​​Patently Strategic - Patent Strategy for Startups

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For inventors, the promise of the patent system is the right to exclude others from making, using, importing, and selling their patented innovations for a limited period. But how do patent holders actually enforce those rights, particularly when the copycat product is being manufactured outside of domestic jurisdiction? In an otherwise challenging time for rights assertion, the ITC – or International Trade Commission – can be one of the most impactful long-range weapons an inventor has in their arsenal for stopping patent pirates.
The ITC has the authority to grant exclusion orders, which are enforced by U.S. Customs and Border Protection to block the importation of infringing products at U.S. ports of entry.
But how can you access the ITC, what are its requirements, how can you afford it, and what should you be thinking about now to help future proof your patent portfolio for the most effective use later at the ITC? We’re answering all of these questions in an episode that is part of our ongoing series on patent quality – aimed at not just getting a granted patent but in having one that will hopefully be valuable and stand the test of time.
** Guest Host: Evan Langdon **
Because experience is the best teacher, we’ve enlisted the help of Evan Langdon to guest host this month’s episode. Evan is a partner at Fabricant LLP and the Chair of its ITC practice. Evan has been focused on ITC litigation for the past 15 years, both offensively and defensively, having represented clients in more than thirty Section 337 cases at the ITC. Evan is recognized among the nation’s top ITC practitioners by Chambers USA and Chambers Global.
** Episode Overview **
⦿ What is the ITC and what are its advantages over court-based litigation to stop infringers?
⦿ Requirements for filing an ITC Action
⦿ Litigation financing options for the ITC
⦿ Offensive and defensive strategies at the ITC
⦿ Patent drafting and portfolio strategy tips for increasing your odds at the ITC
⦿ Masimo v. Apple and the ITC's import ban of the Apple Watch
⦿ The recent Lashify case and what it means for the domestic industry requirement
** Discussed Links **
⦿ Quality Patents Part 1: https://www.aurorapatents.com/blog/quality-patents
⦿ Quality Patents Part 2: https://www.aurorapatents.com/blog/ptab-survival-guide
⦿ Quality Patents Part 3: https://www.aurorapatents.com/blog/continuation-practice
⦿ Patent Anatomy: https://www.aurorapatents.com/blog/new-podcast-patent-anatomy
⦿ RESTORE Act: https://www.aurorapatents.com/blog/restoring-injunctive-relief
** Follow Aurora Patents **
⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
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⦿ YouTube: https://www.youtube.com/@aurorapatents/

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We’re slipping our headsets on and heading back into the Metaverse! Earlier this year, we began our foray into this world with a deep dive into the building blocks that could very well form the structural and economic underpinnings of the Metaverse by exploring the tech concepts and IP implications surrounding Web 3.0, blockchain, cryptocurrency, and NFTs. Today we build on this, by expanding our conversation into the most likely interfaces for the Metaverse, as well as how patentability and infringement could play out as we meld innovations between the physical and digital realms.
In this month’s episode, Kristen Hansen, Patent Strategist and software patent guru here at Aurora, leads a discussion along with our all star patent panel, exploring questions including:
⦿ What is the Metaverse?
⦿ How do virtual and augmented realities fit in?
⦿ And what does infringement look like in the Metaverse or what might it look like in the future?
Along the way, the group also shares some great tips for drafting claims around the virtual world to get around physical world prior art, as well as some pointers for avoiding divided infringement for processes that are performed in a distributed manner – as will almost always be the case with Metaverse-based innovations.
Kristen worked on VR and AR patents for nearly a decade, including those held by some of the Valley giants looking to define the space. We honestly couldn’t think of a better person to lead this conversation. Kristen is also joined today by our always exceptional group of IP experts including:
⦿ Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora
⦿ David Jackrel, President of Jackrel Consulting
⦿ Ty Davis, Patent Strategy Associate
​⦿ Dr. Sophia Li, Patent Strategy Fellow
Before joining the group, as we often do, we’d like to provide a short primer on some key concepts in this episode for those newer to the world of patenting. This primer covers:
⦿ Method vs. Apparatus Claims
⦿ Doctrine of Equivalents

** Resources **
⦿ Show Notes: https://www.aurorapatents.com/blog/into-the-patentverse-vol-2-ar-vr-and-virtual-infringement
⦿ Slides: https://www.aurorapatents.com/uploads/9/8/1/1/98119826/2022_psm_metaverse_ii.pdf
** Follow Aurora Consulting **
⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/

And as always, thanks for listening!
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Note: The contents of this podcast do not constitute legal advi

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In today’s episode, we’re discussing a recent court decision that judges have said could threaten "most every invention for which a patent has ever been granted", turning the patent system into a "litigation gamble."
Dr. David Jackrel, President of Jackrel Consulting, leads a discussion into American Axle’s recent bid to have the Supreme Court overturn a lower court decision that invalidated the company’s patent in a closely followed legal battle with rival Neapco Holdings. This case offered a much anticipated opportunity to more broadly clarify patent eligibility in a time where many believe that court precedent has undermined the U.S. patent process and, in the words of retired U.S. Court of Appeals Chief Judge Paul Michel, “confused and distorted the law of eligibility”, making it an “illogical, unpredictable, chaotic” mess. Critics of these rulings and the resulting present state of IP law claim that the confusion and inconsistency has led to courts canceling many patents that should be protected. The Solicitor General has stated that problems arising from the application of Section 101 have “made it difficult for inventors, businesses, and other patent stakeholders to reliably and predictably determine what subject matter is patent eligible”.
Despite cries for help and urges to provide clarification from multiple presidential administrations, the Solicitor General, members of Congress, the Federal Circuit Court, IP bar associations, and the Patent Office, the Supreme Court refused to hear this case, leaving many inventors and industries in limbo since as a USPTO spokesperson said after the ruling, innovation "cannot thrive in uncertainty."
David and our all star patent panel discuss the case law, its implications, how present statute is being conflated and taking section 101 well beyond its gatekeeping function, and in their analysis of the American Axle patent, provide some great tips that may have changed American Axle’s present fate – and can hopefully improve your odds of success if approached intentionally at the drafting stage.
David is joined today by our always exceptional group of IP experts including:
⦿ Dr. Ashley Sloat, President and Director of Patent Strategy here at Aurora
⦿ Kristen Hansen, Patent Strategist at Aurora
⦿ David Cohen, Principal at Cohen Sciences
⦿ Arman Khosraviani, Patent Agent and Former U.S. Patent Examiner
⦿ Ty Davis, Patent Strategy Associate and
​⦿ Dr. Sophia Hsin-Jung Li, Patent Strategy Fellow
** Resources **
⦿ Show Notes⦿ Slides
** Follow Aurora Consulting **
⦿ Home
⦿ Twitter
⦿ LinkedIn
⦿ Facebook
⦿ Instagram

And as always, thanks for listening!
Correction Update: This recording refers to Chief Judge Moore as "he". This is not the correct pronoun for Justice Moore. Our host did look into this pre-recording, but unfortunately misspoke in real time. Apologies to Chief Judge Moore.

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You have your big idea and now it’s time to breathe it into existence, but you need some help with the development. Like many others, you may turn to the aid of an engineering firm or dev shop. This relationship is a marriage of sorts. But it’s a marriage that is designed to inevitably end in divorce! How cleanly, smoothly, and successfully this separation goes depends on the steps that you take before it officially begins.
Both parties come to the relationship with existing assets – IP, software, prototypes, ideas, documentation, etc. More will be created collaboratively throughout the course of the relationship. But how do you ensure you exclusively get back out what you came with and also get what you contributed and uniquely paid for?
In this month’s episode, Dr. Ashley Sloat, President and Director of Patent Strategy here at Aurora, leads a discussion into Responsible Engagement with Engineering Firms, or what we affectionately refer to here as “Prenuptial Patenting”. Ashley and our all star patent panel walk you down the aisle and explore everything you need to know to experience marital bliss and an amicable divorce with your engineering partners. This talk covers the full life cycle from vetting partners to post development concerns and everything in between – with particular focus on relationship complexities like IP ownership, assignment from engineering firm inventors back to you, and how to avoid the traps of viral IP.
Ashley is also joined today by our always exceptional group of IP experts including:
⦿ Kristen Hansen, Patent Strategist at Aurora
⦿ David Jackrel, President of Jackrel Consulting
** Resources **
⦿ Show Notes⦿ Slides
** Follow Aurora Consulting **
⦿ Home
⦿ Twitter
⦿ LinkedIn
⦿ Facebook
⦿ Instagram

And as always, thanks for listening!
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Note: The contents of this podcast do not constitute legal advice.

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The life sciences are currently facing at least two major plagues in our patent world. The first is that many life science innovations have been deemed ineligible in terms of patentable subject matter. In other words, the courts and the patent office believe that the patent laws are not meant to protect these innovations. The second plague is that the courts believe that many life sciences patents are not enabled. In other words, they are not described in sufficient detail to enable one of skill in the art to make and use the invention.
These subject matter eligibility and enablement plagues manifest in dreaded Section 101 and 112 rejections. In this month’s episode, Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora, leads a discussion, along with our all star patent panel, delving deeply into these rejections and, in the interest of avoiding a podcast 101 rejection, provides some very practical application tips that will help to fortify your life science patent applications.
Ashley is also joined today by our always exceptional group of IP experts including:
⦿ Kristen Hansen, Patent Strategist at Aurora
⦿ Daniel Wright, Patent Strategist
⦿ David Jackrel, President of Jackrel Consulting
⦿ Shelley Couturier, Patent Strategist and Search Specialist
⦿ David Cohen, Principal at Cohen Sciences
⦿ Amy Fiene, Patent attorney at Vancott and adjunct professor at BYU
⦿ Steve Stupp, Partner at Stupp Associates, LLC.
** Resources **
⦿ Show Notes⦿ Slides
⦿ The Death of the Genus Claim
⦿ Final office action rejection frequency for life science patents
⦿ Examiner statistics (not an endorsement)
** Follow Aurora Consulting **
⦿ Home
⦿ Twitter
⦿ LinkedIn
⦿ Facebook
⦿ Instagram

And as always, thanks for listening!
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Note: The contents of this podcast do not constitute legal advice.