The 2017 TC Heartland LLC v. Kraft Foods Supreme Court decision led to a major shift in where patent litigation cases are filed in the United States. Before TC Heartland, a patent owner could bring a case in almost any district where an alleged infringer conducted business. Because of its predictable rules and streamlined procedures, the Eastern District of Texas became the most popular forum for such cases; nearly 40% of patent infringement actions were filed there in 2016. When Professor Timothy Hsieh clerked in the Eastern District of Texas, he saw firsthand the benefits – for patent owners and defendants – of experienced judges handling patent cases. TC Heartland changed that by changing the rules regarding where companies can be sued for patent infringement. By 2017, only 15% of patent infringement cases were tried in the Eastern District of Texas. Instead, patent cases became concentrated in Delaware and California.

Play Episode

Before Phil Warrick began working for Senator Chris Coons (D-Del.), Capitol Hill wasn’t in his career plans. But when an opportunity to work with Coons emerged, he decided to take the leap. For two years, he served as the U.S. Patent and Trademark Office’s (USPTO’s) IP counsel detailee to Coons after Coons helped restart the Senate’s IP Subcommittee, working on bipartisan initiatives like the IDEA Act and legislation to fix the Section 101 patent eligibility mess.  Those efforts were a dramatic departure from Congress’s previous fixation on the “patent troll” narrative.   

Play Episode

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,” Carbonneau says. “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 intellectual property industry. With experience as Microsoft’s former General Manager of International IP & Licensing, Carbonneau has sat on many sides of the intellectual property table. He shares his adventures in the industry and lessons learned with Eli, host of the Clause 8 podcast, including 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.

Play Episode

If listing artificial intelligence (AI) machines as inventors on patents sounds like science-fiction to you, Professor Ryan Abbott is ready to make the case that it’s a very real issue. Abbott became interested in patents after becoming a medical doctor and obtaining a law degree from Yale Law School. He then noticed that scientists were starting to use AI to identify problems and solutions — and wondered about the legal ramifications from a patent perspective. Shouldn’t the AI be identified as an inventor, the same way a human would be? Abbott clearly believed that was the case. However, there was no precedent for any patent system allowing for an AI machine to be listed as an inventor. In fact, he discovered that companies had to forego obtaining patent protection because they were unable to do that. 

Play Episode

Prof. Dan Brown and his son, Dan Brown Jr., are straight out of central casting.  Prof. Brown, the father, grew up in a working-class Irish family on Chicago’s South Side before eventually becoming a professor of engineering at Northwestern University. Dan Jr. is a moppy-haired marketing genius who is now President of LoggerHead Tools.

Play Episode

The first episode of this season of Clause 8 featured the most recent USPTO Director – Andrei Iancu – discussing his efforts to strengthen America’s patent system over the last three years.  One of the most publicly vocal opponents of those efforts was Josh Landau, patent counsel at the Computer and Communications Industry Association (CCIA).  Now that those views are in ascendancy in the Biden administration and Congress, it made sense to finish this season by talking to Josh.

Play Episode

“Jeff [Roh, CEO at IntuitiveX] knew for every person like [him], who is able to succeed, there’s countless others who aren’t. They just fall flat because they encounter resistance and give up. And so he was on a mission to make other inventors and surgeons be successful as well.” Don’t miss this latest episode of Clause 8 with President and Chief Legal Officer of IntuitiveX, Mark Han, about the new business model IntuitiveX created to help innovators in the medical field.

Play Episode

Chris Agrawal is President of the Association of Intellectual Property Firms and partner at Bookoff McAndrews.  He was instrumental in one of the biggest patent transactions in history and the reason Eli Mazour [Clause 8’s host] got into patent law in the first place. If you’re a startup founder or an executive at a growth stage company worrying about patent protection or wondering how to scale your patent program, download and listen to this episode today.

Play Episode

If you’ve ever wondered how and why Judge Alan D Albright of the U.S. District Court for the Western District of Texas became America’s go-to judge for patent cases, you don’t want to miss this episode. Before Judge Albright was confirmed in 2018, less than 10 patent cases had been filed in the Waco district in its entire history. In 2020 alone, he took on almost 800 new patent cases, accounting for 20% of all new patent cases filed in the US last year…. This episode covers why Judge Albright loves handling patent cases, his plans for handling a growing docket, and his views on how a judge should handle a patent case and what makes an effective patent litigation counsel.

Play Episode

What is the explanation behind the Supreme Court’s approach to patent and other IP issues?  I decided to talk to Prof. Stephen Yelderman – who personally knew two of the Supreme Court justices before they even joined the Court and clerked on the Supreme Court – to get some insight.  He also happens to be one of the most insightful – and underrated – scholars studying patent issues whose astute understanding of how the patent system works is rooted in his personal and practical experience.

Play Episode

At the beginning of this year, IPWatchdog asked a panel of experts who should be the next USPTO Director. Almost every answer cited former USPTO Director Andrei Iancu as a model. Former Deputy USPTO Director Russ Slifer wrote: “Director Iancu worked with Congress and did not shy away from necessary reforms in Section 101 and the PTAB. Will the next Director be as successful? Hopefully, but Director Iancu is a difficult act to follow.” At the beginning of this year, IPWatchdog asked a panel of experts who should be the next USPTO Director. Almost every answer cited former USPTO Director Andrei Iancu as a model.

Play Episode

How does the USPTO’s Patent Trial and Appeal Board (PTAB) actually operate? What does it take to win an ex parte appeal? When should you request an oral hearing? What are the chances of the PTAB reversing a Section 101 rejection? How do you become an Administrative Patent Judge? In this latest episode of Clause 8, I speak with former Administrative Patent Judge Joe Lentivech to get answers to these questions. He’s not only an expert in how the PTAB operates, but also a master storyteller.

Play Episode

Brad Watts is the Majority Chief Counsel and Staff Director for the Senate Subcommittee on Intellectual Property. Under the leadership of Senator Thom Tillis, Brad Watts has led the effort to fix the Section 101, patent eligibility mess. A series of Supreme Court decisions over the last decade have caused enormous confusion and uncertainty with regards to patent eligibility.  After the 2018 midterm elections, to the relief of many in the innovation community, Senators Thom Tillis and Chris Coons requested to reinstate the Senate Subcommittee on IP to fix this issue.  

Play Episode

When I first started practicing in the late aughts, I found that a lot of what I was seeing about patents in various academic papers and studies, on Capitol Hill, and even in Supreme Court decisions, didn’t really reflect the reality of what I was seeing in practice, talking to innovators. In contrast, Professor Adam Mossoff’s compelling work, including articles in various general interest newspapers, stood out.  Not surprisingly, he is largely responsible for providing the intellectual foundation that has helped shift the anti-patent narrative.  So, it was a huge honor to talk to someone who not only helped shape my own thinking about patent and IP policy issues but has really shaped the current debates in Washington, DC about these issues.

Play Episode

On the latest episode of the Clause 8 podcast, Eli interviews Bruce MacEwen – the founder and president of Adam Smith, Esq. Bruce is recognized as the world’s leading expert on the economics of law firms, has written thousands of articles on the subject, and provides advice to select firms about how to succeed in the changing legal landscape.

Play Episode