Clause 8 of the US constitution is the foundation for America’s intellectual property laws. On the Clause 8 podcast, we talk to the personalities that make the IP system possible. That includes everyone from Chief Judges of the Federal Circuit and directors of the US Patent Office to the attorney who defended Carole Baskin’s trademark rights in the documentary Tiger King. The conversations provide strategic insights about the forces that shape IP policies, the business of innovation and IP law, and how to best deal with various patent issues from those who know best.
We also share entertaining backstories that allow our listeners to better understand the most important decision makers in the IP field. This is why senior in-house lawyers, law firm leaders, and DC’s savviest patent policy advocates make sure they don’t miss an episode.
This show is hosted by me, Eli Mazour. I am a partner at Harrity & Harrity, LLP – the go-to firm for the world’s largest patent filers. I personally try to use the knowledge that I gain from the podcast to help inform in-house counsel making difficult decisions, including how to prudently and effectively navigate patent policy developments.
For more information, visit voiceofip.com. And, if you would like to learn more about my firm, visit harrityllp.com.
Bob Giles – Exclusive Interview with Qualcomm's New Chief IP Counsel
Qualcomm is responsible for the smartphone revolution. It started working on the technology back when many thought it was impossible. Besides everyday users, one of the biggest beneficiaries of Qualcomm’ technology was Apple.
Apple relied on the technology to make iPhones that grew its market cap to a record of $3 Trillion. However, eventually, Apple decided it was paying Qualcomm too much for the technology.
And, instead of agreeing to one fair arbitration process to settle the dispute, Apple decided to rely on scorched-earth litigation. The dispute between Apple and Qualcomm quickly blossomed into more than 100 cases around the world.
But it wasn’t long before Qualcomm was racking up wins in China, Germany, and the US. Apple finally agreed to settle on the eve of another trial in the US in 2019.
Bob Giles was one of the people responsible for that Qualcomm victory.
Two years after that, he was named Chief IP Counsel at Qualcomm. He now shepherds a team that is responsible for managing and growing 140,000 IP assets and handling some of the most high-profile patent disputes in the world.
On this episode, Eli talks to Bob about his new role and the ongoing disagreements between innovators like Qualcomm and implementers like Apple.
[02:07] What’s Qualcomm all about?: Giles discusses how Qualcomm began, the early challenges it faced, and its business mission.
[05:37] Keeping the lights on: Giles tells the story of how Qualcomm entered a licensing agreement with Motorola in its early days.
[07:23] Qualcomm’s business model: Giles explains why Qualcomm’s model works and how it encourages innovation.
[10:01] Does the current system for standards and SEPs work?: Giles discusses the policy debates regarding these topics.
[19:55] Getting the dream job: Giles talks about what it was like to transition from patent litigation to Chief IP Counsel at Qualcomm, and what the Chief IP Counsel job entails.
[28:42] What makes a great portfolio?: Qualcomm isn’t like other companies when it comes to patents. As chief IP counsel, Giles discusses what needs to be part of the company’s portfolio.
[35:37] The million-dollar question: The law, and our interpretation of it, is changing all the time. How does a company like Qualcomm, with over 140,000 IP assets and offices all over the world, navigate those developments?
[39:57] Apple v. Qualcomm: Giles discusses how he helped Qualcomm beat Apple
[43:13] Lessons learned: Giles discusses his major takeaways from litigating a large-scale, multinational case.
[47:06] Why Qualcomm thrives: Giles shares the underappreciated aspects of Qualcomm and his take on why it has been so successful.
[50:37] The innovation climate: Qualcomm was able to get an injunction for its patents in China and Germany, but not in the U.S. When impact does this have on American companies trying to innovate and protect their IP?
[52:18] The ‘death squad of patents’?: The 2011 creation of a Patent Trial and Appeal Board, has been controversial, but has it damaged the U.S. IP system? What went wrong? Giles shares his thoughts.
[57:17] Know your field: Giles offers his advice for being successful in the IP field.
Ray Millien - Volvo's past Chief IP Officer & CEO of Harness IP
What is outside counsel’s real job? How do you make patents part of a 100-year-old company’s DNA? Why did Ocean Tomo fail to become the Goldman Sachs of patents? How do you get opposing counsel to offer you a dream job? The Renaissance Man of IP – Raymond Millien – shares these secrets on the latest episode of Clause 8. Ray previously served as Chief IP Office at Volvo and is now the CEO of the IP boutique, Harness IP. Prior to that, Ray served as the general counsel of a groundbreaking IP business, helped rebuilt the IP program of a Fortune 100 company after the Great Recession, and co-founded the PCT Law Group.
On this episode, Eli talks to Ray about how to succeed as in-house counsel and outside counsel, how to properly built a patent portfolio for a major corporation, and what it takes to succeed in the IP field.
[01:35] From computer programming to IP: Born in Brooklyn to Haitian parents, Ray discusses how he “Forrest Gumped” his way into IP law.
[06:46] The Goldman Sachs of IP?: Ray talks about how he fell into being general counsel at Ocean Tomo, which had a vision of being the “Goldman Sachs of the IP world.”
[10:28] Jumping into public policy and out: Excursion into lobbying on IP issues after starting PCT Law Group in Washington, D.C., and jumping out to restart Goldman Sachs’ IP program
[16:58] Ignore at your own peril: How should financial services companies — which don’t produce physical products — go about building an IP portfolio?
[19:45] The challenges of management: What does a Chief IP Counsel actually do? There’s plenty of confusion and misconceptions over the job. As Ray explains, it varies from company to company.
[22:45] Be a salesperson: As the former Chief IP officer at Volvo, Ray was working for a multimillion-dollar company that was famously innovative. Ray explains what it takes to survive such a role.
[29:02] Setting a quota: Many companies set a goal for how many patents they want to file by the end of the year. Ray explains why he disagrees with this practice, even with “use it or lose it” budgets.
[34:56] Quality vs. quantity: How can a company build a respectable patent portfolio? Ray talks about how you need quantity to get to quality.
[39:48] What works and what doesn’t: Chief IP Counsel get tons of emails and messages from outside counsel every day asking to represent their company or product. Ray let us in on what caught his attention.
[42:15] Be a renaissance IP lawyer: Ray explains how he became a “renaissance” IP lawyer and how knowing a little bit about all sides of IP has helped him succeed in his career.
[44:59] What needs to change: Ray talks about how the system itself that needs to work faster.
[46:14] From opponents to colleagues: “I’ve been Forrest Gump my entire career:” Ray reveals the unusual circumstances of how he ended up working for Harness IP.
[53:03] The plague of patent law: Ray talks about what’s plaguing the U.S. patent law system now — the lack of consistency in software patent rulings in federal courts.
Prof. Tim Hsieh on Value of District Court Judges Having Patent Expertise
Show Notes Is it preferable for patent cases to be handled by district court judges who have relevant expertise and experience? Senator Leahy can’t make up his mind.
Leahy’s eponymous Leahy-Smith American Invents Act created the Patent Pilot Program. The program allowed federal district court judges in select districts to volunteer to handle patent cases. The goal was for certain judges to have increased expertise – and as a result – do a better job.
However, after the program expired and Judge Alan Albright started attracting patent cases to his Waco court room in the Western District of Texas, Leahy had a change of heart. In an unprecedented letter to Supreme Court Justice Roberts, Leahy pressured Roberts to do what he can to stop Waco from being a go-to patent venue by suggesting there was something untoward about Albright’s interest in patent cases. The pressure campaign seems to have worked. In his end-of-year report, Roberts highlighted the issue and stressed “the role of district judges as generalists.”
Eli decided to talk to an expert on the subject of patent venues - Prof. Timothy Hsieh – about this recent controversy.
Eli also talks to Prof. Hsieh about whether how courts think about venue is outdated and his fascinating career trajectory of patent litigator turned patent examiner turned law school professor.
Clause 8 is part of IPWatchdog and sponsored by Harrity– the go-to firm for the Patent 300 for patent preparation & prosecution.
[00:09] Getting to know the IP Expert: the unlikely trajectory of a patent litigator turned patent examiner turned law professor at the University of Oklahoma City.
[07:09] From clerk to patent examiner: Hsieh talks about his federal clerkship experience before becoming an examiner at the U.S. Patent and Trademark Offices (USPTO) to work as an examiner.
[12:10] Pit of despair: Hsieh talks about his experience as an examiner in the USPTO’s business method Technology Center.
[17:11] Advice for patent applicants: Hsieh offers some pointers from an examiner’s perspective for what applicants can do to succeed at the USPTO.
[20:57] TC Heartland: Hsieh talks about his the impact of TC Heartland vs. Kraft Foods, including how it’s impacting district courts in Delaware and Northern California.
[31:54] Outdated concepts: Is federal venue jurisprudence outdated?
[36:37] Experts vs. generalists: In a 2021 paper, law scholar Paul Gugliozza stresses that the TC Heartland case may have ended the practice of forum shopping and replaced it with judge shopping. Is that a bad thing?
[41:14] An unprecedented writ: Writs of mandamus are only supposed to be used in the most extreme or rare circumstances. Hsieh explains why they are being used more than ever to order reversals of venue changes.
[46:07] An ongoing problem?: TC Heartland sought to address the high concentration of patents being filed in East Texas, but now a majority of cases are moving to two states: Delaware and California. Is this an improvement?
[55:03] Keep the spark alive: Academia is one of the most competitive career sectors. Hsieh gives advice to those who want to replicate his career path.
Phil Warrick on Working with Sen. Coons to Improve Patent System
How is patent policy made in Congress? Few know better than Philip Warrick. Phil served as Senator Coons’ top IP advisor after Coons helped restart the Senate’s IP Subcommittee. In that role, Phil helped lead the subcommittees’ efforts to improve America’s patent system, including legislation to fix the patent eligibility mess. Those efforts were a dramatic departure from Congress’s previous fixation on the “patent troll” narrative.
After Coons friend and fellow Delawarean, Joe Biden, was elected as president, the innovation community was hopeful that Coons would use his top role on the Subcommittee to prioritize patent issues within the Biden administration and Congress.
However, Democrat Senator Leahy had other ideas and took over as the top Democrat on the Subcommittee. Since that time, the Subcommittee has moved in a very different, anti-patent direction and Leahy's views have won out in seemingly every major administration decision related to patents.
Yet, in another twist, Leahy has announced that he is retiring and won’t seek re-election in ‘22. So, Coons is likely to return to his role as the top Democrat on the IP Subcommittee.
On this episode, Eli talks to Phil about what it was like to work for Senator Coons, how to effectively lobby on patent issues, and big tech's influence on patent policy.
[00:07] Meet the expert: Few know IP law better than Philip Warrick.
[01:53] Getting to know patents: As an undergraduate student, Warrick knew he had an interest in law. The interest led him to his first job in the field — before he ever set foot in law school.
[04:54] A career curveball: Warrick never planned to work on Capitol Hill, but things changed when opportunity knocked.
[11:38] Creating a network: Warrick shares one of the most important lessons he learned on the Hill, an environment where many are chasing their own agenda.
[14:59] Working across the aisle: Warrick discusses the bills and initiatives he worked to push forward with representatives across the political spectrum, including with former podcast guest Brad Watts.
[18:35] Finding a solution: Coons’ team hoped drafting legislation would clarify Section 101 of U.S. patent code, a clause often confused with Section 112. The hearings didn’t go the way he hoped.
[28:35] Hope for a better solution: The drafted bill didn’t quite achieve the outcome they had hoped for, but that doesn’t mean the future is bleak.
[32:09] Building stronger patents: An ongoing challenge at the forefront of Sen. Coons’ concerns for patents in America is getting the Stronger Patents Act passed. The law would make it easier and less costly for patent holders to enforce their patents.
[40:41] Finding common ground: Warrick discusses the dynamic between Sen. Coons and Sen. Tillis, who were on opposite sides of the aisle and how it affected their efforts on patent law.
[42:58] The future of IP in the Senate: As Sen. Patrick Leahy, current chair of the IP subcommittee, plans to retire in two years, Warrick hopes conversations around patent law will remain in conversations on the Hill.
[43:58] A patent-unfriendly administration?: The Biden administration has taken a position far from what Sen. Coons would have chosen, Warrick says.
[46:56] A complex dynamic: The most surprising thing to Warrick was the complicated relationships and dynamics between offices and staffers. “And there certainly are situations where people are looking to get things done, they want to cut deals … [and] where you're not debating one bill in isolation.”
[51:52] A voice in the debate: For companies and organizations with patents, even minor changes in patent law could have a major impact. Collaboration goes a long way in ensuring your voice is heard when these issues are on the table.
[55:28] Know the playing field: If an organization wants to influence legislation, the foremost important factor is understanding
Louis Carbonneau on Brokering Patents After the Patent Gold Rush
The golden age for patent brokers has come and gone but that doesn’t stop Louis Carbonneau. “There are very, very few patent brokers nowadays. We’re just one of a handful left. And frankly, we get about four or five portfolios every single day that people want us to broker. We only say yes 1% or 2% of the time.”
As one of the world’s leading patent brokers, the CEO and Founder of Tangible IP has brokered over 4,500 patents and boasts close to 30 years in the industry.
With experience as Microsoft’s former General Manager of International IP & Licensing, Carbonneau has sat on many sides of the table. He shares his adventures in the industry (and lessons learned).
Carbonneau tells behind-the-scenes stories from his time at Microsoft, the common pitfalls of patent licensing, and why price isn’t always an essential part of the conversation when buying and selling intellectual property.
“Some people will not even want to acquire patents for free if they don’t like the patents because then they have to start paying for maintenance fees and prosecution fees. It’s like a free puppy. It’s only free for a few hours, and after that, you start paying,” says Carbonneau.
The episode also offers insight into a typical IP transaction at Carbonneau’s firm, helping those interested in selling their patents to understand what brokers — and buyers — are looking for in a deal.
[02:45] Dinosaurs and Microsoft: joining Microsoft’s legal team as a result of the acquisition of Softimage, the computer graphics company behind Jurassic Park.
[05:18] How a cross-licensing deal saved Apple: how a creative deal offered by Microsoft – in midst of its antitrust battles in the late 90s – helped save Apple.
[08:45] From licensing products to IP: under the direction of Marshall Phelps, a new addition to Microsoft’s team, Carbonneau began harvesting the intellectual property from Microsoft’s many research labs around the world.
[14:13] Balancing budgets: the complicated role of finance in licensing and monetizing intellectual property within a corporation. Which department owns a patent can make a big difference in how the intellectual property is managed.
[17:38] The golden age of patent brokerage: the creation of Intellectual Ventures and how he eventually founded his own brokerage firm, Tangible IP.
[24:49] What makes a good deal?: Carbonneau walks us through what makes (or doesn’t make) a good patent transaction. Ultimately, it is challenging to calculate the ROI of large deals.
[28:11] Changing tides: Carbonneau explains the change in the patent landscape as a result of the creation of the Patent Trial and Appeal Board (PTAB) and the subject matter eligibility mess.
[32:53] A typical transaction: Carbonneau outlines his brokerage firm’s intake process and share what he’s looking for when he’s helping to sell patent assets.
[37:10] The dirty little secret: Carbonneau shares the strategy used by many big corporations.
[39:35] Seller pitfalls: Who’s looking to sell their patents and what do they do wrong?
[44:47] Patent prosecution is ‘part art, part science’: discussion of what makes patents valuable and best practices for patent law.
[49:37] The perfect patent: It’s hard to find the patent that everybody likes and it’s not always about price. Carbonneau talks about the challenges he faces helping his buyers find patents worth acquiring.
[52:46] The IP ecosystem: Carbonneau walks us through the many players within the intellectual property industry and discusses the division of labor for the buying and selling of intellectual property.
[59:48] You’ve been warned: the challenges of being a patent broker with the current legal landscape
Ryan Abbott on Why Patent Law Should Recognize AI Inventors
Good lawyers effectively deal with the present. Very few have what it takes to create the future. Professor Ryan Abbott is doing just that.
He leads the DABUS project: the first time ever an AI machine has been named as an inventor on a patent application. Most thought that the project was an interesting academic exercise that was unlikely to go anywhere. Some - uncharitably - dismissed it as "a publicity stunt."
Yet, the DABUS project did get a patent in South Africa. And, an Australian judge ruled that AI machine can be recognized as an inventor. Even more significantly, the DABUS project successfully raised awareness about the issue of AI inventorship among policy makers all over the world.
But what does it mean for an AI system to be named as an inventor in the real world?
In this episode, Abbott makes his case for the skeptics: Identifying AI as the inventor on patents is morally and commercially important. He also explains how to judge whether the human pushing the buttons is as much an inventor as the AI they’re programming.
On this episode, Eli and Prof. Abbott talk about the Artificial Inventor Project, whether everything will be “obvious” in the future, and Prof. Abbott’s fascinating new book “The Reasonable Robot: Artificial Intelligence and the Law.”
[1:41] Meet our guest: Abbott explains how degrees in law and medicine pushed him towards patents. He worked for the World Health Organization (WHO) on patents related to life sciences.
[6:17] The eureka moment: Around 2013, Abbott noticed that life sciences companies were using AI to scan through large databases for information, which prompted research and inventions. Normally, people who did that would be named on the resulting patents.
[8:32] The case for AI inventors: Based on his observations, Abbott outlines his academic argument for naming AI on patents: It incentivizes humans to build machines that come up with inventions, which is exactly the purpose of the patent system.
[11:39] Meet DABUS: Abbott discusses how he teamed up with Dr. Stephen Thaler, who invented a type of AI called DABUS and is a pioneer of naming AI on patents. DABUS is the AI identified in patents Abbott is defending in courts around the world as a leader of the Artificial Inventor Project.
[12:13] Breaking the mold: The Artificial Inventor Project is breaking new ground with its attempts to name AI as inventors. AI has only just become capable of contributing to inventions — and patent lawyers still advise their clients to name themselves, not their machines.
[13:23] Copying copyright: Copyright law is ahead of patent law when it comes to AI involvement. It’s possible to guess how AI will work in patents by looking at the technology’s role in copyright cases.
[18:00] Break law, don’t make law: Abbott explains why he chose to litigate on behalf of AI inventors, rather than lobby, and why he picked the specific cases he did.
[23:51] The human touch: Humans are still involved in AI inventions — so aren’t they really the inventors? Abbott addresses the tricky topic of weighing human versus AI involvement.
[28:01] Assessing merit: Abbott explains why it can be helpful to compare AI involvement to a team of people working on a new invention in a lab. What role does someone have to play to earn credit?
[30:12] Why AI inventorship matters: Despite the difficulties, naming AI inventors is worth it. Abbott makes the case that there is a moral responsibility to accurately identify who — or what — invented something. Not to mention the impact on entitlement to the IP.
[37:36] What’s next for the Artificial Inventor Project: Abbott and Thaler's work raises broader discussions about tech and the law, and how that relationship should work.
[46:25] Are these lawsuits artificial?: Abbott responds to accusations that his project is a publicity stunt.
[48:12] A problem prediction: Abbott admits that he has concerns about how hindsi
Whether you are an experienced professional or someone looking to get into the field, Clause 8 is a great source of info from a variety of sources. Eli has top notch guests and asks great questions.
Well done podcast
Very interesting patent law podcast. Would recommend to anyone in the field.
Intellectual Property is a facet of society that has an impact on all of us.
Started listening to this podcast to try and gain insight into IP, and what is going on currently to help me- as a consumer.
After googling Eli Mazour, I was able to see he had dedicated his life to this cause.
Most impressive is the caliber of guests he is able to interview. Truly, movers and shakers within the field.
Always an interesting listen!
UPDATE: Eli Mazour always managing to get top notch guests on the show.
It cannot get any more current than having the attorney for one of the protagonists on the wildly popular Netflix series “Tiger King” come on the podcast.
Though, I wish he had asked the question that is on many people’s minds- That being said a great interview that shows how prevalent IP issues are in every facet of society!