IPWatchdog Unleashed

This week on IPWatchdog Unleashed we talk about pharmaceutical patents, pharmaceutical patent policy, and innovation.  As you may recall, back in 2022, the Inflation Reduction Act passed. And as part of that law, it gave the federal government the opportunity for the first time to “negotiate” drug prices for Medicare. The Biden Administration has viewed this as fantastic. It has allowed them to control drug prices and drug costs for Medicare. The problem is it's not really a negotiation in any fair sense of the word. What happens is the federal government identifies the drugs on which the U.S. government spends the most amount of money, and then they tell the drug companies that you will either take our offer or you will be fined, and the fines are ruinous—in the billions of dollars. So, the IRA negotiation nothing more than a price fixing, price controlling scheme. So why is this an issue for us to consider today if the IRA passed in 2022? Literally on the way out the door, last week Health and Human Services identified 15 more drugs that are now going to be forced into this price fixing “negotiation” scheme. Visit us online at IPWatchdog.com. You can also visit our channels at YouTube, LinkedIn, X, Instagram and Facebook.

This week on IPWatchdog Unleashed I speak with my long-time friend, John White. Many in the patent community no doubt already know John quite well. Over 30 years ago he created the PLI Patent Bar Review Course that upwards of 40,000 patent practitioners have successfully used to study for the Patent Bar Exam. Today, John continues to teach the patent bar review, but he is also Special Counsel with Harness IP, where he represents clients all over the world and provides expert witness services. I’ve known John since 1999 when I first started teaching the PLI Patent Bar Review Course, and we have been great friends ever since.  Our conversation this week was much like any number of conversations we have had over the years over dinner or drinks. What prompted me to ask John to speak with us this week was an article he recently wrote, which we published on IPWatchdog. It was styled as an open letter to Elon Musk and Vivek Ramaswamy, the co-leaders of the Department of Government Efficiency. In that article John explains that “the patent system is currently foundered”, but that it can be fixed with “focus and ongoing commitment to see the fixes through to results.” So, that is where we start our conversation, like so many we have had over the last 26 years—what is wrong with the patent system and how should it be fixed. Visit us online at IPWatchdog.com. You can also visit our channels at YouTube, LinkedIn, X, Instagram and Facebook.

This week on IPWatchdog Unleashed I speak with Heath Hoglund, who until several years ago was Vice President of IP and Standards for Dolby. About 3 years ago Heath left Dolby and became President of Via Licensing Alliance, which we discuss in some detail in our conversation. And truth be told he really didn’t leave Dolby. Via administers patent pools and has historically been heavily invested in the audio arena, and with Dolby being one of the premiere audio innovators of all time it is hardly a surprise that Dolby has been a long time participating and is one of the major patent owners who participates in the patent pools administered by Via. One of the first things Heath did as President of Via was to work on merging with MPEG-LA, which was a patent pool administrator that was primarily focused on video related technologies. So, today, Via Licensing is a major player in both audio and video technologies. During our conversation we discuss wide ranging issues, from the inevitability that there will be some implementers who do not want to take a license and will require patent owners to litigate, to the changing landscape, particularly in China where companies have evolved from merely needing a license to also being a licensor, to the European Union working toward regulating SEPs, and much more. Visit us online at IPWatchdog.com. You can also visit our channels at YouTube, LinkedIn, X, Instagram and Facebook.

This week on IPWatchdog Unleashed we speak with Arthur Daemmrich, who is the Director of the Consortium of Science, Policy and Outcomes at Arizona State University. Arthur is a historian who was previously director of the Lemelson Center for the Study of Invention and Innovation at the Smithsonian Institution. We speak with Arthur this week about the role patents have played in innovation, dating back to the Industrial Revolution. We also discuss the invention of the video game by Ralph Baer, Samuel Colt and his mass produced six-shooter known as the gun that won the West, Henry Ford and the assembly line, how and why Elon Musk succeeded with Tesla, and much more.Visit us online at IPWatchdog.com. You can also visit our channels at YouTube, LinkedIn, X, Instagram and Facebook.

This week on IPWatchdog Unleashed we are going to dive into the online gaming and game development world in a conversation about gaming, intellectual property, licensing, game development, branding and much more. Our conversation this week focuses on Spaceport Technologies, which is a technology company that enables brand owners to monetize their IP and game platforms to offer content creators the ability to license the use of those brands within their game environment. To do this Spaceport uses innovative technology that reduces transaction costs and allows for the monetization of intellectual property assets. In fact, through the use of Spaceport protocols and apps the acquisition of rights and payment for those rights through numerous small dollar value transactions is not just faster and easier, the deals actually become possible. So, with that backdrop, let me introduce our guests. First is Dan Temkin, who is General Counsel and Head of Intellectual Property for Spaceport Technologies. He began his career working for Procter & Gamble, where he spent nearly a decade. It was while he was at P&G that he became first introduced to intellectual property, telling me that as he worked with the IP attorneys, he came to the conclusion that what they were working on was “a lot more interesting” than what he was working on. Reaching that conclusion led him to Boston University for law school and ultimately a career in intellectual property law. Our second guest this week is Jay Kolbe, a co-founder of Impact Partners, which is a strategic communications firm that focuses on family offices, venture capital and startup founders. Jay is a specialist in marketing technology-focused PR. He develops influential communications programs that increase the valuation of the companies he advises. And in addition to working with Spaceport, Jay also works with Josh Harlan and Harlan Capital, who we spoke with several weeks ago about how they invest in and monetize recurring IP revenue streams.Visit us online at IPWatchdog.com. You can also visit our channels at YouTube, LinkedIn, X, Instagram and Facebook.

This week my conversation is with Carlo Cotrone, who is a Chief IP Counsel and frequent contributor to IPWatchdog, both our online publication and at our in-person programs. Carlo writes and speaks frequently about setting up, growing and managing in-house IP departments, and that is the focus of our conversation. We discuss taking a holistic view that focuses on the IP strategy, the people, and the operational aspects of building and managing a team, which includes both in-house employees, outside law firms and service providers, all working together in coordination to deliver high impact for the company.  During our conversation we discuss the need to guard against your in-house team falling into doing commoditized work, which gets in the way of your in-house team really partnering with the business and maximizing value for the company. We also discuss what Carlo refers to as “servant leadership”, and when he discusses the concept of servant leadership you can’t help but be reminded of the old saying about nothing being impossible to accomplish if you don’t care who gets the credit. Carlo explains that this service-oriented mindset has allowed him to confidently and carefully navigate whatever issues arise in a thoughtful and intentional way. And it is “intentionality” that Carlo focuses on repeatedly in his writings, presentations and during this conversation, because as he explains constantly fighting fires is not the right way to do business. Sure, things need to be done and issues will arise, but to successfully lead you need to focus on the fundamentals, strategy, people, operations, and periodically reevaluate all of the above to ensure the ideas and plans you are trying to execute continue to make sense and everyone is rowing in the same direction and toward the same goals, ensuring that that status quo is not being accepted and the team is delivering what the company and internal clients deserve and require. Visit us online at IPWatchdog.com. You can also visit our channels at YouTube, LinkedIn, X, Instagram and Facebook.

This week my conversation is with Leo White, who is Chief IP Counsel and Associate General Counsel for The Duracell Company. Leo is a patent professional by training, first starting out as an engineer, then like so many in the patent field have done he became a patent agent, then went to law school, and thanks to hard work, good mentoring and being in the right place at the right time he became an IP attorney for The Duracell Company, ultimately rising to become the top IP attorney for this American Manufacturer with one of the more iconic brands in the world.  During our conversation we begin by briefly talking about patent strategy, but then move quickly to brand protection, trademarks, trade dress and effectively working with customs agencies around the world. While Duracell does patent its various battery technologies, and while White is responsible for maintaining a worldwide patent portfolio for the company, the company’s trademark and trade dress portfolio are the IP tools of choice used most often when working to fight the never-ending battle against counterfeiters and copycats, and to also protect against gray market imports. Visit us online at IPWatchdog.com. You can also visit our channels at YouTube, LinkedIn, X, Instagram and Facebook.

This week on IPWatchdog Unleashed we speak with Brian Hinman, who is one of the leading IP executives and investors in the world. Brian has held senior executive positions at leading technology companies, such as IBM, Philips and Verizon. And after spending more than 6 years as the Chief Innovation Officer for Aon, today he is Chief IP Officer for Cote Capital. During our conversation Hinman explains how Cote provides capital for scaling manufacturing and operations, with IP assets backing the investment. The way Hinman describes this IP asset-backed investment strategy sounds lot more owner-friendly and startup-friendly than a typical venture capital round of investment, which often requires owners to give up more than half the company in order to receive an investment.During our conversation we also discuss pending legislation, particularly the RESTORE Act, which would effectively overrule eBay and create a presumption than a permanent injunction is the proper remedy, with Hinman explaining that the legislation places the burden on the infringer to demonstrate that a permanent injunction is not warranted, which according to Hinman is the way it should be.Visit us online at IPWatchdog.com. You can also visit our channels at YouTube, LinkedIn, X, Instagram and Facebook.

On the heels of the PREVAIL Act passing in the Senate Judiciary Committee, the very next day USPTO Director Kathi Vidal wrote on the Director’s Blog about how wonderful the PTAB has been, saying in part: “Since AIA proceedings began over a decade ago, almost 70% of challenged patents have been upheld at the PTAB.”This claim by Director Vidal initially made me speechless. Simply stated, she is wrong. It is absolutely false for anyone to say or suggest that 70% of challenged patents have been upheld at the PTAB. This claim is not true. It is pure fiction.PTAB stats admit that out of those patents that reach a final written decision 85% lose at least one claim and 70% lost all claims. That is the reality for patent owners. If the PTAB issues a final decision you are virtually certain to lose, and these statistics have largely remained unchanged, with only minimal fluctuation since the inception of the PTAB in 2012.So, exactly who is fooling who? The way the rules are structured, and the way we have actually witnessed the PTAB operate, confirms that no patent is safe ever. And this is not meant as any indictment of PTAB judges—they are just doing the job as defined in the staute passed by Congress and the rules created by the PTO. This is, however, a scathing indictment of those laws and rules, which are in desperate need of reform. Visit us online at IPWatchdog.com. You can also visit our channels at YouTube, LinkedIn, X, Instagram and Facebook.

This week I speak with Josh Harlan, who is the founder and managing partner of Harlan Capital Partners, which is a privately held investment firm based in Palm Beach, Florida, and which focuses on asset-based investments, including investments backed by media and intellectual property rights, and specifically the monetization of streams of revenue back by intangible assets. During our conversation we speak about various investable streams of revenue in the media, sports and IP universe, and then we also make a hard pivot to discuss artificial intelligence, and what those looking to invest in AI should be considering, the viability of fair use as a defense to the ongoing lawsuits brought by copyright owners against AI developers, and the likely future marketplace for the monetization of training data and AI outputs. Harlan sees the possibility of “some pretty big damages awards on a one-time basis” for content creators in their copyright lawsuits against large AI developers but doesn’t see these legal issues as an existential threat to the AI industry. Visit us online at IPWatchdog.com. You can also visit our channels at YouTube, LinkedIn, X, Instagram and Facebook.

Walt Copan joins us for a conversation about the role of science, technology and innovation in U.S. competitiveness and for U.S. national security. As many of you no doubt know, Walt is a former Undersecretary of Commerce and served as the 16th Director of the National Institute of Standards and Technology, a position for which he was unanimously confirmed by the Senate during the Trump Administration. Today, Walt is the Vice President for Research and Technology Transfer at the Colorado School of Mines in Golden, Colorado. I invited Walt to join us for our annual life sciences program this year. My pitch was that we would have a one-on-one conversation that would not only make up the final segment of the program, but which would also be used for our IPWatchdog Unleashed podcast. He graciously accepted my invitation, and we sat down for this conversation on Wednesday, October 30. During our conversation we discuss the ongoing Bayh-Dole march-in rights drama being caused by his old agency—NIST—which has published a framework that would allow the government to strip patent rights away from exclusive licensees if the government believes the product covered by a patent is too expensive. We also discussed the diverging approach to commercialization between universities who can own and license patent rights and federal agencies, which operate under an entirely different statutory structure that makes it virtually impossible to get innovations made by federal government employees to the marketplace and commercialized for the good of society. We also discuss the upward trajectory of China vis-à-vis innovation and intellectual property, and the stagnation within the U.S. innovation ecosystem, which has been primarily led by uncertainty and dismantling of the U.S. intellectual property laws. Visit us online at IPWatchdog.com. You can also visit our channels at YouTube, LinkedIn, X, Instagram and Facebook.

This week we have a special guest—the Honorable Pauline Newman, Circuit Judge on the Court of Appeals for the Federal Circuit. Judge Newman spoke at our annual Life Sciences program at IPWatchdog Studios on Tuesday, October 29. Her remarks were largely unscripted, although she did have some notes that she consulted from time to time during her nearly 45 minute presentation. Judge Newman told her story, and the story of the Federal Circuit, in her own words. So powerful were her comments that at least several in the audience were seen shedding a tear, and she received a hearty standing ovation. Judge Newman is being wrongfully persecuted by her colleagues on the Federal Circuit. She has taken and passed with flying colors the three different mental evaluations she has submitted to, all conducted by different, highly regarded evaluators. And in addition to the final mental evaluation she was given a cutting edge CT scan of her brain, which showed no signs of cognitive decline, and in fact rather remarkably showed a healthy brain that looked to be the scan of someone in their 20s. Faced with all the inaccurate statements in the complaint, which have never been correct despite their falsity, the Federal Circuit persists in excluding Judge Newman from hearing cases, which every day is becoming a more significant constitutional crisis. So, against this backdrop we are pleased to present the Honorable Pauline Newman. Visit us online at IPWatchdog.com. You can also visit our channels at YouTube, LinkedIn, X, Instagram and Facebook.

In this episode of IPWatchdog Unleashed, we discuss patent prosecution with the director of intellectual property at one of the top five filing companies in the world. Sivon Kalminov is the Director the Intellectual Property Division at Canon USA, where he is responsible for managing the Division’s day-to-day patent prosecution work, which includes overseeing both the patent prosecution and administration departments. He also provides support on patent litigation matters, contract matters, and general U.S. patent law-related advice to various domestic and international Canon companies and subsidiaries. He is a current member of the California State Bar Intellectual Property Section, and a past Chair of the Section.Our wide-ranging conversation took place in person on October 1, at IPWatchdog LIVE, shortly after Sivon spoke on a panel about strategies for getting to yes when working with patent examiners.During our conversation, we discuss the unique set-up of the Canon intellectual property department, which sees Sivon and his team representing Canon USA, but also representing various Canon entities from around the world as they enter the United States to obtain patents on previously filed applications. We also discuss the U.S. Patent and Trademark Office (USPTO) switching from EFS-Web to Patent Center, the unceremonious death of the After Final Consideration 2.0 program, examiners raising Section 112 and Section 101 issues for the first time in a Notice of Allowance, strategies for working with examiners, the importance of interviews to get on the same page with examiners, when and whether it is appropriate to appeal examiner rejections to the Board, and much more.Visit us online at IPWatchdog.com. You can also visit our channels at YouTube, LinkedIn, X, Instagram and Facebook.

This week we explore small and medium sized enterprises, often referred to simply as SMEs. And in particular, we take a look at how two different countries are working with their own small businesses to assist them with respect to innovation and intellectual property. To accomplish this, I turned to two friends – Mike McLean and Joe Doyle, who work to assist SMEs in Canada and Ireland respectively. Both Mike and Joe were in the United States at the end of September to speak at IPWatchdog LIVE 2024, on a panel titled Empowering SME Growth by Leveraging IP. During our conversation we learn about the ways both the Canadian and Irish governments are supporting SMEs, which is something that we in the United States should be doing to a much greater and coordinated degree. Visit us online at IPWatchdog.com. You can also visit our channels at YouTube, LinkedIn, X, Instagram and Facebook.

This week on IPWatchdog Unleashed we have a special episode. At the end of September we held our annual all-topics conference, which we call IPWatchdog LIVE. This conference brings together some of the top thought leaders and newsmakers from the entire industry, with a variety of different backgrounds and people who focus on various different niche verticals within the IP community. So, while the conference was ongoing, Eileen McDermott, our editor in chief, asked some of the industry leaders in attendance what they thought was the most important issue facing the intellectual property industry.“What is critically important and every leader in government needs to focus on is to make sure that the IP system is stable, it's predictable, and it's subject to fewer fluctuations,” said Andrei Iancu, former Under Secretary of Commerce for IP and Director of the USPTO during the Trump Administration. “We need to work towards a stronger, more consistent, more predictable intellectual property system, whether it's patents, trademarks, copyrights, or trade secrets.”“The most pressing issue is the lack of appreciation of the link between strong and effective intellectual property rights and innovation outcomes,” said David Kappos, former Under Secretary of Commerce for IP and Director of the USPTO during the Obama administration. To hear more from these thought leaders, and others including Judge Pauline Newman, Alden Abbott, Matteo Sabattini, Judge Susan Braden, Patrick Kilbride, Hans Sauer, Brian O’Shaughnessy, and others, listen to this episode of IPWatchdog Unleashed.Visit us online at IPWatchdog.com. You can also visit our channels at YouTube, LinkedIn, X, Instagram and Facebook.

This week our conversation takes us on an international journey, more or less. Andras JOKUTI is an intellectual property lawyer with domestic and international experience in public IP policy and university technology transfer. He is the former Director-General for Legal Affairs of the Hungarian Intellectual Property Office, and he is a former Fulbright Scholar. Andras studied intellectual property and obtained his LL.M. in intellectual property law from The George Washington University. Thereafter, Andras worked with the Budapest University of Technology and Economics to strengthen its IP and technology transfer operations. And since January 2022, he has served as the Director of the Patent and Technology Law Division at World Intellectual Property Organization. Andras came to the United States last week to speak at IPWatchdog LIVE 2024, which was hosted at the Renaissance Capitol View hotel in Arlington, Virginia. During our wide-ranging conversation we discuss a number of issues, from standard essential patents, to artificial intelligence, and to trade secrets, which is what brought him to IPWatchdog, to discuss the new WIPO trade secret guide, published in July 2024.  Visit us online at IPWatchdog.com. You can also visit our channels at YouTube, LinkedIn, X, Instagram and Facebook.

This week we will change things up a bit. Until now our podcast has focused on conversations with newsmakers and interesting personalities. We won’t be giving that format up, but this week we will shift things to allow me to do a little ranting on a topic I’ve been thinking about more and more over the last several years; namely, do we still need, or even want, a Federal Circuit? I’ve been kicking this question around in my head for a while. There are a variety of reasons why the Federal Circuit seems to have outlived its usefulness, from panel dependency, to what at times appears to be utter disdain for certainty, predictability and even binding precedent, to the shocking, unfair and egregious treatment of Judge Newman. Why do we need a Federal Circuit? Why should we want this flawed institution to continue?What we know is very little of what the Federal Circuit does any more relates to patents, with only 15% of what has occupied the Federal Circuit over the last six months relating to opinions in patent cases. Meanwhile, what decisions the Federal Circuit does issue are panel dependent and show not a care in the world about the Court’s original mandate, which was to create a unified national patent law and recognize that at least some patents have to be valid and enforced. And now over the last 2 years we have an inexplicable usurpation of authority with the virtual impeachment of Judge Newman. If these judges are so unfamiliar with basic due process and the opportunity to be fairly heard why should anyone believe they are themselves competent to be judges on any level? Visit us online at IPWatchdog.com. You can also visit our channels at YouTube, LinkedIn, X, Instagram and Facebook.

Today we're going to tackle a question that has divided the patent innovation community for a generation. Depending on your perspective, patent trolls have been and continue to be a problem, or complaints about patent trolls have been greatly exaggerated.As is often the case when emotions are running high and there is so much money at stake, the truth probably lies somewhere in the middle.Unfortunately, the bad actors on both sides of patent litigation have so clouded the issues to the point where it's hard to look at patent owners and defendants as anything other than the caricatures they represent, which is the worst of the worst, really. So, let’s put some real facts on the table and meat on the bones and talk about what is really going on, both good, bad and ugly.Visit us online at IPWatchdog.com. You can also visit our channels at YouTube, LinkedIn, X, Instagram and Facebook.

This week the tables are turned. As many of you know Eli Mazour is the founder of the Clause 8 podcast, and the podcast is known by its tagline as “the Voice of IP.” Indeed, for years Eli has been just that… the voice of IP… interviewing numerous people in the industry, from Federal Circuit Judges to Chief IP Counsel and political leaders, I even had an opportunity to sit with Eli for a conversation when he first started Clause 8, which we discuss at the start of our conversation.So, once I started my own podcast it was only natural to sit down with Eli for my own discussion with him, to pick his brain in an unscripted, open-end conversation. And the resulting conversation did not disappoint. We discussed a great many things about patents and innovation, the Federal Circuit and why clients want and need patents, and patent strategy. We begin our conversation with discussion of how Eli got into the science and engineering world and ultimately into the patent profession, and we also discuss his new home at Foley & Lardner, which has embraced Eli’s work on Clause 8, which will continue. In retrospect our conversation wound up being largely about the key to writing and obtaining high quality patents, which is also the key to innovating in the first place. You need to have a purpose and a goal. You need to be addressing an identifiable problem with a real, concrete, technical solution. And you need to focus on something that will actually matter to the client. And while patent strategy and ensuring protection actually protects what the client is selling matters most for those clients who will have several dozen or even several hundred patents, it really matters for everyone. Visit us online at IPWatchdog.com. You can also visit our channels at YouTube, LinkedIn, X, Instagram and Facebook.

This week our conversation takes us in-house to discuss patent strategy and insights on how outside counsel can best work with in-house counsel to build a solid working relationship and actually deliver what the client wants and needs.My conversation is with Gary Lobel, who is currently senior patent counsel for Reckitt where he is responsible for global legal and intellectual property matters for several different business units within the Reckitt family. In this role Gary plans and implements global intellectual property strategies in the area of biotechnology, pharmacologic and nutritional formulations. He works with in-house constituencies, evaluates opportunities for potential partnerships and acquisitions, and he manages outside counsel working on both patent procurement and litigation. Prior to joining Reckitt, Gary was Chief Patent Counsel for Nestlé, and he also worked early in his career as a patent attorney at Novartis. I always enjoy my conversations with Gary. He is extremely bright and thoughtful, I find that every time I speak with Gary I learn something, and our conversations often go down paths I didn’t expect but which are always interesting and informative.  Gary has a knack for seeing all sides to every issue or problem as if he is constantly playing a game of 3D chess and is at least several moves ahead. In our conversation this week we had a wide ranging conversation on patent strategy, including working with patent examiners—including what to do when you are assigned to a difficult patent examiner with a low allowance rate—the importance of interviews, tips for getting past 112 rejections, and how outside counsel can build solid, working relationships with in-house counsel, and much more. Visit us online at IPWatchdog.com. You can also visit our channels at YouTube, LinkedIn, X, Instagram and Facebook.