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.
Exclusive Interview with Judge Pauline Newman’s Attorney Greg Dolin
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!
SPECIAL EP: If Twitter Sues…with Gaston Kroub
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.
Ex-USPTO GC Nick Matich on Rulemaking & the PTAB
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
Shawn Lillemo on Building Software Tools for a Patent Firm
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
New Episodes Coming Soon
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
Joff Wild on Founding IAM for Chief IP Officers & EU Commission’s anti-SEP Crusade
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:
Joff’s journey from tabloids to IP Editing Managing Intellectual Property (MIP) How legacy IP media failed to appreciate/cover IP as a fundamental business asset Founding IAM in 2003 Willing Chief IP Officers into existence with Rob Sterne (of Sterne Kessler) and Ron Laurie “If you create, they will come” – creating the idea of Chief of IP Officers What Chief IP Officers care about: danger & opportunity Strength & weakness of Chief IP Officers Why forward-thinking companies were willing to tell IAM their IP secrets Importance of sharing information for growing IP ecosystem How partnering with Ocean Tomo to host Europe’s first patent auction led to IAM’s event business Concerns about conflicts with IAM’s event business How patents are a clear force for good Why so many new patent-related ventures, business models have failed Difficulty of leveraging IP value Lessons from Nokia & Ericsson about importance of investing in patents over a long period of time EU Commission’s power & failure to take patent policy seriously How EU Commission’s evidence-free SEP proposals risk destroying EU’s global leadership on SEP/FRAND issues Extensive lobbying that led to the SEP proposals Will the EU Commission’s SEP proposals become law? Unified Patent Court’s potential to become the de facto global patent court Opportunity for Brexit UK to become a pro-patent jurisdiction Is it time for IAM to close down its China office in Hong Kong? Japan’s slow patent revolution India’s huge potential Why Brazil & Colombia have become hotbeds for protecting patent rights & why Sub-Saharan Africa might be next Advice for Chief IP Officers
Best Podcast for Patent Law
A must listen for anyone interested in patent law and IP policy
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.