On Intellectual Property

On Intellectual Property

We live in very innovative times where intellectual property rights - patents, trademarks, copyrights, and trade secrets - are a key component to the future success of almost any career or business. 

Join Jeff Harty biweekly as he interviews patent and trademark professors, in house IP counsel, business leaders, IP trial attorneys and even members of the judiciary who will provide unique perspectives on what it takes to develop a successful strategy in dealing with intellectual property. Whether you are interested in intellectual property protection, enforcing IP rights or defending IP disputes, this is the podcast for you.

Unlocking the Potential for All Americans to Participate in the Innovation Ecosystem with Valencia Martin Wallace
calendar_today February 7, 2023 timer 0:38:56
Unlocking the Potential for All Americans to Participate in the Innovation Ecosystem with Valencia Martin Wallace

In this episode, Valencia Martin Wallace and I do a critical examination of our innovation ecosystem and how we can make it more diverse and inclusive. Valencia is the Deputy Commissioner for Patents for the U.S. Patent and Trademark Office (USPTO) and is the executive lead for the USPTO’s Council for Inclusive Innovation (CI2). Valencia shares data regarding how women and minorities are underrepresented in the innovation ecosystem. You can feel her passion for the topic and for strengthening the innovation and IP community as a whole. 


In this episode, Jeff Harty and Valencia Martin Wallace discuss: 

  • Valencia’s passion for growth and support in the IP community. 
  • The creation of CI2 and why it is necessary.
  • The benefits of having a more diverse innovation ecosystem. 
  • Strategies and initiatives to build a more diverse and inclusive innovation ecosystem by encouraging participation demographically, geographically, and economically.


Key Takeaways: 

  • While 30 percent of engineers and scientists who are working professionally are women, less than 12 percent have their names on patents.
  • The story does not end when an invention is patented—it takes a community to take the patented invention further into commercialization and usage. 
  • By closing the gender gap, $12–$28 trillion can be added to the global economy. 
  • Innovators are not created; they are born. It is a matter of helping those innovators get a rich education and giving them opportunities to help not only themselves, but also the nation. 


It takes a community to move forward in every field but especially when integrating technology and law.— Valencia Martin Wallace 

   

About Valencia Martin Wallace: 

As deputy commissioner for patents, Valencia manages and leads the USPTO’s efforts related to international IP harmonization and provides executive oversight over patent-examining functions in the technologies of communication, mechanical engineering, manufacturing, and medical devices and processes. She provides executive leadership on international patent legal issues and various work-sharing efforts with international partners. 


Valencia is the executive lead for the USPTO’s Council for Inclusive Innovation (CI2). The CI2 will help guide the USPTO in developing a comprehensive national strategy to build a more diverse and inclusive innovation ecosystem.


As deputy commissioner for patent quality, Valencia was responsible for sustaining the quality of the patent examination processes and products. In her 28-year career at the USPTO, she also oversaw software technology centers, served as executive co-lead on the implementation of the AIA First-Inventor-to-File statutory framework, and led the implementation of the Office of Patent Examination Support Services.


Valencia earned a bachelor of science in electrical engineering from Howard University and a juris doctorate from The George Washington University School of Law. She also has a certificate in Advanced Public Administration from Syracuse University’s Maxwell School of Public Administration.



Connect with Valencia Martin Wallace: 

USPTO: https://www.uspto.gov

LinkedIn: https://www.linkedin.com/in/valencia-wallace-738502122/ 


Other References: 

USPTO Inclusive Innovation: https://www.uspto.gov/initiatives/equity 

Council for Inclusive Innovation: https://www.uspto.gov/initiatives/equity/ci2 

Black Innovation and Entrepreneurship Program: https://www.uspto.gov/about-us/events/black-innovation-and-entrepreneurship

Patent Pro Bono Program: https://www.uspto.gov/patents/basics/using-legal-services/pro-bono/patent-pro-bono-program?MURL=probonopatents


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/

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Protecting IP in the Workplace with Frank Harty
calendar_today January 17, 2023 timer 0:40:17
Protecting IP in the Workplace with Frank Harty

The intersection between intellectual property and employment law comes up very frequently. No doubt there are challenges in protecting a company’s IP in the workplace environment. A company may find itself in situations that vary from case to case. In this episode, we explore key concepts that can help businesses, both large and small, put themselves in better positions to protect their IP. 

 

In this episode, Jeff Harty and Frank Harty discuss: 

  • What to do with employees who leave your company and have acquired confidential information and trade secrets belonging to the company. 
  • The importance of planning to secure and protect your rights. 
  • Employment agreements and doing more than simply having the individual sign an agreement. 
  • Using and enforcing noncompete agreements.
  • The Federal Trade Commission’s proposed new rule that would ban employers from imposing noncompetes on their workers.

 

Key Takeaways: 

  • Planning is everything. Right from the beginning, think about what you want to protect and from whom. 
  • The common law duty of loyalty (as recognized by most states) ends when the employee is no longer employed by the company. It is important to have post-employment restrictions or obligations written into the employment agreement. 
  • When enforcinging noncompete agreements, the employer’s counsel should have a nimble plan of attack to protect the employer’s confidential information and other IP.  Such matters often do not go to trial but culminate in an early motion for injunctive relief with a ruling from the court on whether to enter an injunction.
  • Be careful and clear in addressing the ownership and use of intellectual property with employees, independent contractors, and vendors.

 

 

“The common law duty of loyalty essentially ends the day the employee walks out of the workplace. Therefore, post-employment conduct generally has to be protected using agreements and in all the intellectual property protections that you put in place.” —Frank Harty

   

 

About Frank Harty: 

Frank Harty put himself through college and law school by playing football and working.

 

A commitment to professionalism and blue-collar roots—he’s from a family of cops and firefighters—sparked his interest in workplace issues and his specialty in labor and employment litigation. “Next to faith and family, the workplace is the most important part of most lives,” he says.

 

Frank has tried almost 100 cases to verdict. He regularly represents companies, nonprofit organizations, and institutions of higher learning in day-to-day and complex labor and employment issues. 

 

Employers with litigation or other labor and employment needs can rely on his experience, knowledge, and persistence. Frank is equipped to address a broad range of labor and employment issues. “I’m primarily a trial lawyer who focuses on labor and employment, but I also have an office practice and provide preventive advice that relates to the workplace,” he says.

 

His passionate desire to win shows in his record of success and his recognition by leading guides such as Chambers USA and Benchmark Litigation. “I like finding ways to win for my clients.” Frank says, “and that might include winning by losing the right way. It might include winning by avoiding a fight. Very often, it includes going to trial and winning at trial.”

 

Connect with Frank Harty: 

Website: https://nyemaster.com/ 

Email: fharty@nyemaster.com 

Book: Protecting Intellectual Property: Key Legal Insights for Business in Iowa https://www.amazon.com/Protecting-Intellectual-Property-Insights-Businesses-ebook/dp/B0BFRVNGN2 

LinkedIn: https://www.linkedin.com/in/frankharty/ 

 

Episode References: 

  • “FTC Proposes Sweeping Ban on Noncompetes: What Employers Need to Know Now”
  • Nyemaster attorneys Brianna Long and Randall Armentrout take a look at the key issues employers need to know regarding the Federal Trade Commission’s recently proposed ban on noncompete agreements:
  • https://www
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IP Strategies to Protect Your Organization’s Brands and Innovations with Leo White
calendar_today January 3, 2023 timer 0:54:33
IP Strategies to Protect Your Organization’s Brands and Innovations with Leo White

When we talk about intellectual property, rarely is it a one-size-fits-all approach. Often, overlapping forms of intellectual property protect particular innovations, new products, etc. There is no substitute for being careful and deliberate. It requires thinking through a strategy that keeps your eyes on the prize in terms of how a particular form of IP or strategy might benefit the business. That strategy must also be consistent with the goals of your client. To talk about this and much more, we have Leo White, who serves as chief IP & associate general counsel, assistant corporate secretary for The Duracell Company.

 

In this episode, Jeff Harty and Leo White discuss: 

  • Approaching IP from a strategic perspective with the business’ goals and plans in mind.
  • The bundle of IP tools for protecting your invention, product, and other property.
  • The power of a brand for the company and consumers. 
  • Handling gray market and counterfeit goods.  

 

Key Takeaways: 

  • Make certain you are receiving the right advice for the situation at hand. 
  • Look strategically at the situation to know which of the many IP tools is best and most appropriate for the endeavor. 
  • A brand at the center of your business makes its way into almost everything you do. 
  • Combating and counteracting counterfeiting activity can be difficult depending on where in the world it happens; however, counterfeit products hurt not only the company but also consumers.

 

 

 

“Patent maintenance fees cost a lot of money. You need to know what's going on from a count perspective to make sure those are the right decisions to address your portfolio, whether it's the maintenance of your current portfolio or what you're doing in the future.” —Leo White

   

 

About Leo White: 

Leo White serves as chief IP & associate general counsel, assistant corporate secretary for The Duracell Company. He oversees intellectual property and litigation matters and is also responsible for various corporate, advertising, and transactional matters.

 

Previously, Leo worked within the legal department of Procter & Gamble as a patent attorney. He has also held various roles within the research and development organizations of Procter & Gamble, as well as Gillette.

 

Leo earned B.S. and M.S. degrees in chemical engineering from Worcester Polytechnic Institute and a J.D. from Quinnipiac University.

 

 

Connect with Leo White: 

Email: white.lj@duracell.com 

LinkedIn: https://www.linkedin.com/in/leojwhite/ 

 

 

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/


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Resources Provided by Your Regional USPTO with Damian Porcari
calendar_today December 13, 2022 timer 0:29:10
Resources Provided by Your Regional USPTO with Damian Porcari

In this conversation, Jeff Harty speaks with Damian Porcari, regional director of the Elijah J. McCoy Midwest Regional United States Patent and Trademark Office. Damian explains how the regional offices work and tells us about the many resources available to aspiring inventors and business owners. 

 

In this episode, Jeff Harty and Damian Porcari discuss: 

  • Damian’s background in chemistry and his professional career, both of which helped form his views on intellectual property. 
  • Measuring impact qualitatively. 
  • Virtual hiring, training, and practice with the regional USPTO. 
  • USPTO resources for aspiring inventors and business owners. 

 

Key Takeaways: 

  • Working at the USPTO has allowed Damian to work with smaller businesses that succeed and can compete with international conglomerates. 
  • Counting things for the sake of counting things is not a true reflection of the impact of anything. 
  • Attorneys and judges are assigned to cases based on their own technical backgrounds, even if they are in different regions. 
  • Integrate the IP needs assessment into your business plan. Reassess it every year; your needs will grow and change as your business grows and changes. 

 

 

“The people that utilize the needs assessment, that actually go and answer all 60 questions thoughtfully, and then bring it to their advisers, whether they’re lawyers or investors or partners, can essentially integrate those questions into their business plans.” —Damian Porcari

   

 

About Damian Porcari: 

Damian Porcari has been the regional director of the Elijah J. McCoy Midwest Regional United States Patent and Trademark Office (USPTO) since September 2018. From 1989 to 2017, Damian worked for Ford Global Technologies LLC (FGTL) in Dearborn, Michigan, serving as its director of licensing and enforcement from 2005 to 2017. Damian is a named inventor on six U.S. patents and created one of the largest IP software companies in the world. He received a bachelor of science in chemistry from Michigan State University and a juris doctor from the University of Detroit Mercy School of Law.

 

 

Episode References: 

USPTO Awareness Assessment: https://ipassessment.uspto.gov/ 

USPTO Startup Resources: https://www.uspto.gov/learning-and-resources/startup-resources 

USPTO Events: https://www.uspto.gov/about-us/events 

 

Connect with Damian Porcari: 

Regional Director

USPTO - Elijah J. McCoy Midwest Regional Office

300 River Place Drive | Suite 2900 | Detroit | Michigan | 48027

 

Website: https://www.uspto.gov/about-us/uspto-locations/detroit-michigan 

Email: midwestregion@uspto.gov 

Email: dporcari@uspto.gov 

Phone: 313-446-4800 

LinkedIn: https://www.linkedin.com/in/damian-porcari-218b0475/ 

 

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/


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The Role of IP Systems in Maintaining a Strong Innovation Economy with David Kappos
calendar_today November 29, 2022 timer 0:44:04
The Role of IP Systems in Maintaining a Strong Innovation Economy with David Kappos

Our featured guest is one of the most respected and influential voices in intellectual property, particularly as it relates to innovation and patent policy. David Kappos has had a distinguished career steeped in leadership roles and IP. In this episode, he talks about how IP inspires him, the intersection of IP and government, the importance of maintaining strong IP systems in the United States, and the complicated topic of patent-eligible subject matter. 

 

In this episode, Jeff Harty and David Kappos discuss: 

  • How IP continues to motivate and inspire David in his career. 
  • How a strong patent system drives important investments in new technologies. 
  • Threats to intellectual property in the United States. 
  • Patent-eligible subject matter. 

 

Key Takeaways: 

  • IP is a key to solving all of the world’s most daunting problems. 
  • Consumers must be prepared to pay higher prices in the short term for new and innovative products protected by patents. However, it’s a long-term game, not about what is happening now.
  • The Council for Innovation Promotion is helping to provide transparency and visibility into what those in Washington, D.C., are doing for and against intellectual property and the patent system. 
  • The law of subject matter eligibility for patents is confusing and unclear. Innovation tends to lag in the technology areas most affected, hurting U.S. companies and innovators.

 

 

"If we, the U.S., want to continue to lead the world in opportunity, and if we, the world, want to improve our condition for humans and the planet more generally, we have to have a strong and effective IP system." —David Kappos

   

 

About David Kappos: 

David J. Kappos is widely recognized as one of the world’s foremost leaders in the field of intellectual property, including intellectual property management and strategy, the development of global intellectual property norms, laws, and practices, as well as the commercialization and enforcement of innovation‑based assets. A partner at Cravath, Swaine & Moore LLP, David handles complex intellectual property issues, including those pertaining to the blockchain, crypto assets, and fintech, as well as data security and privacy. From August 2009 to January 2013, he served as Under Secretary of Commerce and director of the United States Patent and Trademark Office (USPTO). Among his numerous awards, David was named one of the Top 25 Icons of IP by Law360, Outstanding Practitioner of the Year in IP

Transactions by Managing IP, one of the 100 Most Influential Lawyers in America by The National Law Journal, and was inducted into the Intellectual Property Hall of Fame by

Intellectual Asset Management Magazine in 2012.

 

 

Connect with David Kappos: 

Website: https://www.cravath.com/people/david-j-kappos.html 

LinkedIn: https://www.linkedin.com/in/david-kappos-57166113/ 

Council for Innovation Promotion Website: https://c4ip.org/ 

Council for Innovation Promotion Twitter: https://twitter.com/Council4IP 

 

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/


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A Strategic and Collaborative Approach to Navigating IP Matters with Carlo Cotrone
calendar_today November 15, 2022 timer 0:46:01
A Strategic and Collaborative Approach to Navigating IP Matters with Carlo Cotrone

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/

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Litigation Financing and IP Enforcement with Robin Davis & Bob Koneck
calendar_today November 1, 2022 timer 0:46:05
Litigation Financing and IP Enforcement with Robin Davis & Bob Koneck

Litigation is not cost-free, particularly when we talk about intellectual property cases that can be driven by myriad factual inquiries. Those inquiries can result in significant discovery. Multiple expert witnesses may need to be retained. E-discovery costs are not insignificant. And the list goes on. Not everyone can afford the costs that must be incurred to see their rights protected. Not everyone wants to face the inherent risks of litigation. That leads to a sense of injustice. Are there alternatives? We're going to talk about one option.

 

In this episode, Jeff Harty, Robin Davis, and Bob Koneck discuss: 

  • The complexity of IP litigation and how that affects the costs of litigation.
  • Why IP disputes tend to lend themselves to litigation funding. 
  • What types of cases are suited to litigation financing. 
  • Different approaches to funding IP cases.

 

Key Takeaways: 

  • The perception may be that only boutique firms use litigation funding, but big firms also use litigation funding; it is becoming more common throughout firms of all sizes. 
  • Litigation funders are passive investors. While they don’t get a say in the case, they are aligned with the funded parties and their case. 
  • Trends and studies show that litigation financing is going to become more common. 
  • LItigation financing is not just for small and medium-sized entities.

 

“One of the trends that we're seeing now is that more larger, sophisticated companies that do have their own significant in-house legal budgets are utilizing funding to take the risk and the pressure of the cost of litigation off their balance sheet.” —Robin Davis   

 

About Robin Davis: 

Robin Davis is Woodsford’s chief investment officer for the United States. She oversees all of Woodsford’s investments in American civil litigation and intellectual property. Under Robin’s direction, Woodsford has become a preeminent investor in IP litigation and works with top-tier law firms, public and private companies, universities, and independent inventors. Before joining Woodsford, Robin spent a decade as a litigator in private practice, with a specialty in patent litigation, at firms including Quinn Emanuel and Radulescu LLP. She has a J.D. from Cornell Law School and a B.S. in materials science and engineering from MIT.

 

About Bob Koneck: 

Bob Koneck is a lawyer and former litigator. As director of litigation finance and legal counsel for Woodsford, Bob now focuses on working with plaintiffs and their counsel to explore whether litigation financing can facilitate a successful litigation. Prior to joining Woodsford, Bob worked as a commercial litigator and completed federal clerkships at the U.S. District Court for the District of Minnesota and the U.S. Court of International Trade. Bob received his J.D. from Columbia Law School and his B.A. from St. Olaf College.

 

Connect with Robin Davis and Bob Koneck: 

Website: https://woodsford.com/us/ 

Bob’s Email: bkoneck@woodsford.com 

Bob’s Phone: 267-903-4878

Robin’s LinkedIn: https://www.linkedin.com/in/robin-davis-150b432/ 

Bob’s LinkedIn: https://www.linkedin.com/in/bob-koneck-81b2b2182/ 

Woodsford’s LinkedIn: https://www.linkedin.com/company/woodsford-litigation-funding/ 

Twitter: https://twitter.com/woodsfordlf 

 

 

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/

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Insights on Design Patents and Issues for Modern-Day Designs as “Articles of Manufacture” with Mark Janis
calendar_today October 18, 2022 timer 0:48:28
Insights on Design Patents and Issues for Modern-Day Designs as “Articles of Manufacture” with Mark Janis

In this episode, Jeff Harty and Professor Mark Janis delve into the world of design patents, discussing how they became part of the patent regime, challenges facing the protection of  modern-day ornamental designs, and possible upcoming changes in design patent law in view of the “article of manufacture” requirement. They also look at specific cases and strategies for claiming and prosecuting design patent applications. 

 

In this episode, Jeff Harty and Mark Janis discuss: 

  • The evolution of design patents and how they found their home in the patent regime. 
  • The effects of Section 171 and imposing many of the requirements for utility patents on design patents. 
  • The “article of manufacture” requirement and its impact on protecting modern ornamental designs. 
  • Possible upcoming changes in design patent law. 

 

Key Takeaways: 

  • Design patents have been an awkward fit in a patent regime focused largely on technological inventions.  
  • Recently, the Federal Circuit Court has ruled that textual references to the article of manufacture in the title and in the claim could limit the scope of design patent protection. 
  • If you're going to have the textual matter limit the scope of your claim for infringement, surely, it would equally apply in a determination on patent validity.
  • The Patent Office has not revised the guidelines for graphical user interfaces in years, but debate and discussion about the needed changes are happening now. 

 

“You hear reports of a global marketplace for user interface/user experience design in the billions and billions [of dollars].  It could be the key area of design and innovation in the future.  To be sure, we could create rules that effectively would kick those designs out of the design patent regime if we cared that much about the language ‘article of manufacture.’” —  Mark Janis

   

 

About Mark Janis: 

Mark D. Janis teaches courses in patents, trademarks, and other areas of intellectual property law. He is the Robert A. Lucas Chair of Law and the director of the Center for Intellectual Property Research at the Indiana University Maurer School of Law. Janis has authored a number of books, including the treatise IP and Antitrust (with Herbert Hovenkamp, Mark A. Lemley, Christopher R. Leslie, and Michael A. Carrier), Trademarks and Unfair Competition in a Nutshell, two casebooks (Trademarks and Unfair Competition: Law and Policy, 4th ed., and Trade Dress and Design Law, both with Graeme B. Dinwoodie) and other books on trademark law (with Dinwoodie). He has published numerous law review articles and book chapters on patent law, intellectual property and antitrust, trademark law, intellectual property protection for plants, plant biotechnology, and intellectual property protection for designs.

Janis is the winner of a Collegiate Teaching Award and a Faculty Scholar Award (both from the University of Iowa College of Law), and INTA’s Ladas Award in 2008. At the Indiana University Maurer School of Law, he was the recipient of the Leon H. Wallace Teaching Award, the highest teaching honor given to law faculty.

Prior to joining the faculty at Indiana, Janis was the H. Blair & Joan V. White Chair in Intellectual Property Law at the University of Iowa College of Law. He practiced patent law at Barnes & Thornburg (Indianapolis) from 1989 to 1995.

 

 

Connect with Mark Janis: 

Website: https://law.indiana.edu/about/people/details/janis-mark-d.html 

Email: mdjanis@indiana.edu 

Twitter: https://twitter.com/markjanisiu 

Twitter: https://twitter.com/ciprmaurer 

 

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/

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Driving Innovation and Maximizing Your Return on Investment in Intellectual Property with Kirk Goodwin
calendar_today October 4, 2022 timer 0:36:36
Driving Innovation and Maximizing Your Return on Investment in Intellectual Property with Kirk Goodwin

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: https://twitter.com/kirk_goodwin @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/


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Insights on IP Cases with U.S. District Court Judge John Jarvey
calendar_today September 20, 2022 timer 0:31:07
Insights on IP Cases with U.S. District Court Judge John Jarvey

In today’s episode, retired U.S. District Court Judge John Jarvey talks about his time on the bench dealing with intellectual property cases, his background, and his work now helping parties resolve disputes through mediation. He has insights on what works in the courtroom and motion practice in IP disputes. He also has experience resolving disputes through mediation and is in a position to share how clients and their counsel can make the most of that process.

 

In this episode, Jeff Harty and Judge John Jarvey discuss: 

  • Judging, mediating, and evaluating cases. 
  • The importance of subject-matter expertise in evaluating IP cases. 
  • The important things to remember when presenting an IP case to a jury. 

 

Key Takeaways: 

  • When people craft a solution to their own problems, they are happiest, most satisfied, and get the most satisfaction out of the process. 
  • There is value in having subject-matter expertise when it comes to assertions in the law, as most federal district court judges do not routinely handle IP disputes.
  • Regardless of the technology in an IP case, presenting a story to the jury that resonates and plays on certain emotions is key.
  • Patent trials can be structured in various ways to help jurors better understand the dispute and the issues they are asked to decide. 

 

 

"What's really important to remember is that there are certain emotions that always play well with jurors, and an emotional issue, such as theft of any property, is the same thing to jurors as the theft of an idea. Focusing always on the big picture of what the ultimate wrong was, is very helpful for jurors in these cases." —  Judge John Jarvey

 

 

About Judge John Jarvey: 

Judge Jarvey was a trial attorney for the Criminal Division of the U.S. Department of Justice from 1983 to 1987. As a prosecutor, he specialized in fraud in the pharmaceutical industry. He taught trial advocacy at the University of Iowa College of Law and mock trial at Cedar Rapids Washington High School.

 

Judge Jarvey was a U.S. magistrate judge of the U.S. District Court for the Northern District of Iowa from 1987 to 2007. As a magistrate judge, he presided over more than 300 civil jury and nonjury trials. He was primarily responsible for civil and criminal case management and conducted more than 400 mediations. His civil jury experience includes patents, copyrights, and other complex commercial disputes. It also includes many civil rights trials alleging police excessive force, prisoner rights, and other claims against public officials.

 

As a U.S. district judge, Judge Jarvey presided over more than 100 civil and criminal jury and nonjury trials. His civil jury trial experience includes a wide range of complex cases. 

 

 

Connect with Judge John Jarvey: 

Email: john@golawpc.com 

Phone: 319-360-1122

 

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/


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The PTAB and the Impact of Post-Issuance Invalidity Proceedings with Jay Kesan
calendar_today September 6, 2022 timer 0:33:15
The PTAB and the Impact of Post-Issuance Invalidity Proceedings with Jay Kesan

It is rare to find someone in the field of intellectual property, in particular patent law, who is a scholar and a practitioner. Today, we have with us Jay Kesan who is both. Listen in for a great episode full of information about the PTAB (Patent Trial and Appeal Board) and the impact it has had on the patent system after 10 years. 

 

In this episode, Jeff Harty and Jay Kesan discuss: 

  • Jay’s professional career as both a law professor and a practicing patent attorney/litigator. 
  • The impact of IPRs and PGRs on the patent system. 
  • Challenging the validity of a patent in an IPR proceeding versus district court litigation. 

 

Key Takeaways: 

  • The PTAB was created as an alternative forum for challenging issued patents. It was hoped that the PTAB would provide a lower-cost means of challenging already-issued patents.
  • In the past few years, the number of patent validity challenges has leveled out to about 1,500 IPRs per year.
  • The vast majority of IPRs involve parallel district court infringement actions.
  • The USPTO, under its new director, has issued new guidelines for discretionary denials of PTAB proceedings. A fair comment, at this stage, would be that these discretionary denials are only going to continue to decrease even when there is parallel district court litigation.

 

“If you're a patent owner and you believe that your patents are being infringed and you're contemplating an infringement action, you have to take into account the new world that you have to deal with.” —  Jay Kesan

   

About Jay Kesan: 

Jay P. Kesan, Ph.D., J.D., is a well-recognized and accomplished patent attorney with more than 25 years’ experience. His work encompasses all aspects of patent enforcement, patent strategy, and licensing. He has been lead counsel or co-counsel in numerous patent lawsuits in various federal district courts around the country. He has argued numerous appeals before the Court of Appeals in the Federal Circuit. He has also served as lead counsel in more than 30 IPRs and argued several times before the PTAB. He has been actively involved in every aspect of patent litigation as counsel, Special Master, appellate counsel, technical expert, legal expert, and mediator.

 

Jay has a Ph.D. in electrical and computer engineering from the University of Texas at Austin and worked for several years as a research scientist at the IBM Thomas J. Watson Research Center. As a result, he works with clients on IP disputes that involve a wide variety of technologies and innovations.

 

Jay is also an active empirical scholar, and his recent works have focused on cyber risk and patent policy. He has published numerous articles and six books on patent law and policy and cybersecurity and privacy with an emphasis on empirical research methodologies.

 

He is a professor and H. Ross and Helen Workman Research Scholar at the University of Illinois at Urbana-Champaign. He is an active and widely cited scholar.

 

Connect with Jay Kesan: 

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 

 

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/


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Welcome to On Intellectual Property
calendar_today August 2, 2022 timer 0:05:21
Welcome to On Intellectual Property

Welcome to the On Intellectual Property Podcast! We live in very innovative times where intellectual property rights - patents, trademarks, copyrights, and trade secrets - are a key component to the future success of almost any career or business. 

 

Join Jeff Harty biweekly as he interviews patent and trademark professors, in-house IP counsel, business leaders, IP trial attorneys and even members of the judiciary who will provide unique perspectives on what it takes to develop a successful strategy in dealing with intellectual property. Whether you are interested in intellectual property protection, enforcing IP rights or defending IP disputes, this is the podcast for you.

 

 

"Clients, more than ever, are sophisticated users of the IP system, and there's simply no substitute for understanding the client's business, the legal issues of play, and then devising a sound strategy." —  Jeff Harty

 

 

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/

 

 


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