Clause 8

For almost 30 years - under the leadership of giants like Marshall Phelps, David Kappos, and Manny Schechter, IBM led in obtaining the most patents per year. However, in 2020, IBM made the decision to no longer pursue the goal of “numeric patent leadership.” It went from obtaining over 8500 patents in 2021 to, by some counts, less than 5000. Nonetheless, IBM remains one of the top American patentees. Mark Vallone joins Eli to discuss how he stepped into one of the most significant roles in the patent world last year while this dramatic shift in IBM’s patent strategy was taking place. Thanks for reading Voice of IP! Subscribe for free to receive updates. On this episode, Mark talks about how IBM's heritage of innovation and patent leadership informs its decisions. He also provides an in-depth perspective on why and how IBM transitioned away from numeric leadership goals and toward a more balanced, quality-focused approach. The episode provides thought-provoking insights into the challenges of growing and managing a vast IP portfolio, including the value of incentive programs for inventors and the mechanics behind strategic patent portfolio pruning decisions. Key Topics: * Succeeding as in-house counsel * IBM's Strategic Shift - departing from their numeric patent leadership goal to focus on patent quality and aligning with their current business model. * Portfolio Management - detailed advice on pruning patent portfolios, including strategies for maintenance fees and monetization. * Hybrid Model - how and why IBM uses both in-house and outside counsel for patent preparation and prosecution work * Harnessing AI in Patenting - the future role of generative AI in improving quality of patent applications and the productivity of patent drafters, and the importance of cautious adoption considering legal and ethical implications Notable, Quotable On continued role of numeric goals "I don't think you abandon numbers. I think they're certainly a part of the calculus, and you have to look at that in order to adequately protect your business." The one change he’d make to America’s patent system "I would love to see us fix subject matter eligibility. I would love to see us restore that certainty to the system." Please share with others! This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

J. John Lee is the Chief Counsel for IP in the US House of Representatives and helms the House Subcommittee on Courts, Intellectual Property, and the Internet, which is chaired by Congressman Darrell Issa. In that role, he is one of only four staffers in Congress who focus on IP issues and help set the agenda for what happens with America’s IP system. John joins Eli on this lively episode to discuss how he ended up in that role after serving as a Lead Judge on the PTAB, how he is currently working closely with the other IP staffers in Congress to advance legislation to fix Section 101 and the PTAB, what it will take for Section 101 legislation to pass, why broad consensus is necessary for IP legislation, what’s driving the bitter disagreements over IP issues, and much more! The episode was recorded at the end of last year. If you know anyone else who might be interested to learn what changes might be in store for patent law or how the patent policy sausage is made in Washington, please share with others: Selected Timestamps | 0:04:52 | How John Lee became Chief Counsel for IP in the House of Representatives | | 0:08:05 | John Lee's role as Chief Counsel for IP and his relationship with Issa and Judiciary Chair Jim Jordan | | 0:10:18 | John Lee's experience stepping into his role on the Hill | | 0:12:13 | Making positive impressions on IP staffers in Congress | | 0:16:04 | Trajectory of patent system over last 20 years | | 0:24:52 | Proposal to exercise march-in rights under the Bay-Dole Act | | 0:31:27 | Administration’s failure to build consensus on - and widespread congressional opposition to - proposals to waive & seize IP rights| | 0:33:26 | Uncertainty and lack of administration policy on standard essential patents (SEPs)| | 0:38:08 | The need to protect US leadership in technology and innovation | | 0:39:19 | Concerns about the state of Section 101 and the weaknesses of the patent system | | 0:44:04 | How patent system creates an innovation engine by encouraging disclosure of innovations | | 0:45:12 | Importance of consensus for significant changes in IP law | | 0:49:54 | Cooperation between Republicans and Democrats on IP, AI, and other related issues | | 0:53:39 | Heated opposition in House on USPTO’s ANPRM proposing changes for the PTAB | | 0:57:12 | Optimism for patent bills and substantial progress in the House and Senate. | | 1:02:28 | Possibility of introducing companion bills for Patent Eligibility Restoration Act (PERA)| | 1:05:13 | Pain points that might drive agreement on Section 101: third party litigation funding, discretionary denials at PTAB, and standard essential patents (SEPs) | | 1:06:26 | Negative impact on Federal Circuit from suspension of Judge Pauline Newman | | 1:07:57 | Role of lobbyists in development of IP policy | This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

In this special two-part episode, we delve into the creation, implementation, and strategic importance of Europe's Unified Patent Court (UPC) with UPC Judge Michael Fleuchaus and Dr. Benjamin Grau. The first part of the show highlights Judge Fleuchaus' experience as a newly appointed technical qualified judge at the UPC. Judge Fleuchaus discusses the motivations behind the UPC's establishment and overarching goal to streamline patent litigation across the European Union. He also discusses his role as a technical judge working alongside experienced legally qualified judges and shares the perspective they bring to handling cases together at the UPC. This segment provides priceless insights about how UPC proceedings differ from patent litigation within and outside of Europe and how litigants can maximize their chances of success at the UPC. In the latter part of the episode, Dr. Grau provides a distinct viewpoint as a European patent attorney closely observing the UPC. Dr. Grau casts light on the myths and practicalities surrounding opting in or out of the UPC and gives valuable advice on how to leverage the UPC to obtain the best possible patent protection in Europe. Dr. Grau's perspective is crucial for those interested in understanding the strategic considerations that come into play with the UPC's inception. This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

This year, the U.S. Chamber of Commerce brought together a diverse group of stakeholders and thought leaders in support of a framework of IP Principles. These IP Principles are part of an initiative to help America overcome a sustained effort to demonize intellectual property rights over the last 15-20 years. Patrick Kilbride and Brad Watts, from the U.S. Chamber’s Global Innovation Policy Center (GIPC), join Eli to talk about leading this initiative, the current narrative on IP rights and the forces that shaped it, the themes of the IP Principles document, and what they hope to accomplish. They also discuss why the U.S. Chamber cares so much about IP issues, whether patents are underappreciated compared to other IP rights, and much more! IP Principles: https://www.uschamber.com/assets/documents/A-Principled-Approach-to-a-New-Narrative-on-IP.pdf This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

Matteo Sabattini is well known in DC patent policy circles from his previous role as Director of IP Policy at Ericsson. He now joins Eli from Italy to discuss his new role as President and Chief Licensing Officer of Convida, what he learned from his time in DC, keys to building a successful licensing program, why recent attempts to regulate licensing of standard essential patents (SEPs) are misguided, and much more! Selected Timestamps | 0:11:03 | How shifting value from devices to services & platforms impacts who should license patents | | 0:17:46 | Licensing fueling further innovation | | 0:18:56 | Successful licensing means getting to point where both sides are equally unhappy | 0:19:20 | Importance of communicating the value of R&D for a successful licensing program | | 0:21:17 | Feedback loop between licensing and prosecution departments is crucial | | 0:25:41 | Why litigation is not always an indication of bad faith| | 0:26:30 | Unwilling licensees posing a toll on innovation | | 0:32:35 | Lessons learned from working at Sisvel | | 0:34:38 | Avanci and others proving that markets are functioning efficiently because of industry-led, licensing solutions and that new government regulations aren’t necessary | | 0:38:57 | IEEE's patent policy change sparking Matteo’s interest in policy| | 0:40:44 | Taking on policy role at Ericsson at low point of America's patent system| | 0:44:03 | Need for coalescing between different pro-patent interest groups | | 0:48:14 | Impact of issuance and withdrawal of SEP policy statements in the US | | 0:51:11 | European Commission's draft SEP proposals to supposedly help SMEs | | 0:56:22 | Idea to actually help SMEs with licensing of SEPs instead of unworkable regulation | This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

Ed Murgitroyd joins Eli Mazour to tell the stories of building Murgitroyd into one of Europe’s biggest IP law firms and his disruptive new venture Hexos IP. Murgitroyd was founded by Ed’s father Ian Murgitroyd in Scotland in 1975. Ed eventually joined his father and became the CEO of Murgitroyd before it was acquired by a private equity firm, Sovereign, in 2019. On this episode, Ed talks about: £63 Million left a bitter taste Mentioned article: “Ian Murgitroyd pens a Letter to my Younger Self” https://www.insider.co.uk/special-reports/ian-murgitroyd-pens-letter-younger-17680540 This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

Ofinno’s founder Esmael Dinan and CEO Kavon Nasabzadeh join the Clause 8 podcast to tell Ofinno’s unique story of succeeding in the patent monetization space and talk about its plans for the future. After spending years as an inventor at a large operating company, Esmael came to the conclusion that most such companies aren’t good at obtaining valuable standard essential patents (SEPs) on their own. This spurred him to found Ofinno in 2011, an R&D lab that would obtain such patents. He almost quit after spending his savings and initially failing to find any buyer for Ofinno’s patents. Instead, Ofinno went on to sell patents to companies like Samsung, Comcast, Huawei, and Honda. Ofinno recently joined Avanci’s 5G Connected Vehicle licensing program and is executing on plans to start its own licensing programs in a wide variety of other technology areas, including next generation Wi-Fi, video compression, and semiconductors. Esmael and Kavon also discuss: This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

Amit Soussana is an IP attorney at one of Israel’s leading IP firms, Luzzato and Luzzatto. She is also one of more than 240 people – including babies, children, women, the elderly, and the disabled - who were brutally taken hostage by terrorists from Gaza on October 7. More than 40 days later, almost all of them are still being held hostage. Kfir Luzzatto, the senior partner of Amit’s law firm, joins Clause 8 to talk about the story of that horrific day, Amit, the ongoing horror that the hostages’ families are experiencing, and the urgent efforts to increase awareness. Please share this story. This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

Clause 8 is back for a new season! To start the season, Eli – for the first time on Clause 8 - shares his own thoughts at length about the hottest debates in the patent world. On this episode, Eli discusses: This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

When Judge Pauline Newman helped create the U.S. Court of Appeals for the Federal Circuit in 1982 to have exclusive jurisdiction over patent cases, no one could’ve guessed the drama that would follow almost 40 years after she joined the court herself. In April, Gene Quinn broke the news on IPWatchdog about a complaint filed by the Chief Judge of the Federal Circuit against Newman for being unable to effectively discharge the duties of her office. Days later, Newman showed up and spoke at Fordham Law School’s annual IP conference in New York in a way that completely undermined the foundation of that complaint. Recently retired Federal Circuit Judge Kathleen O’Malley sat right next to Newman and looked towards her with admiration and affection. Even if Hollywood’s writers weren’t on strike, they couldn’t have scripted it better. However, recent media interviews with Newman revealed that those events were only the tip of the iceberg of this drama. Newman only discovered something was afoot when the Chief Judge - along with two other Federal judges of a Special Committee formed to investigate Newman – confronted Newman with demands that she resign or take senior status. “Just go quietly or we’ll make your life miserable,” Newman was told. A short time later, 88-year old Federal Circuit Judge Alan Lourie showed up at Newman’s Watergate (yes, that Watergate) apartment to also try to convince her to resign. By that point, he told her, the Chief Judge already managed to convince the rest of their colleagues that Newman was “totally disabled physically, and mentally incompetent.” When Lourie said he “had no reason to disbelieve” that, Newman signaled for Lourie - her Watergate complex neighbor and colleague for over 30 years on the court– to leave. The news of the complaint and Newman’s appearance at Fordham crushed the plan for Newman to “just go quietly.” Since that time, former Federal Circuit Chief Judge Michel and Rader have publicly sided with Newman. Michel highlighted “the conflicted process” where “the Chief Judge and the Special Committee [ ] continuing to act as accuser, investigator, prosecutor, and judge” by requesting a request to transfer the investigation to another federal court of appeals. Yet, noticeably, all of judges on the Federal Circuit and most of her former clerks have remained silent and are avoiding getting publicly involved. The one notable exception: Newman’s former clerk Greg Dolin. In his role as Senior Litigation Counsel at New Civil Liberties Alliance (NCLA), he is leading the legal fight against ousting Newman from the Federal Circuit. After Dolin filed a lawsuit in district court claiming that the Federal Circuit’s efforts are unconstitutional and convinced Newman to take a cognitive test, both sides agreed to U.S. District Judge Christopher Cooper’s call for mediation. On this episode, Eli talks to Greg shortly before that mediation is to take place in August with retired D.C. Circuit Judge Thomas Griffith. They talk about how and why this drama got to this point, how Newman has been able to emotionally deal with the fallout, why this fight is important beyond the Federal Circuit, what a potential resolution might look like, whether Greg and Judge Newman are preparing for impeachment proceedings, and much more! This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

Will Twitter's meager patent portfolio doom Elon Musk’s hopes of “strictly enforcing” Twitter’s IP rights? Eli is joined by return guest Gaston Kroub on this special episode to discuss how an unprecedented IP dispute between two of the world’s richest men might play out. In response to Meta successfully launching Threads, Musk’s go to lawyer Alex Spiro sent a letter to Mark Zuckerberg expressing "serious concerns that Meta...has engaged in systematic, willful, and unlawful misappropriation of Twitter's trade secrets and other intellectual property" and intention to "strictly enforce its intellectual property rights." Although the letter focuses on trade secrets, Spiro’s colleagues are likely busy mining Twitter's patent portfolio. Unfortunately for them, Twitter’s patent program last made news in 2012 when it launched the Innovator’s Patent Agreement. The IPA was meant to show Twitter’s commitment to “employees that their patents would “only be used for defensive purposes” (if you didn’t read the fine print). Unsurprisingly, this attitude led to Twitter barely obtaining any patents. However, it has managed to keep some foundational families of patents - that make Twitter founder Jack Dorsey as an inventor - alive. Will any of this matter? What will it take for Twitter to file a credible claim suit? If Twitter does file suit, what will happen next? What will it take for these billionaires - who previously challenged each other to a jiu-jitsu-match - to settle? Is this IP dispute just a scheme by Musk to make Twitter someone else’s problem? You don’t want to miss this episode to find out. This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

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 This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

Eli is joined by colleague Shawn Lillemo, Head of Software Development at their firm Harrity, to talk about the firm’s tech journey. Shawn and Eli talk about why and how the firm started its own software development team to create tools to improve how it handles its patent preparation and prosecution work, Shawn’s superstar team in Ukraine, the future role of AI, and much more: The slow embrace of technology by patent firms United States Patent and Trademark Office (USPTO)’s adoption of technology and where they are now How Shawn’s background as an attorney, patent examiner, and creating software for his college’s facilities department led him to his current role First macro created for Harrity Creation of Patentprufer - a tool for tracking information about patent examiners Lessons learned from building an enterprise software team at a law firm Stories about Shawn’s team building its first software tools How Shawn’s team in Ukraine has managed to continue to successfully develop software during the war Funneling and prioritizing endless amount of ideas to create valuable software patent tools Five year journey of creating and launching PatentHub, Harrity’s enterprise task management system Whether AI will replace patent attorneys This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

Thank you for listening to the Clause 8 podcast. We hope you’ve enjoyed the episodes so far this season. We’re on a short break but we’ll be back next week with more episodes. Please consider subscribing and taking a few moments to share this podcast with others and giving us a rating in your favorite podcast app. It helps this podcast reach new audiences. Eli is always welcome to hear any thoughts or ideas for the podcast. You can find him @EliMazour on Twitter. Or visit voiceofip.com for more information. And if you’d like to learn more about Eli’s firm, visit HarrityLLP.com This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

Joff Wild on Founding IAM for Chief IP Officers & EU Commission’s anti-SEP Crusade “It became obvious to me that IP was a lot more than laws and court decisions and regulations. IP was becoming a fundamental business asset, one that people could use to generate profits, build partnerships, go out into the markets, and raise cash. But no one was writing about that there was no coverage of that. So that said to me, there was an opportunity to create something new.” IAM’s founding editor Joff Wild joins Eli from ‘across the pond’ to talk about starting a media company to cover the business of intellectual property (IP), the barrage of recent news about the European Commission’s misguided standard essential patents (SEPs) proposals, and much more: This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

Eli is joined by the legend of the patent bar, the virtuoso of Federal Circuit decisions – Tom Irving. They discuss the rise of the pharmaceutical patent practice, the creation and current state of the Federal Circuit, why and how Tom mentored 1000s of patent attorneys, best practices for patent prosecution, and much more! Chief Judge Moore’s efforts to oust Judge Newman How Tom ended up practicing patent law Why there are so many patent attorneys from and in Utah Joining Finnegan, Henderson in the 70s How general patent practice firms getting into patent law spurred the growth of the pharma patent practice Working on the first Hatch-Waxman litigation Stories about helping pharma start-ups build multibillion dollar patent portfolios Advice for building valuable patent portfolios Why pharma patents generally manage to survive PTAB proceedings The cost of drugs How Tom predicted issues raised by Salazar v. AT&T Mobility LLC Whether the Federal Circuit should issue more en banc decisions Should the Federal Circuit be responsible for uniformity in decisions? Being law firm partners with Judge Kara Stoll Being mentored by PJ Federico and others Advice for mentoring others Who should consider retiring Tom’s retirement plans in 2054 This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

Tim Pohlmann is the founder and CEO of IPlytics, which provides software analytics tools for standard essential patents (SEPs). Tim is also one of the world’s leading economists that focuses on the subject of SEPs, and was recently commissioned by the EU Commission to provide empirical studies for their work regarding SEPs. Tim’s podcast, The SEP Couch, features discussions with a very diverse group of industry leaders, prominent attorneys, academics, and policy makers on the subject of SEPs). On this episode, Tim and Eli discuss: The SEP Couch Podcast, including Eli’s favorite interviews with Carlos Olarte and Kirti Gupta How, as an economist, Tim became interested in patents, and specifically SEPs Founding IPlytics, the evolution of patent data, and keeping customers engaged Advice for starting and growing a software company in the legal/patent space Incentivizing through SEPs and the ideal system for innovation related to standards Weighing transaction costs & role of actors purposefully increasing those costs The limits of data and media simplification Lobbying on SEPs issues Lexis Nexis’ acquisition of IPlytics This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

David Jones is the Executive Director of the High Tech Inventors Alliance (HTIA), which advocates on patent policy issues on behalf of some of the largest tech companies in the world. When Dave became the head of HTIA in 2019, it seemed that DC was finally turning against the “patent troll” narrative driving patent policy in Congress and the executive branch. However, that did not last long: efforts to pass Section 101 reform failed to gain traction in Congress; the current administration rolled back efforts to restrain the role of the PTAB under the previous administration; and an unprecedented lobbying effort spurred the Chief Judge of the Western District of Texas to randomly reassign new patent cases filed in Judge Alan Albright’s division. All outcomes that members of the HTIA supported. This episode features a wide-ranging and super fun conversation about if (and how) Dave has been so effective as head of HTOA over the last few years and/or if he’s just that lucky. Prior to taking the helm at HTIA, Dave was assistant general counsel for IP policy at Microsoft and worked for Senator Orrin Hatch on IP issues for many years. Dave is able to draw on those experiences to provide priceless – and often surprising - insights about how patent policies are shaped. This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

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: This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

If you’ve come across a national news story about some brash character making lots of money from patent deals, chances are that the person making those deals happen behind the scenes was an unassuming lawyer in Israel. Her name is Lillian Shaked. On this episode, Lillian tells the story of how she went from being a commercial attorney in Israel to working with who’s who of patent monetization legends around the world and likely working on more major patent deals than any other attorney in the world. Lillian also talks about her relatively recent transition from being the lawyer to acquiring and monetizing the patents herself. This is likely only the beginning of that story…. In this episode, Eli & Lillian discuss: How moving from Canada to Israel set her apart as Israel’s high tech sector boomed How Lillian made a patent transaction career from one patent deal Working with Erich Spangenberg Advantage of working from Israel on American patent deals Importance of ongoing, positive relationships between parties involved in patent transactions Monetization strategies based on reasonableness of infringers/potential licensees Impact of course correction in patent market after the boom years in the early 2000s Rise of litigation funding Why patent litigation funding companies moved from taking passive role to taking active role How and why patent litigators prevent win-win outcomes Terms to avoid in patent deals Why and how deals fall apart Importance of momentum for patent transactions Why the BlackBerry patent deal fell apart Transitioning from handling the transactions as a lawyer to acquiring patents from beginning Advice for building valuable patent portfolios Efforts to shame patent assertion entities This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com