made in IP and the result.” —Carlo Cotrone    About Carlo Cotrone: Carlo Cotrone is chief IP counsel at Techtronic Industries North America (TTI), a world leader in cordless technology spanning power tools, outdoor power equipment, and floor care appliances. He also is adjunct professor of law at University of Houston Law Center. He is a frequent speaker and author on topics such as IP strategy and asset management, legal ethics, collaboration and innovation strategies for law firms and corporate legal departments, and professional development. Previously, Carlo served as senior IP counsel at General Electric and at energy technology company Baker Hughes. He practiced law at firms on the East Coast and in the Midwest, most recently as a partner. He holds two U.S. patents as the inventor of technology directed to digital sheet music.  Connect with Carlo Cotrone: Website:  Twitter:  LinkedIn:    Connect with Jeff Harty: Website:    jharty@nyemaster.comLinkedIn:
Litigation Financing and IP Enforcement with Robin Davis & Bob Koneck
Nov 1 2022
Litigation Financing and IP Enforcement with Robin Davis & Bob Koneck
Litigation is not cost-free, particularly when we talk about intellectual property cases that can be driven by myriad factual inquiries. Those inquiries can result in significant discovery. Multiple expert witnesses may need to be retained. E-discovery costs are not insignificant. And the list goes on. Not everyone can afford the costs that must be incurred to see their rights protected. Not everyone wants to face the inherent risks of litigation. That leads to a sense of injustice. Are there alternatives? We're going to talk about one option. In this episode, Jeff Harty, Robin Davis, and Bob Koneck discuss: The complexity of IP litigation and how that affects the costs of litigation.Why IP disputes tend to lend themselves to litigation funding. What types of cases are suited to litigation financing. Different approaches to funding IP cases. Key Takeaways: The perception may be that only boutique firms use litigation funding, but big firms also use litigation funding; it is becoming more common throughout firms of all sizes. Litigation funders are passive investors. While they don’t get a say in the case, they are aligned with the funded parties and their case. Trends and studies show that litigation financing is going to become more common. LItigation financing is not just for small and medium-sized entities. “One of the trends that we're seeing now is that more larger, sophisticated companies that do have their own significant in-house legal budgets are utilizing funding to take the risk and the pressure of the cost of litigation off their balance sheet.” —Robin Davis    About Robin Davis: Robin Davis is Woodsford’s chief investment officer for the United States. She oversees all of Woodsford’s investments in American civil litigation and intellectual property. Under Robin’s direction, Woodsford has become a preeminent investor in IP litigation and works with top-tier law firms, public and private companies, universities, and independent inventors. Before joining Woodsford, Robin spent a decade as a litigator in private practice, with a specialty in patent litigation, at firms including Quinn Emanuel and Radulescu LLP. She has a J.D. from Cornell Law School and a B.S. in materials science and engineering from MIT. About Bob Koneck: Bob Koneck is a lawyer and former litigator. As director of litigation finance and legal counsel for Woodsford, Bob now focuses on working with plaintiffs and their counsel to explore whether litigation financing can facilitate a successful litigation. Prior to joining Woodsford, Bob worked as a commercial litigator and completed federal clerkships at the U.S. District Court for the District of Minnesota and the U.S. Court of International Trade. Bob received his J.D. from Columbia Law School and his B.A. from St. Olaf College. Connect with Robin Davis and Bob Koneck: Website:  Bob’s Email: bkoneck@woodsford.com Bob’s Phone: 267-903-4878Robin’s LinkedIn:  Bob’s LinkedIn:  Woodsford’s LinkedIn:  Twitter:    Connect with Jeff Harty: Website: jharty@nyemaster.comLinkedIn:
Insights on Design Patents and Issues for Modern-Day Designs as “Articles of Manufacture” with Mark Janis
Oct 18 2022
Insights on Design Patents and Issues for Modern-Day Designs as “Articles of Manufacture” with Mark Janis
In this episode, Jeff Harty and Professor Mark Janis delve into the world of design patents, discussing how they became part of the patent regime, challenges facing the protection of  modern-day ornamental designs, and possible upcoming changes in design patent law in view of the “article of manufacture” requirement. They also look at specific cases and strategies for claiming and prosecuting design patent applications.  In this episode, Jeff Harty and Mark Janis discuss: The evolution of design patents and how they found their home in the patent regime. The effects of Section 171 and imposing many of the requirements for utility patents on design patents. The “article of manufacture” requirement and its impact on protecting modern ornamental designs. Possible upcoming changes in design patent law.  Key Takeaways: Design patents have been an awkward fit in a patent regime focused largely on technological inventions.  Recently, the Federal Circuit Court has ruled that textual references to the article of manufacture in the title and in the claim could limit the scope of design patent protection. If you're going to have the textual matter limit the scope of your claim for infringement, surely, it would equally apply in a determination on patent validity.The Patent Office has not revised the guidelines for graphical user interfaces in years, but debate and discussion about the needed changes are happening now.  “You hear reports of a global marketplace for user interface/user experience design in the billions and billions [of dollars].  It could be the key area of design and innovation in the future.  To be sure, we could create rules that effectively would kick those designs out of the design patent regime if we cared that much about the language ‘article of manufacture.’” —  Mark Janis    About Mark Janis: Mark D. Janis teaches courses in patents, trademarks, and other areas of intellectual property law. He is the Robert A. Lucas Chair of Law and the director of the Center for Intellectual Property Research at the Indiana University Maurer School of Law. Janis has authored a number of books, including the treatise IP and Antitrust (with Herbert Hovenkamp, Mark A. Lemley, Christopher R. Leslie, and Michael A. Carrier), Trademarks and Unfair Competition in a Nutshell, two casebooks (Trademarks and Unfair Competition: Law and Policy, 4th ed., and Trade Dress and Design Law, both with Graeme B. Dinwoodie) and other books on trademark law (with Dinwoodie). He has published numerous law review articles and book chapters on patent law, intellectual property and antitrust, trademark law, intellectual property protection for plants, plant biotechnology, and intellectual property protection for designs.Janis is the winner of a Collegiate Teaching Award and a Faculty Scholar Award (both from the University of Iowa College of Law), and INTA’s Ladas Award in 2008. At the Indiana University Maurer School of Law, he was the recipient of the Leon H. Wallace Teaching Award, the highest teaching honor given to law faculty.Prior to joining the faculty at Indiana, Janis was the H. Blair & Joan V. White Chair in Intellectual Property Law at the University of Iowa College of Law. He practiced patent law at Barnes & Thornburg (Indianapolis) from 1989 to 1995.  Connect with Mark Janis: Website:  Email: mdjanis@indiana.edu Twitter:  Twitter:   Connect with Jeff Harty: Website:    jharty@nyemaster.comLinkedIn:
Driving Innovation and Maximizing Your Return on Investment in Intellectual Property with Kirk Goodwin
Oct 4 2022
Driving Innovation and Maximizing Your Return on Investment in Intellectual Property with Kirk Goodwin
In this conversation, Kirk Goodwin, head of global innovation IP at Whirlpool Corporation, shares his insights for ways to drive innovation and get the most out of your IP assets. For most companies, continuing to innovate isn’t just an option. It’s not enough to simply keep pace; you need to stay ahead of the game if you truly want to thrive and be relevant. That’s why driving innovation and maximizing the return on your investments in intellectual property are more important today than ever. In this episode, Jeff Harty and Kirk Goodwin discuss: Driving innovation within an organization. Maximizing returns on investments in intellectual property. How to know where to innovate. Measuring your ROIP (Return on Intellectual Property)—beyond the number of submissions and number of patents.  Key Takeaways: Your goal shouldn’t be to simply get patents. Your goal should be to get innovation that you can protect—your intellectual property.You grow innovation by protecting intellectual property and then creating additional intellectual property and innovation around the assets you already have. We don’t need to incentivize people to innovate, but we do need to communicate where the value can be brought. Innovators want to innovate. Your job is to facilitate that. Teach your employees where to be innovative and how to share that innovation.   “IP is not the last step. It is the first step and the second step and the third step and so on. That’s how you continue to grow innovation, by creating those foundations that you protect with intellectual property.” —  Kirk Goodwin  About Kirk Goodwin:  Kirk Goodwin is assistant general counsel, Global Innovation IP and Cybersecurity,  for Whirlpool Corporation. Previously, Mr. Goodwin served as chief patent counsel, North America, and chief counsel for Global Information Systems for Whirlpool. Mr. Goodwin leads Whirlpool’s team of patent attorneys, agents, and paralegals in various patent functions, including IP clearance, acquisition, technology transactions, and litigation. Prior to joining Whirlpool, Mr. Goodwin was a senior patent attorney for Maytag Corporation, where he led offensive and defensive patent and trade secret litigation. Connect with Kirk Goodwin: LinkedIn:  Twitter: @kirk_goodwin Connect with Jeff Harty: Website:    jharty@nyemaster.comLinkedIn:
Insights on IP Cases with U.S. District Court Judge John Jarvey
Sep 20 2022
Insights on IP Cases with U.S. District Court Judge John Jarvey
In today’s episode, retired U.S. District Court Judge John Jarvey talks about his time on the bench dealing with intellectual property cases, his background, and his work now helping parties resolve disputes through mediation. He has insights on what works in the courtroom and motion practice in IP disputes. He also has experience resolving disputes through mediation and is in a position to share how clients and their counsel can make the most of that process. In this episode, Jeff Harty and Judge John Jarvey discuss: Judging, mediating, and evaluating cases. The importance of subject-matter expertise in evaluating IP cases. The important things to remember when presenting an IP case to a jury.  Key Takeaways: When people craft a solution to their own problems, they are happiest, most satisfied, and get the most satisfaction out of the process. There is value in having subject-matter expertise when it comes to assertions in the law, as most federal district court judges do not routinely handle IP disputes.Regardless of the technology in an IP case, presenting a story to the jury that resonates and plays on certain emotions is key.Patent trials can be structured in various ways to help jurors better understand the dispute and the issues they are asked to decide.   "What's really important to remember is that there are certain emotions that always play well with jurors, and an emotional issue, such as theft of any property, is the same thing to jurors as the theft of an idea. Focusing always on the big picture of what the ultimate wrong was, is very helpful for jurors in these cases." —  Judge John Jarvey  About Judge John Jarvey: Judge Jarvey was a trial attorney for the Criminal Division of the U.S. Department of Justice from 1983 to 1987. As a prosecutor, he specialized in fraud in the pharmaceutical industry. He taught trial advocacy at the University of Iowa College of Law and mock trial at Cedar Rapids Washington High School. Judge Jarvey was a U.S. magistrate judge of the U.S. District Court for the Northern District of Iowa from 1987 to 2007. As a magistrate judge, he presided over more than 300 civil jury and nonjury trials. He was primarily responsible for civil and criminal case management and conducted more than 400 mediations. His civil jury experience includes patents, copyrights, and other complex commercial disputes. It also includes many civil rights trials alleging police excessive force, prisoner rights, and other claims against public officials. As a U.S. district judge, Judge Jarvey presided over more than 100 civil and criminal jury and nonjury trials. His civil jury trial experience includes a wide range of complex cases.   Connect with Judge John Jarvey: Email: john@golawpc.com Phone: 319-360-1122 Connect with Jeff Harty: Website:    jharty@nyemaster.comLinkedIn:
The PTAB and the Impact of Post-Issuance Invalidity Proceedings with Jay Kesan
Sep 6 2022
The PTAB and the Impact of Post-Issuance Invalidity Proceedings with Jay Kesan
It is rare to find someone in the field of intellectual property, in particular patent law, who is a scholar and a practitioner. Today, we have with us Jay Kesan who is both. Listen in for a great episode full of information about the PTAB (Patent Trial and Appeal Board) and the impact it has had on the patent system after 10 years.  In this episode, Jeff Harty and Jay Kesan discuss: Jay’s professional career as both a law professor and a practicing patent attorney/litigator. The impact of IPRs and PGRs on the patent system. Challenging the validity of a patent in an IPR proceeding versus district court litigation.  Key Takeaways: The PTAB was created as an alternative forum for challenging issued patents. It was hoped that the PTAB would provide a lower-cost means of challenging already-issued patents.In the past few years, the number of patent validity challenges has leveled out to about 1,500 IPRs per year.The vast majority of IPRs involve parallel district court infringement actions.The USPTO, under its new director, has issued new guidelines for discretionary denials of PTAB proceedings. A fair comment, at this stage, would be that these discretionary denials are only going to continue to decrease even when there is parallel district court litigation. “If you're a patent owner and you believe that your patents are being infringed and you're contemplating an infringement action, you have to take into account the new world that you have to deal with.” —  Jay Kesan   About Jay Kesan: Jay P. Kesan, Ph.D., J.D., is a well-recognized and accomplished patent attorney with more than 25 years’ experience. His work encompasses all aspects of patent enforcement, patent strategy, and licensing. He has been lead counsel or co-counsel in numerous patent lawsuits in various federal district courts around the country. He has argued numerous appeals before the Court of Appeals in the Federal Circuit. He has also served as lead counsel in more than 30 IPRs and argued several times before the PTAB. He has been actively involved in every aspect of patent litigation as counsel, Special Master, appellate counsel, technical expert, legal expert, and mediator. Jay has a Ph.D. in electrical and computer engineering from the University of Texas at Austin and worked for several years as a research scientist at the IBM Thomas J. Watson Research Center. As a result, he works with clients on IP disputes that involve a wide variety of technologies and innovations. Jay is also an active empirical scholar, and his recent works have focused on cyber risk and patent policy. He has published numerous articles and six books on patent law and policy and cybersecurity and privacy with an emphasis on empirical research methodologies. He is a professor and H. Ross and Helen Workman Research Scholar at the University of Illinois at Urbana-Champaign. He is an active and widely cited scholar. Connect with Jay Kesan: Website:  Email: jay@jaykesan.com Books:  Twitter:  LinkedIn:   YouTube:   Connect with Jeff Harty: Website:    jharty@nyemaster.comLinkedIn: