Eli Mazour is a Partner with Harrity & Harrity LLP in Fairfax, Virginia, where he leads the firm’s patent prosecution team. Eli’s practice focuses on helping large technology companies build valuable, high-quality patent portfolios in an efficient manner. In this role, he develops and implements best practices for managing workflow and innovative, data-driven patent prosecution strategies for reaching favorable results at the USPTO.
Eli personally has experience preparing and prosecuting hundreds of patent applications related to computer software, Internet and e-commerce, telecommunications, networking devices, electronic consumer products, and medical devices.
Although Eli is known for being able to successfully reach agreements with USPTO patent examiners for clients’ most important patent applications, he is equally skilled at identifying and successfully utilizing alternative channels within the USPTO when that is not possible. In one such instance, the PTAB recently ruled in favor of one the firm’s oldest clients after Eli argued in an Oral Hearing.
Eli also helps clients evaluate existing patent portfolios, identify strategic areas for patenting, and create processes for harvesting disclosures of patentable inventions. In addition, he has been involved with licensing negotiations, patent infringement investigations, clearance of products (freedom to operate opinions), and patent litigation. As a result, he is keenly aware of the pitfalls to avoid and opportunities to grasp during patent prosecution.
Eli is also the creator and host of the Clause 8 podcast, which features interviews with the most interesting members of the IP community. Due to Clause 8 and his previous track record, he is sought out by various technology companies, legal and business professionals, and media organizations for his insights on various patent policy developments, including legislative proposals and changes at the USPTO.
Robert Giles took over the Chief IP Counsel role at Qualcomm, the world’s leading wireless technology innovator, in May 2021. In that role, Giles shepherds a team that is responsible for managing and growing 140,000 IP assets and oversees some of the most high-profile patent disputes in the world. Prior to that, Giles helped lead Qualcomm’s successful efforts in its global litigation with Apple. The litigation blossomed into more than 100 cases around the world before Apple finally agreed to settle.
Raymond Millien likes to compare himself to Forrest Gump. As someone who pivoted from a programming job at GE Aerospace to a career in intellectual property law, bounced between in-house and outside counsel roles within that space, and even got involved in public policy, he’s definitely a renaissance man. And he’s fallen into many of those jobs by accident. He credits his adventurous and successful career — working as Chief IP Counsel for big-name companies like Volvo, founding his own IP boutique, and now serving as the CEO of Harness IP — to intellectual curiosity and openness.
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.
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.
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.
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.
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.
On October 26, President Joe Biden nominated Kathi Vidal for Under Secretary for Intellectual Property and Director the U.S. Patent and Trademark Office (USPTO). Vidal is the managing partner of the Silicon Valley office of Winston & Strawn and specializes in patent litigation. If confirmed by the Senate, Vidal will face many challenges as head of the USPTO. In an interview from 2019 with Clause 8, she discussed her journey to the top of her field, as well as her thoughts about the Patent Trial and Appeal Board (PTAB) being dubbed the “death squads,” patent trolls, and what law firms can do to help innovators without deep pockets.