On Intellectual Property Jeff Harty

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: https://ipwatchdog.com/people/carlo-cotrone-2/ 
Twitter: https://twitter.com/cmcotrone 
LinkedIn: https://www.linkedin.com/in/carlo-cotrone-8266752/ 


Connect with Jeff Harty: 
Website:  https://nyemaster.com/attorney-directory/jeffrey-d-harty/
Email:  jharty@nyemaster.com
LinkedIn: https://www.linkedin.com/in/jeff-harty-5a9a1643/

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: https://www.linkedin.com/in/kwgoodwin/ 
Twitter: @kirk_goodwin https://twitter.com/kirk_goodwin 


Connect with Jeff Harty: 
Website:  https://nyemaster.com/attorney-directory/jeffrey-d-harty/
Email:  jharty@nyemaster.com
LinkedIn: https://www.linkedin.com/in/jeff-harty-5a9a1643/

Welcome to Season 2 of the On Intellectual Property Podcast! We welcome Judge Randall Rader and welcome back Jay Kesan for a conversation on all things patent. 

In this episode, Jeff Harty, Judge Randall Rader, and IP attorney and law professor Jay Kesan discuss: 
AIA, the PTAB, and PTAB Reform (the Prevail Act)Global patent trends and what it means for the U.S. innovation economyApportionment in patent damagesFrom E.D. of Texas to W.D. of Texas to Delaware: hot patent courtsEffective appellate advocacy
Key Takeaways: 
Adequately protecting the technology of tomorrow requires looking beyond your own country’s law. We cannot simply look to U.S. intellectual property law but must consider the global interplay in patent law. IP is about strategy. In a worldwide dispute, you want to be able to settle in the United States, even if you use leverage from other countries to give you the best strategy for your desired settlement. It is about more than just the cash value. There is also cost value and market value to be considered in apportionment. In appellate work, you are looking for a single, reversible error. You need to be able to discern the one error that should be corrected, why it is reversible, and then be clear and convincing on that point. 

“I feel like putting a model or submitting a model forces me to submit, essentially, an embodiment and example. And I would hate to be limited to the example or the model that I submit. Part of the beauty of the claims system is that you’re drafting the claims to capture all those examples and models and so on. And I’d hate to be deprived of that by having a model submitted or basically lose that flexibility at the altar of definiteness or preciseness.” —Jay Kesan
 
Connect with Judge Randall Rader: 
Bio: https://www.law.gwu.edu/randall-r-rader 
Website: https://www.theradergrouppllc.com/ 

Connect with Jay Kesan: 
Bio: https://jaykesan.com/about-me/ 
Website: https://jaykesan.com/ 
Email: jay@jaykesan.com 
Books: https://jaykesan.com/books/ 
Twitter: https://twitter.com/JayKesanP 
LinkedIn: https://www.linkedin.com/in/jaykesan/ 
YouTube: https://www.youtube.com/channel/UCENwROk5ywajSVoJWUX9SBA/featured 

If you missed it, check out our first episode with Jay Kesan: The PTAB And The Impact Of Post-Issuance Invalidity Proceedings With Jay Kesan

Connect with Jeff Harty: 
Website: https://nyemaster.com/attorney-directory/jeffrey-d-harty/
Email: jharty@nyemaster.com
LinkedIn: https://www.linkedin.com/in/jeff-harty-5a9a1643/

In our innovation economy, trademarks and trademark protection are likely to play a significant role in an intellectual property strategy. We know companies spend lots of time and money investing in brands as they compete for consumer attention and recognition. We also know that surveys play an important role in trademark and unfair competition cases. In particular, that’s because so many inquiries are focused on the perceptions of the average, reasonably prudent consumer. How do we measure that? How do we assess that? It sets the stage for a potential consumer survey, which introduces both technical and strategic questions. Featured guest Mike Keyes is uniquely qualified to help us better understand the effective use of trademark surveys, both from an academic and a practical litigation perspective.

In this episode, Jeff Harty and Mike Keyes discuss: 
The evolution of survey evidence in court cases. Common ways surveys are used in trademark and advertising litigation. The role lawyers and survey experts play in consumer surveys. Why surveys are approachable subject matter and evidence for jurors (and how they can be looked upon unfavorably). Hurdles to the admissibility of survey evidence. 
Key Takeaways: 
The treatment of expert testimony under Federal Rules of Evidence 702 and 703 contributed to the growth of consumer surveys in litigation, and now it is not unusual for judges to expect to see surveys in Lanham Act cases. When it comes to secondary meaning and likelihood of confusion, surveys can be beneficial and can be powerful and persuasive pieces of evidence. Different types of trademark survey designs can be used depending on what litigators are trying to show, such as genericism, acquired distinctiveness, or likelihood of confusion. There's both art and science to putting together a survey questionnaire that’s clear, concise, and not leading or biasing survey respondents. 

“Survey evidence doesn’t show actual confusion—what it’s trying to test for. It’s a tool to assess how consumers’ perceptions are in the real-world marketplace. And because it’s really trying to get at that issue, it’s important to replicate marketplace conditions in terms of how consumers encounter the marks at issue during the survey process.” —Mike Keyes
   

About Mike Keyes: 
Mike Keyes is the co-head of Dorsey’s trial group and a go-to intellectual property and commercial litigation trial attorney with a vast reservoir of experience in cases involving trademarks, copyrights, and false advertising, including individual consumer and class action claims. Mike and his team have represented some of the world’s most recognized brands and companies in high-stakes litigation in federal courts across the country including Washington, Oregon, California, Colorado, Minnesota, Illinois, New York, Massachusetts, Utah, and Florida. These disputes have encompassed subject matters including medical diagnostics software, online games and apps, Google Ads, social media, e-books, consumer products, food and beverage, fashion, sports equipment, educational testing tools, and hospitality services. 

Connect with Mike Keyes: 
Website: https://www.dorsey.com/ 
LinkedIn: https://www.linkedin.com/in/mike-keyes-7b6a134/ 
Email: keyes.mike@dorsey.com 

Connect with Jeff Harty: 
Website: https://nyemaster.com/attorney-directory/jeffrey-d-harty/
Email: jharty@nyemaster.com
LinkedIn: https://www.linkedin.com/in/jeff-harty-5a9a1643/

This is a particularly special episode for me because I’m joined by friend and colleague Todd Van Thomme. When you feel stuck in your work, you need a fresh idea or a new way to think about an issue. A colleague you can turn to for help, guidance, or a new way to frame the issue can lead you toward solving your problem. When it comes to protecting inventions, patent prosecution, and building strong portfolios, Todd is right at the top of my go-to list. I know from experience working with Todd that he always prosecutes patents with a strategy in mind and a purpose. That is what he is going to share with us. 

In this episode, Jeff Harty and Todd Van Thomme discuss: 
Todd’s unique journey to the intellectual property field. The early stages of IP for preserving and maintaining the right. Best practices for application success. Taking a collaborative approach with the examiner. 
Key Takeaways: 
Listen as much as possible. It is crucial to understand the client’s business and goals. When developing an IP portfolio, sometimes the failures help to define the better way to write the application or story. It helps to understand how the client reached that point and the possible scope of their invention. Although conducting an examiner interview may cost a little more upfront in the IP application process, it very well may save considerable money later as it often speeds up the application and examination process. There is value in tapping someone who primarily does patent litigation to get a different viewpoint on protecting inventions.
“If I had my choice, I’d conduct an interview in virtually every case. It fosters some of that collaborative interaction with the examiner. Most examiners, I think, are willing to have those kinds of conversations at virtually every stage.” —Todd Van Thomme
   

Episode References: 
LexisNexis Pathways: https://www.lexisnexisip.com/solutions/patent-drafting/tech-center-navigator/ LexisNexis Patent Advisor: https://www.lexisnexisip.com/solutions/patent-prosecution/patentadvisor/ 
About Todd Van Thomme: 
An inventor and entrepreneur, Todd Van Thomme's experience with his own start-up company helps him understand both the legal challenges and the day-to-day issues of running a business.

In his intellectual property practice, Todd partners with clients to identify and collaborate on mechanical, chemical, nutraceutical, pharmaceutical, and food science-related intellectual property needs. He drafts and prosecutes both utility and design patent applications. He also drafts patentability, non-infringement, and invalidity opinions, especially for patents and patent applications. He counsels clients on how to avoid IP disputes and works with clients to resolve them when they do occur. Todd also prepares, files, and prosecutes trademark applications.

His combination of legal and entrepreneurial experience brings unexpected benefits for clients. As a former secondment in-house counsel for Whirlpool Corp. and the inventor and owner of Giftzapz, a patent pending gift list-sharing app, Todd has gained a client’s perspective of a business.

As president of the Association of Intellectual Property Firms, Todd developed close personal relationships with thought leaders in the larger intellectual property legal community around the world. He uses those personal connections to aid clients in protecting their IP worldwide, taking a globally strategic view of patent and trademark prosecution.


Connect with Todd Van Thomme: 
Website: https://nyemaster.com/attorney-directory/todd-a-van-thomme/ 
Email: tvanthomme@nyemaster.com 
LinkedIn: https://www.linkedin.com/in/toddvanthomme/  

Connect with Jeff Harty: 
Website:  https://nyemaster.com/attorney-directory/jeffrey-d-harty/
Email:  jharty@nyemaster.com
LinkedIn: https://www.linkedin.com/in/jeff-harty-5a9a1643/

We’re taking a critical look at one of the most important parts of a patent case: claim construction. Michael Friedland, co-chair of Knobbe Martens’ litigation practice group, is uniquely qualified to help us unpack claim construction, advocacy, and the importance of natural language—utilizing plain and ordinary meanings when urging proposed constructions of disputed claim language. 

In this episode, Jeff Harty and Michael Friedland discuss: 
The role of claim construction in a patent dispute. Balancing the simplification of technology so a judge can understand it without simplifying to the point of inaccuracy. Knowing your audience and changing your approach to the court. The role of expert testimony in claim construction (and when not to use an expert). 
Key Takeaways: 
Keep it clear, keep it simple, and work together with the court to sort out any confusion regarding the relevant technology and to adopt the proper interpretation of the claim language. Start giving claim construction serious thought when you first look into the case, even before it is filed. A good brief can help somebody pick which claim construction to use and help them get it right. The simpler claim construction is often the one that wins. An expert is someone outside your control and can cause confusion when it wasn’t necessary based on the record you already have. 
“I want whatever we are doing to seem simple, natural, and not contrived.” —Michael Friedland
   

About Michael Friedland: 
Mike has three decades of intellectual property enforcement experience and is the co-chair of Knobbe Martens’ litigation practice group. Since 2000, he has represented clients in more than 200 intellectual property cases in courts in California and 21 other states.
Focused on patent, trademark, trade secret, and copyright matters, Mike’s cases have spanned a range of industries and technologies, including consumer products, semiconductors, tactical products, medical devices, computer software, apparel, restaurants, and financial services.
He has represented brand-name companies including Oakley, Luxottica, ITT, Makita, Pacific Life Insurance Company, Carl’s Jr., Microsemi, NASCAR, Daytona International Speedway, Game Show Network, Razor, Volcom, Specialized Bicycle, Mexicana Airlines, and SRS Labs.
Mike is the secretary of the Harvard Law School Association and a member of its executive committee. He is a co-founder and former president of the Harvard Law School Association of Orange County. He is a member of INTA’s Alternative Dispute Resolution Committee. Mike has taught as an adjunct professor at the Whittier School of Law and served as a JAG officer with the California State Military Reserve. He worked as a reserve deputy with the Orange County Sheriff’s Department for 16 years, retiring as a lieutenant.

Connect with Michael Friedland: 
Website: https://www.knobbe.com/ 
Website: https://www.knobbe.com/attorneys/michael-friedland 
Email: michael.friedland@knobbe.com 
LinkedIn: https://www.linkedin.com/in/michael-friedland-43a76a1/ 

Connect with Jeff Harty: 
Website: https://nyemaster.com/attorney-directory/jeffrey-d-harty/
Email: jharty@nyemaster.com
LinkedIn: https://www.linkedin.com/in/jeff-harty-5a9a1643/