LES Viewpoints September 2020

Viewpoints

The Newsletter of the Licensing Executives Society (U.S.A. and Canada), Inc.

Vol. XXVIII No. 3

September 2020

Careers-In-Transition Programs

LES is developing new programs and enhancing existing ones to support members who are at critical points in their professional lives. Two of these programs are “Network Enabled Teams (NETS)” and “Career Development Webinars.” Read more about both of these programs below and on Page 3.

Network Enabled Teams (NETs)

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ecause networking is one of the most effective ways to learn about job opportunities, LES has initiated the NETs program to help members extend their networks. The concept of Louise Levien, LES Board Member, NETs virtually gather a small number (10) of participants for a 120-minute kick-off meeting, led by a distinguished LES member. Each session thereafter is focused on careers in a particular interest group, such as High Tech or Consumer Products. All participants agree to share their contact information with other group members and to help each other grow their networks. The kick-off sessions include member introductions and discussion on topics of interest to the group. In advance of the session, the group is invited to submit questions for discussion. At the end of the session, the leader encourages the group to establish a plan to continue the group’s interactions beyond the LES led kick-off meeting.

As of August 19, two LES sectors–Life Sciences and High Tech–have launched NETs programs. The first Life Sciences Sector (LSS) virtual meeting was held on June 19, 2020 and led by Louise Levien; Pam Demain, LES Past President; and Frank Barnes, Mentoring award recipient. A second High Tech Sector (HTS) session held on August 11, 2020, was Louise Levien led by Michael Fluhler, Chair of the LES High Tech Sector and the Michigan Chapter. Fluhler is Partner, - Intellectual Property, Litigation and Transactional attorney at Hertz Schram PC. Pam Demain described the successful Life Sciences Sector launch: “Our group consists of ten members at various points in their careers. Most participants have jobs; some are looking to transition, Pam Demain and others want to grow in their job. Some are very experienced, and some are just starting their careers.

We meet on Zoom once a month, and we are pleased to have transitioned from a leader-facilitated meeting to a group-led meeting.”

Interested in starting a new group in your sector?

Contact info@les.org.

See Navigating Career Transitions on Page 3

Michael Fluhler

LES 2020 Virtual Annual Meeting • October 15-20, 2020

Protecting & Commercializing Future Technologies

What You Need To Know Now

“L

ES is all about content, networking and conviviality,” said David Powsner, Meeting Co-chair, explaining what’s in store at the LES 2020 Annual Meeting. Read Powsner’s summary below, and we think you’ll agree that this event will provide all three.

• “On the content side, we’ll take advantage of the online format to provide more than the usual number of panel discussions. We know attendees won’t be able to consume every panel discussion during the six, half-days that make up the meeting, but we will keep this content online for a few months, so attendees can engage with it when they have time.

• As to networking, we will host the Annual Meeting on a platform that supports one-on-one meetings, as well as ad hoc group sessions.

While it’s hard to simulate those chance encounters (e.g., at the coffee bar) that happen at a live meeting, we will do our best to take advantage of our online platform’s capabilities so attendees can -- at least virtually -- rub shoulders and bump elbows with past, current and future clients, business partners, mentors and colleagues.

• And last, but certainly not least, conviviality: We are planning a number of evening sessions for the annual meeting. These run the gamut from games to wine tastings. Evening sessions are still a work in progress, but I’m sure there will be something for everyone to enjoy. Expect to talk and laugh with both old and new friends in the LES community.”

Register now and don’t miss Meeting Co-chair Karthika Perumal’s welcome video here: https://lesmeetings.org/am20/.

The Annual Meeting Committee 2020 gathered in Phoenix last October to organize for Philadelphia. Little did they know COVID-19 would disrupt everything! Front row: Dana Matzen, Karthika Perumal, David Powsner, Gary Fedorochko, Josh Slavitt, Back row: Robert Jung, Stacey Dunn, Merri Moken, Tony DeCastro, Harry Vartanian, Michael Perham, Sanjay Prasad and Bob Held.

LES VIEWPOINTS HIGHLIGHTS

IP Guidance Through COVID Trio of webinars offers advice Pages 4-5

LES Policy Report Patent system in disrepair Pages 7

Spotlight: Vincent Bergeron YMC leader and musician Page 8

Exciting On-line Education Check out the latest courses Page 10

Viewpoints

LES Annual Meeting Pivoted Online Due To COVID-19

BOARD OF DIRECTORS President & Chair Gary Fedorochko Past-President & Past-Chair Robert F. Held President-Elect & Chair-Elect Gillian Fenton Secretary Kevin Spivak Treasurer Michele Riley

DIRECTORS Jim Bratton Ann Cannoni Evelyn Chen Ian DiBernardo Lalit Gaur Louise Levien Annemarie Meike Karthika Perumal Karen Temple Eric Victory Scott Williams Counsel: Rachel Kreppel

Membership inquiries and contact changes should be sent to: membership@les.org

Editorial inquiries and contributions should be addressed to: Editor Carla J. Blackman carla@designinterface.com or Editorial Director Gillian Fenton The quarterly newsletter is published by Licensing Executives Society (U.S.A. and Canada), Inc. and is available online at www.lesusacanada.org.

Views expressed in articles are solely those of the respective authors.

Copyright ©2020 Licensing Executives Society (U.S.A. and Canada), Inc.

Gary Fedorochko

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Chairman of the Board & President, LES USA & Canada

s the calendar turns to autumn, typically the LES community anticipation for our annual meeting reaches a crescendo pitch. While we cannot meet in person this year due to the interminable COVID-19 pandemic, the enthusiasm for our annual meeting remains high. Under the creative stewardship of Karthika Perumal and David Powsner, our annual meeting has pivoted online with aplomb and assembled a high-caliber program that will deliver the value our members have come to expect.

The meeting will have over 30 hours of content, including interactive sessions ranging from regulatory issues to successful licensing of innovation, to commercializing and protecting artificial intelligence and emerging technologies. Whether you are new to the business of IP or a grizzled veteran, I am certain you will walk away with valuable strategies and best practices that will help you in your career. Nearly all the sessions will be available on-demand to those attending the meeting both during and after the meeting. Last, but surely not least, the meeting committee is planning fun and engaging networking sessions where attendees will have the opportunity to interact with their LES colleagues as well as make new acquaintances. I look forward to seeing you there.

We’re offering a group package for Corporations, Universities, National Labs and the like where your organization can essentially pay for three registrations and have an unlimited number of folks in your organization attend! You can register and also learn more about potential sponsorship One of the silver opportunities here https://lesmeetings.org/am20/. Don’t miss it!

A Favor To Ask

linings of the pandemic has been the large addition of fresh on-demand content for the LES E-library.

As many of you know, the Society’s Annual Business Meeting is conducted during the Annual Meeting to elect new Board members, approve bylaw amendments and hand the gavel to our new President and Chair. Of course, we will do this virtually this year. In this regard, I have a favor to ask each of you. Whether or not you ultimately decide to attend the Annual Meeting (I hope you do attend), to orderly and efficiently conduct our business meeting and to ensure we obtain the requisite quorum, please fill out a proxy so your vote can be recognized and counted. We have published the new Board slate as well as the proposed bylaw changes which must be voted on by the membership. You can fill out a proxy here https://www.surveymonkey.com/r/9KPJTNG and cast your vote.

A New Website, Updated E-library and a Clause Bank to Help You Succeed

I am pleased that we have accomplished one of this year’s goals with the recent launch of the refreshed LES website. The site refresh has received great feedback for its sleek look and ease of navigation. If you have not visited the new site, check it out! I would like to note with appreciation the contributions of Board member Ann Cannoni and Management Council member, Sr. VP of Communications and Technology, Marc Schwartz for their valuable input and leadership in making this effort a great success.

One of the silver linings of the pandemic has been the large addition of fresh on-demand content for the LES e-library. One of the most valuable member benefits (and even more so during the pandemic) is the ability to attend our standard webinars for FREE. Should you miss a webinar or have an issue that arises in your work, the e-library is a free valuable resource that can help you solve your toughest challenges.

Another valuable initiative in the works is the development of a licensing agreement “clause bank.” This will be a member exclusive benefit and is being spearheaded by Ann Cannoni. Stay tuned! If you would like to be a part of this new initiative please contact Christine Nolan, our Operations Director (cnolan@les.org).

LES will continue to support the needs of our members during these unique times. We encourage you to share your input as to how LES can work alongside you to support your professional needs by contacting me or Christine directly.

I look forward to seeing you at the annual meeting. In the meantime, stay safe and healthy!

Career Transitions, continued from Page 1

Navigating Career Transitions:

Ideas For Career Development And Transition

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recent LES webinar panel featured a seasoned group discussing current employment and hiring trends in light of the coronavirus shutdown and business turmoil, and offered advice on transitioning between industries and roles.

Glen Gardner of the Vortechs Group and Kate Kaiser of the RSVP Group, both recruiters, joined Ben DeGreen of Georgia Tech Research Corporation in a panel moderated by LES board member Eric Victory of Aurinia Pharma. They discussed their perspective on the current hiring environment, and reflections on what strategies are and aren’t working these days for job candidates.

Kate and Glen provided the insight that as much as things have changed in recent months, it’s critical to remember that many of the fundamentals are just important as always—candidates should research the company, role, and manager they’re interviewing with, and come with questions that reflect that research and their interest in the organization.

It was clear from the discussion that the hiring environment right now continues to be challenging.

Glen’s firm focuses on university clients, and many of them are currently holding back on hiring, including a few who had pulled open positions. Glen confirmed that the tight financial conditions in the academic setting right now are limiting new hiring in many institutions.

Kate noted that circumstances are increasingly requiring many of her clients to utilize to virtual interviewing approaches, although that has been rare at the highest levels of companies, given the high importance placed on fit among executive teams.

Ben discussed some of the key transitions he made in his career—from a finance and product management technical background, and then from chemicals into consumer goods, and most recently into an academic tech transfer office. He noted the importance of making professional connections over the long term. Ben emphasized how LES has been and continues to be a key resource to meet colleagues, grow his network and help with key transitions.

The panelists also discussed broader corporate adaptations to COVID-related changes that have been occurring. Eric noted that Aurinia is currently hiring and developing a full commercial team in a virtual environment, in preparation for a pending launch. Kate reported that many of her clients have yet to fully determine how they’ll change their policies and practices, in large part because it’s not yet clear how the pandemic will play out.

All the participants agreed that networking, keeping an updated LinkedIn page, and being flexible were among the keys to making a successful transition in the current business environment.

View this valuable webinar on the LES website at: https://members.lesusacanada.org/general/ custom.asp?page=CCResources.

Table of

CONTENTS

President’s Message.....................2 Career Transitions Panel..............3 COVID: Pharma Supply Chain..........4 COVID: Technical Innovations......4 COVID: National Lab Partnership....5 On-Demand Webinar Recordings....5 LES NYC Chapter Webinar............6 LES DC Chapter USPTO................6 LES Public Policy Report.............7 New LES Website..........................7 Member Spotlight..........................8 Members On The Move................9 LES Education Update..................9 LES Education Offerings 2020....10 CLP Update + Questions............11 LES New Members......................12 LES Annual Meeting 2020..........13

LES webinar panel included Eric Victory, Glen Gardner, Ben DeGreen and Kate Kaiser.

3 | September 2020

CBM Letter to Senators...............14

Trio Of COVID-Related Webinars Guide IP Professionals Through Uncertainty The COVID-19 pandemic has affected every aspect of life and all enterprises. A series of three webinars to help IP professionals stay ahead of the curve in their sectors debuted in July, but continues to be available to members, free of charge, on the LES website. For access to these and any other any webinar in the LES library of on-demand webinars, go to: https://www.lesusacanada.org/page/WebinarRecordings

4 | LES Viewpoints

“Keys to Avoiding Pharmaceutical Supply Chain Problems in the COVID-19 Environment” featured two health science business

experts, both of Sills Cummins & Gross P.C.’s Life Science Practice Group, discussing negotiating and drafting tips for attorneys and life sciences professionals. Ira Rosenberg is senior partner, co-chair of the Corporate Practice Group and chair of the Life Sciences Practice Group. He has represented life sciences and healthcare technology companies of all sizes for more than 30 years. Lori Waldron, is co-chair of the firm’s Life Sciences Group, and in her practice represents both emerging and established companies, especially those in the life sciences and biotech industries.

The webinar was moderated by Tyler Maddry, Partner at Hunton Andrews Kurth LLP. Tyler Maddry One of the toughest problems for pharmaceutical companies in the wake of COVID-19 has been drug supply chain failure. Behind the headlines about mask and ventilator shortages, were the rolling effects of the pandemic—plant closings, personnel shortages, export bans, and travel restrictions—all factors in supply failure. Waldron and Rosenberg covered how attorneys can help clients strengthen supplier agreements. Lori Waldron doubled down on exclusive supply agreements and how to minimize the heightened risk these can pose to purchasers in extreme circumstances. Purchasers can avoid supply failure by including very specific language in contracts, defining what constitutes a supply failure and what the supplier’s obligations are. Other purchaser protections include business interruption Lori Waldron insurance, partial shipment requirements, establishing audit/inspection rights, and requiring the supplier to put a COVID-19 epidemic plan in place. Rosenbaum stressed establishing secondary sources before an anticipated business interruption, since it can take as long as two years to qualify a supplier. Noting that force majeure has been invoked often recently, Rosenbaum said most existing contracts do not include pandemics as a force majeure event. The session ended with an analysis of consequential damages—profits lost when the purchaser’s customer sues them because of a supply failure. The best defense against this, Waldron advised, is a contract that spells out supplier responsibilities for damages Ira Rosenberg arising from supply failure.

Impact of COVID-19: Disruption, Acceleration and Innovation This webinar offers good news about technical innovations that have come out of the pandemic in law, media/finance, vaccine development, film production, and mobile apps. Speakers were Charles R. Macedo (who also moderated), Partner, Amster, Rothstein & Ebenstein, LLP, an IP law firm in New York City; Alex Butler, VP/Analysis and Content, Bloomberg Industry Group/Bloomberg law; Gillian Fenton, Senior Counsel, Vaccines, Legal Operations, Innovations, Business Development and Strategic Partnerships, GSX; Dan Pacheco, Director of Growth and Strategy, Hayden5 a New-York-City-based film production company; and Matan Arazi, Founder, Medycus Ventures Corp.

Webinar Highlights:

Charles Macedo, described how COVID-19 accelerated change in his 67-year-old law firm. First, since all conferences were cancelled, the firm quickly learned to produce podcasts, webinars and remote presentations.

Zoom became critical to maintaining the firm’s collaborative culture and work style. Interacting with the courts changed fundamentally, and one of the firm’s attorneys pioneered doing a video virtual early argument.

Gillian Fenton outlined GSX’s innovative responses to COVID-19. GSX, a global healthcare company and the leading provider of vaccines in the world, pivoted rapidly to the demands of the pandemic. The first was to rethink and rearrange the high-density, open-plan offices and the labs at the Rockville, Maryland research center to promote social distancing. R&D was re-prioritized to pandemic countermeasures, and a GSX-HHS-DOD initiative called “Operation Warp Speed” has pledged to deliver 300 million doses of a safe, effective COVID-19 vaccine by January 2021.

Dan Pacheco, described how Hayden5 responded to the pandemic, transitioning quickly to the new environment, making use of Zoom, user-generated content and remote production. The company also developed the Hayden5 Dropbox, a small, mobile film unit that comprises a professional-grade camera, web cam technology, and PPE. There are 500 units now in use.

SICK OF ALL THE BAD NEWS ABOUT COVID-19? HEAR OUR STORIES OF HOW OUR ORGANIZATIONS ARE DEALING WITH THE DISRUPTION, BY ACCELERATING AND INNOVATING CHANGES

Gillian Fenton Vaccines

Charles Macedo Law Firm

Alex Butler Media/Finance

Dan Pacheco Film Production

Matan Arazi Mobile Apps

DOE Lab Technologies Are Available For Licensing Leveraging National Lab Capabilities for COVID-19 and Beyond Sponsored by the Houston LES chapter, this webinar brought together scientists from three of the 17 U.S. Department of Energy (DOE) National Research Laboratories. They discussed solutions to the COVID-19 pandemic developed recently and how industry can engage with the National Labs. Dr. Louse Levien, member, LES Board of Directors, and recently retired from Exxon Mobil Upstream Research Co., moderated.

Kannan Krishnaswami, Ph.D. is Commercialization Manager at Pacific Northwest National Laboratory (PNNL) in Richland, Washington. He specializes in sensors, data analytics, cybersecurity, and research computing technologies. He gave an overview of the national labs—their history, current research specialties and their mission to expand the commercial impact of D.O.E. research. He outlined PNNL’s COVID-19 programs and technologies. These include materials and devices for first responders, rapid analytical measurements, and data science solutions. NanoPOTS, for example, a platform for processing biological samples, streamlines diagnosis and treatment. In addition, PNNL offers a no-cost exploratory license agreement for COVID-related innovations and a COVID-19 technical assistance program.

Annemarie Meike, Ph.D., J.D., is Business Development Executive at Lawrence Livermore National Laboratory (LLNL), in Livermore, California.

She develops IP strategies in energy and environment, sensors, wireless technologies and nanomaterials and chemicals and materials. The Lab’s Innovation and Partnership office has $8 million in annual royalty income, 142 active licenses and CRADAS and more than 1,000 active patents and applications. Among LLNL’s COVID-related innovations are improved speed and accuracy of diagnostics tests and a simple ventilator for emergency use, which is now being mass-produced.

Matt Garrett, M.S. is Commercialization Manager at Oak Ridge National Laboratory (ORNL) in Oak Ridge, Tennessee. He manages IP and commercial licensing of advances in computational sciences, national security

Pacific Northwest National Laboratories (PNNL): https://availabletechnologies.ppl.gov/ Oak Ridge National Laboratories (ORNL): https://www.ornl.gov/technology-transfer/technologies Lawrence Livermore National Laboratories (LLNL): https://ipo.llnl.gov/ If you are ready to engage and discover how DOE technology can solve your market problems, contact us. systems, and energy and transportation science. He outlined the billiondollar impact of research done at of ORNL, the original Manhattan Project site. ORNL capabilities include neutron science, high-performance computing, nuclear science and medicine and energy systems. The Lab’s COVID-19 licensing portfolio covers vital diagnostics, large-scale text analytics, and rapid manufacturing of PPE and test equipment tooling.

ORNL offers a one-year, non-exclusive, royalty-free license for the COVID-19 inventions in its portfolio.

Garrett also discussed the D.O.E. programs for engaging with industry: technology licenses, technology assistance, and partnership agreements.

In conclusion, Dr. Levien said the National Labs are an outstanding scientific resource that does not commercialize, but creates a path to commercialization by partnering with industry.

On-Demand Webinar/Event Recordings LES hosts webinars and events, like “Licensing in the Age of AI” on hot topics and breaking developments, such as patent reform, important case updates, and other major industry news. These webinars are designed for all IP and licensing professionals at any level of experience, including corporate IP and licensing professionals, technology transfer professionals, non-IP attorneys, and business development professionals.

5 | September 2020

LES webinars are a convenient and affordable way to stay up to date with current trends and challenges, gain core knowledge on IP and licensing topics, and supplement your learning in new areas. If you missed a webinar or event, you can access the recordings through our library of on-demand webinars on our website at: https://www.lesusacanada.org/ webinars/. All webinar and webinar recordings are FREE for LES members. You can log-in and learn from leading industry experts anywhere, anytime.

LES New York—Panel Of Experts Discuss Trade Secrets

“T

rade Secrets—Challenges and Solutions,” a webinar hosted by the LES New York City (NYC) Chapter on July 14, informed attendees about the latest trade secrets, litigation trends, and strategies. The webinar was organized and moderated by two new LES NYC co-chairs—Michael Kasdan, and Joseph Casino, both partners at Wiggin and Dana LLC in New York City.

The panelists were Brian Hinman, Chief Innovation Officer, Aon Insurance; Michael Gulliford, Managing Principal, Soryn IP Group; Lou Bladel, Managing Director, Ernst & Young; and David Herrington, Partner, Cleary Gottlieb. They covered recent information on the International Trade Commission and cuttingedge technology to evidence trade secrets. There was an excellent discussion among panelists about how trade secrets have increased in importance as an intellectual property right.

Members can access a recording of the session here:

https://attendee.gotowebinar.com/recordng/3569625380972989455.

LES Washington DC—Know Your Professional Responsibilities

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n August 4, the LES Greater Washington, D.C. Chapter hosted a webinar titled “Professional Responsibility and the USPTO,” which examined conduct expected of patent attorneys by the United States Patent and Trademark Office (USPTO). The webinar was organized by D.C. Chapter Chair Ray Van Dyke.

The speaker was Will Covey, Deputy General Counsel and Director, Office of Enrollment and Discipline (OED) at the USPTO. Will is responsible for ensuring that the nation’s patent attorneys and agents are of good moral character and sufficiently knowledgeable to practice before the USPTO. He covered issues relating to professional responsibility and gave examples of attorney misconduct.

Practitioners are subject to varying levels of discipline for not complying with USPTO regulations. An attorney may be reprimanded and placed on a one-year probation or could be banned for up to 10 years, depending on the offense.

Ray Van Dyke

William Covey

6 | LES Viewpoints

Members can access the session slides here:

https://bit.ly/3jS0lD4

Tune in to the next D.C. Chapter webinar, “The Impact of Constricted Statutory Subject Matter on Critical Areas” on Tuesday, September 8, 2020.

LES Policy Report: U.S. Patent System In Disrepair And Bayh-Dole Redux–Gilead’s Remdesivir

By Brian P. O’Shaughnessy, LES, Senior V.P., Public Policy

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ES USA & Canada (LES) continues to work with policymakers and legislators toward a more vibrant innovation economy through strong, effective, and reliable intellectual property rights. Laws and policies supporting the orderly procurement and exchange of intellectual property rights promotes specialization, economic efficiencies, and encourages innovation and investment. In turn, this operates to create new industries, markets, and products improving societal health, wealth, and well-being.

See CBM Letter on Page 14

7 | September 2020

academic lab; and the U.S. was a bit player in new drug development. Since Bayh-Dole, academia has produced hundreds of new drugs, and the U.S. has become the world leader in new drug development.

The BD40 initiative, headed by LES stalwart Joe Allen, who, as Professional Staff Member on the Senate Judiciary Committee, ushered the Act through Congress. Joe has been an invaluable steward of the law, and in doing so, a champion of American innovation. We owe an enormous debt of gratitude to Bayh-Dole and to Joe Allen.

Since at least about 2005, events have weakened our patent system, Of late, populists have called on the federal government to exploit a diminishing the value of patents, and diverting investment and resources “march-in” prerogative of Bayh-Dole to attack high-priced drugs. The to foreign shores. This has impaired U.S. leadership in innovation, and populists argue that the law extracts a double payment from the American ceded opportunities to jurisdictions that adopted the U.S. approach to IP at taxpayer: first, in supporting drug research with federal grants; and later, in precisely the moment we are forsaking it. paying a perceived premium for resulting drugs. An unsophisticated and ill-reasoned argument.

Our own Jack Lu, Ph.D., CLP, published two valuable “Remdesivir itself Recently, a bipartisan coalition of 34 state attorneys general and insightful reports, drawing on, among other things, the is not subject to called on the federal government to invoke, for the first time ever, fruits of the LES Royalty Rate and Deal Terms Surveys.

He shows the steady decline in value of IP and licensBayh-Dole’s march- the Bayh-Dole march-in prerogative on Gilead’s Remdesivir. In ing. See, Bloomberg Law, (https://lnkd.in/eihHwPe); and in provision–it was those COVID-19 patients that advance to severe respiratory distress, the drug alleviates those symptoms, reducing time on ventilators Law360, (https://lnkd.in/e4f4zYg). The Royalty Rate and invented by Gilead and hospital stays. The AGs argue that Gilead received federal Deal Terms Survey is a benefit of LES membership, and scientists in Gilead funding for Remdesivir research. However, the letter fails to conavailable to members without charge for private use. labs with no federal nect the federal funding with the invention of Remdesivir itself, Jack’s analysis is sobering and foreboding for American and indulges in a speculative parade of horribles that might derive Innovation. He shows what LES has long since argued– funding.” from an abuse of patent rights. It’s riddled with supposition and American innovation is being hobbled by events ranging factual flaws, as described more thoroughly by LES Public Policy from unfortunate precedent (impairment of injunctive Committee members, Joe Allen (www.ipwatchdog.com/2020/08/06/norelief in eBay, the unholy §101 troika of Mayo, Myriad, and Alice) to cant-march-remdesivir/id=123868/), and Professor Adam Mossoff, Antonin legislation, particularly the inaptly named America Invents Act (AIA). The Scalia Law School, and Sr. Fellow, the Hudson Institute (www.hudson.org/ AIA’s creation of Inter Partes Review (IPR), Post Grant Review (PGR), research/16322-us-should-not-confiscate-gilead-s-remdesivir-patent). Most and Covered Business Method (CBM) reviews, while of laudable intent, telling, Remdesivir itself is not subject to Bayh-Dole’s march-in provision—it have proven disastrous to American innovation; and have been especially was invented by Gilead scientists in Gilead labs with no federal funding. prejudicial to American small business and entrepreneurs, the wellspring In a Washington Post Op-Ed (www.washingtonpost.com/archive/opinof innovation. ions/2002/04/11/our-law-helps-patients-get-new-drugs-sooner/d814d22aNotably, the CBM program, having been designed as a transitional pro6e63-4f06-8da3-d9698552fa24/), the bill’s sponsors, Senators Bayh gram for reviewing certain classes of business method patents, was created and Dole, unequivocally stated that the march-in provision of Bayh-Dole with a specific sunset provision (September 16, 2020). LES joined a continwas never intended as a price control mechanism. Instead, “the primary gent of like-minded organizations urging the U.S. Senate Subcommittee on purpose of the act was to entice the private sector to seek public-private reIntellectual Property to give effect to the transitional nature of the program, search collaboration rather than focusing on its own proprietary research.” refrain from renewing it, and allow it to permanently terminate (See Page In addition to the commendable work of Joe Allen and Adam Mossoff, 14). Despite its express sunset provision, a coterie of senators are proposing to LES has spoken out against the letter, and its ill-conceived solution. introduce an extension to CBM. This is unfortunate, and, if successful, would The first-ever invocation of march-in would be devastating to American further hobble American inventors, and innovation generally. drug research, and diminish rather than enhance incentives to research and LES is also working with the Bayh-Dole 40th Initiative, commemoratdevelop a COVID-19 cure or vaccine. It would send a message that patent ing the 40th anniversary of the law The Economist dubbed “Possibly the rights are vulnerable to government takeover on the mere prospect of a most inspired piece of legislation to be enacted in America over the past perceived abuse. It would diminish investment in pharmaceutical research, 1 half-century.” Bayh-Dole enhanced public-private research collaboration and do irreparable damage to public-private partnerships and sponsored by opening the door to universities taking title to inventions supported by research at American universities. This, in turn would be devastating to federal funding, which could then be licensed to industry for development. academic research, and the American system of post-graduate education.

Prior to Bayh-Dole, where the federal government took title to IP resulting In at least 34 instances, our state attorneys general need to go back and from federally funded research, not a single successful drug came out of an do their homework, and rethink their recommendation. Resort to marchin will do irreversible damage to the American innovation economy and 1. Economist Technology Quarterly, Dec. 14, 2002. www.economist. higher education. com/technology-quarterly/2002/12/14/innovations-golden-goose.

LES Member Spotlight

By Meredith Holmes

Q&A with Vincent Bergeron, Quebec City

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incent Bergeron is a busy man. At ROBIC, a Canadian firm focused on intellectual property, he is Partner, Lawyer and Trademark Agent, and Leader of the Emerging Technologies Group.

Vincent has been a member of LES since 2011, generously contributing his time and expertise, especially to the Young Members Congress (YMC) and the Young Members Committee of Quebec City. He finds time for other professional organizations as well. He is past president of the Quebec Division of the Canadian Bar Association’s Information, Telecommunications, and Intellectual Property section.

He is a member of the advisory board of Blockchain Hub Quebec and co-founder of the crowdfunding platform, La Ruche.

Vincent is a prolific writer and presenter.

“I try to give as many presentations as possible to share insights on how the industry is evolving,” he said. “I lost count at some point, but I have written more than 160 publications and presentations.” He is the recipient of many honors and awards, and was recognized as being among the best technology law lawyers in Canada in 2019 and 2020.

We caught up with Vincent Bergeron in August, and although he was preparing to leave for vacation with his family in northern Quebec, he graciously agreed to answer our questions.

practice in the fields of privacy, copyright, trademarks, patents, trade secrets, industrial designs, licensing and technology transfers. We have a very strong team of IP experts in the field of emerging technologies at ROBIC, so my main responsibilities are to coordinate the team of lawyers, patent agents and engineers who work in our specialized group.

Q:

What drew you to LES? What have you worked on, and what are your plans for future participation?

A: Vincent: I first joined LES around

2011, following the advice of one of my mentors, François Painchaud, PastPresident of both LESI and LES (USA & Canada). At first I joined the Executive Committee of the Quebec City local chapter, then in 2014 I joined the LESI YMC Committee, to help engage more LES members worldwide. After a few years of involvement in the LESI YMC Committee, including as Vice-Chair of Communications, I was asked to contribute to the creation of the YMC Committee for LES (USA & Canada), for which I was the first Acting Chair. I then became Chair of the LESI YMC Committee in 2019-2020.

I served with an amazing international team of YMC leaders, and our regional YMC events in Montreal, London and Seoul were recognized by LESI as the What are your practice areas “Outstanding Events of the Year.” After and your responsibilities at such a high note, I thought I might take a ROBIC? few years to relax, but I still had energy A: Vincent: I specialize in the internato contribute, so I am currently co-chair tional protection, defense and commerof the LESI Communications Committee. cialization of intellectual property assets I plan to join the LES (USA & Canada) related to information technology, particu- Board in October 2020, if all goes well. larly in the areas of artificial intelligence, What LESI involvement did big data, blockchain, software, video you find most interesting or games, internet of things, virtual reality personally meaningful? and other emerging technologies. I also A: Vincent: Being chair of the LESI

Q:

8 | LES Viewpoints

Q:

Vincent Bergeron, Partner, Lawyer and Trademark Agent at ROBIC

YMC Committee has been one of the most meaningful personal and professional experience of my life. I have had wonderful mentors within LES who inspired me— François Painchaud, Tilman Muller-Stoy, Jean-Hyacinthe de Mitry, Sherry Rollo, Natalie Raffoul and Tom Gaunt, to mention just a few. Helping LESI to actively engage with young members from around the world and making sure our content, activities and events were relevant, interesting and forward-looking was incredibly rewarding. I am so pleased to see the committee is now led by amazing people, such as Georgina Busku and David Swain. The future looks great! I hope to have an impact on the LES family for years to come.

Q:

What do you do to relax?

A: Vincent: I am indeed quite busy.

My wife and I have three young girls, the youngest of whom is just six months old! To relax, I jog, cycle and play board games with friends. I played in a band for five years, so I am a huge music fan. In fact, I always listen to music while working. I hope someday to have time to start another band. So, here’s a message to all LES members: we might join together on stage at some point in time!

LES Member Retirement

By Meredith Holmes

IP Expert and LES Past President Bill Elkington Retires

A

fter a long career in intellectual capital (IC) management, Bill Elkington retired in July from Rockwell Collins (now Collins Aerospace). Since 2003, Elkington had been Rockwell’s senior director of IC management, providing leadership in IC value extraction and protection. In this position, he was responsible for rights management strategies concerning the company’s strategic IC. His group worked with Rockwell’s business units to value intellectual property and to structure both upstream and downstream licensing relationships. Elkington also oversaw enterprise business policy, procedure, training, tools, and change management strategies to manage IC for enterprise value-enhancement. He was the chair of the company’s patent committee for many years and held the patent budget.

Before joining Rockwell Collins, Bill Elkington was vice president of program management at MeshNetworks, a wireless start-up company he helped found. MeshNetworks commercialized ITT’s novel communications technology, and Elkington was responsible for program management, procurement, network design and deployment, and advanced engineering activities. MeshNetworks was sold to Motorola in 2004.

Prior to that, Elkington held positions in IC management, technology marketing, strategic and operations planning, and program management in ITT’s Aerospace and Communications Division and in GE research and development organizations.

He was an active participant at LES meetings as both a speaker and attendee for many years. He was LES president from 2017 to 2018.

From 2014 to 2020, he led the LES Standards initiative, helping to

develop standards for the field of IC management.

He also was a member of the Aerospace Industries Association, Intellectual Property Committee, where he worked on education and policy issues with colleagues from other aerospace companies, specifically regarding software and data rights in Department of Defense (DoD) contracting.

He was a member of the Government/Industry Section 813 Panel, authorized by Congress (in the National Defense Authorization Act of 2016) to study the IC rights laws and regulations in DoD contracting and to recommend changes to them.

Considered a thought leader in the field of IC management, Elkington has written many LES-centric articles for IAM magazine and has been the subject of several round-table interview articles written by others and published in IAM magazine.

He has recently established a company—Mind IC LLC— through which he is consulting in the field of IC management, focusing on business policy and process, valuation, strategy for protection and enterprise value enhancement, and supply chain relationship management. Finally, he has a forthcoming book— “Mind IC: Notes on Intellectual Capital Management”—that references LES’s prominent role in this important field.

He lives in Vero Beach, Florida, and continues to support LES in any way he can.

LES Members on the Move Michael Fluhler left Fishman Stewart PLLC for HertzSchram. Michael is a leading intellectual property attorney and strategic business advisor in worldwide protection and monetization of innovation, technology and brands. He is mentor for “Financing Technology Commercialization: A Venture Capital Practicum” at the University of Michigan, chair of the LES High Tech Sector and LES Michigan Chapter, and vice-chair of the IP Transactions Committee for American Intellectual Property Association (AIPLA).

9 | September 2020

Sanjay Prasad’s firm merged with Appleton Luff. Sanjay Prasad draws from over 25 years of practice at the forefront of technology and intellectual property. He has extensive experience in advising entities on patent strategy, including developing corporate patent strategy, advising on infringement matters, developing patent filing programs, patent acquisition and sales programs and patent and technology licensing. His high-tech sector expertise includes semiconductors, software, computer systems, internet, telecommunications and medical devices.

Eric Victory is VP, Global Strategic Marketing at Aurinia Pharmaceuticals in Rockville, Maryland. Previously, Eric worked at AstraZeneca’s MedImmune unit as VP, Partnering & Strategy—Head for Cardiovascular, Metabolic, & Infectious Disease, leading licensing activities for two of the company’s therapeutic areas. In this role, Eric successfully closed the acquisitions of Spirogen and Amplimmune, brought on Sanofi Pasteur as a partner in developing MedImmune’s MEDI8897 (nirsevimab) nextgeneration RSV antibody, and led negotiations for multiple other key agreements across the pipeline. Before that he managed MedImmune’s U.S. Government pandemic influenza contracting, and held other roles in business development and marketing. Eric served over five years as a commissioned officer in the U.S. Navy Nuclear Propulsion Program. He holds bachelor’s degrees in physics and political science from Stanford University and a Master of Business Administration from Northwestern University’s Kellogg School of Management.

LES Education — 2020 Update, Courses Move Online Dear LES Members and other Licensing Professionals!

I hope that this update finds you well, and that you have all been able to stay healthy and safe during these trying times.

The LES Education Committee has worked tirelessly to provide meaningful education programming during this pandemic and these efforts have been extremely successful. It has taken a lot of hard work, and many hours of revisions, to turn our in-person courses into engaging online offerings. Since the beginning of March, LES Education has offered over a dozen online courses with more on the way. From September 29—October 1 we will be offering a three-day Negotiation Skills course. On October 6 & 7 there will be an offering of the newly revised IP Licensing Basics course. Education will be taking a brief pause during the LES Annual Meeting before offering one more course before the end of the year: an Advanced IP Valuation course in early November.

With so much of our world becoming virtual, LES Education is continuing this. The 2021 calendar is almost complete with a variety of online offerings every month. We anticipate having our 2021 Education Calendar completed and available for registration in the beginning of November. Courses will include an updated Business Development in Life Sciences course as well as the launch and reboot of our LES Best Practices course. LES Education is always interested in the thoughts, ideas, and suggestions of our members, so if there is a particular topic or course you would like us to develop, all you have to do is contact me: mkeagle@les.org Have a wonderful fall. Stay safe and healthy, and I look forward to seeing everyone soon when we are able to meet in person again Sincerely, Mark Keagle Director of Education—LES USA & Canada, mkeagle@les.org, education@les.org

September Lunch & Learn Webinars This is a four-part series of online webinars focusing on the mechanics of a licensing agreement. Each session runs from 12:00PM–1:30PM EST every Wednesday in September and features one hour of content and one half-hour for Q&A and networking.

Wednesday, September 23, 12:00PM–1:30PM Mechanics of a Licensing Agreement–Innocuous portions of a license agreement that can prevent/result in litigation.

Past Webinars in this series available On-Demand Wednesday, September 2, 12:00PM–1:30PM Mechanics of a Licensing Agreement–Grant Clause

10 | LES Viewpoints

Wednesday, September 9, 12:00PM–1:30PM Mechanics of a Licensing Agreement–Indemnifications Wednesday, September 16, 12:00PM–1:30PM Mechanics of a Licensing Agreement–Royalty Clause

2020 Education Calendar

Tuesday, September 29, 30 & October 1, 2020 Negotiation Skills Workshop–3 Day Event September 29 - 11:00 am - 1:00 pm & 3:00-6:00 pm September 30 - 11:00 am - 1:00 pm & 3:00-6:00 pm October 1 - 11:00 am - 1:00 pm & 3:00-6:00 pm $650 Member/$795 Non-Member Have you thought about the knowledge and skills needed to negotiate well? Consider learning from experts in this immersive and interactive opportunity. The guiding philosophy of the course is that situational awareness and understanding of people and negotiating room dynamics wins every time over reliance on tactics like “good cop, bad cop.” Our goal is to help you build a foundation that will support the development of sound strategies and implementation of fact-driven actions. Topics covered: Principles of Negotiating, Interests vs. Positions, Tactics, Elements of Power, Leverage and Personality, People Problems.

Tuesday, October 6-7, 2020 IP Licensing Basics–2 Day Event 11:00-1:00 and 3:00 -6:00 pm both days $325 Member/$426 Non-Member There is more emphasis now than ever before on commercialization, company formation, and job creation from the billions of dollars invested annually in research and development at America’s universities, government laboratories, and small businesses.

Whether you are an entrepreneur in-the-making, a principal investigator or student at any level who wants a better grasp of the basics, or an aspiring technology transfer professional, this course will give you the tools you need to understand and participate effectively in the process of protecting IP and facilitating its commercialization. The course will be broken up into 4 modules.

Tuesday, October 14, 2020 Legal Ethics in IP Licensing–Virtual Course 12:30 pm - 2:30 pm $99 Members attending the Annual Meeting/$199 Members not attending the Annual Meeting/$299 Non-Members This course is an interactive exercise that enables attorneys and business people to understand and explore the various ethical questions that can arise during the negotiation of an intellectual property transaction. Very loosely patterned after the beloved Choose Your Own Adventure® book series, the course participants are given a scenario framework at various stages of an intellectual property transaction and then develop their own detailed story.

The course is broken down into three acts: 1) A Technology Is Born; 2) A Deal Is Done; and 3) A Deal Is Undone: War Declared.

Participants take on different roles throughout the acts, with attorneys playing the business person roles and vice versa.

CLE credits available, for more information e-mail: education@les.org

Up-to-date information can be found on the LES website: https://lesus.wpengine.com/professional-development/#courses

Elevate Yourself and Your Profession— Earn the Certified Licensing Professional (CLP)

By Cynthia Allen

Fall Exam

I

Administration Window Extended

n light of the COVID19 pandemic and its effects throughout the world, the CLP Board of Governors has extended the fall 2020 examination window. Eligible candidates may take the certification exam between September 1 and November 30, 2020 through live-online proctoring (at the candidate’s home or office) or at a Scantron test center (as availability allows).

Please contact CLP with any questions at clpinfo@licensingcertification.org or visit www.licensingcertification.org regarding application deadlines.

CLP Recertification Deadlines For 2020 Extended

I

n an effort to provide flexibility to CLP credential holders during this difficult time, the CLP Board of Governors has extended the recertification date for those due to re-

certify by April 30, May 31, June 30, July 31, or August 31, 2020 to November 30, 2020.

Credential holders due to recertify between April and June 2020 may continue to earn continuing education credits and complete the recertification application by November 30, 2020 without penalty.

CLP certificants can earn continuing education credits in a variety of ways and in a

virtual/online environment, including:

• full-time licensing/IP employment (maximum of 18 credits per three-year recertification cycle)

• webinars/virtual education presentations/offerings, and • writing/publishing on relevant educational topics.

• CLP encourages credential holders to review the recertification requirements

(Candidate Handbook) in detail and determine how they can continue to earn CE activities this year.

For affected credential holders who complete the recertification process by November 30,

going forward the new credential expiration date will be November 30 every three years.

CLP will continue to email reminders to certificants. However, it is the responsibility

of the CLP credential holder to be aware of recertification deadlines and requirements in clpinfo@licensingcertification.org.

C

LP offers a practice test that includes 50 multiple choice questions representative of the content areas and question format of the certification exam. The questions included in this practice test are not currently in use and will never appear on a scored (or active) version of the certification exam.

The practice test is unproctored, and statistical analysis of item/exam performance is not completed. Performance on the practice exam is not necessarily indicative of performance on the actual CLP certification exam. The purpose of the practice test is to provide candidates with a tool to familiarize themselves with the types of questions they may encounter on the exam.

Once you complete the practice exam, you may self-score the exam using the key provided.

The answer key includes the content domain and task statement associated with each item for your reference.

Test your knowledge with the following question excerpted from the practice test. A rationale for the right answer from subject matter experts who developed the practice test is included.

What approach is MOST often used in estimating reasonable royalties in litigation matters?

(Domain 2) A. Intellectual property development costs B. Edgeworth box C. Hypothetical negotiation D. Litigation settlement agreements Rationale: A well-known damages case is the Georgia Pacific case in which a hypothetical negotiation was used as one approach to calculate damages. Subsequent cases and experience have led to hypothetical negotiation being a preferred route to a calculation of damages.

Request the CLP practice test online at http:// www.licensingcertification.org/for-candidates/ practice-test/.

11 | September 2020

order to maintain active certification status. If you have questions, please contact CLP at

Test Your Knowledge With A CLP Practice Test Item

LES New Members Chris Adams CEO CYDAN II Inc

Warren Czerniak President Gedeon Richter USA

Pradeep Kumar MSD Intl. GmbH (SG Branch)

Tsuyoshi Nakamura Partner WHDA LLP

Mara Adams Attorney In Residence Filevine

William Devitt Partner Jones Day

Luis Oliveira MSD FarmacĂŞutica Ltda.

Paul Ainsworth Director Sterne Kessler Goldstein & Fox

Marius Domokos Partner DLA Piper (US)

Michael Lance Regulatory Affairs Senior Associate ANI Pharmaceuticals, Inc.

Yang Akiri Senior Business Development Manager Lingmed Ltd.

Diana Draganova Legal Counsel Pharmascience Inc.

Dirk Lasater Associate King & Spalding LLP Jeff Livingstone CEO Igia Pharmaceuticals

Lorenzo Badiola Research Associate FungibleThot

Richard Emnett Vice President of Finance, CFO Genective USA Corp.

Jason Bang Associate Willkie Farr & Gallagher LLP

Michal Gawlik JD Student, Patent Agent Loyola University Chicago

Natalie Ma Blavatnik Fellow Yale University

James Barrow Director QA/RA General Counsel Kelyniam

Adam Haskett Associate Director External Manufacturing

Luca Manfredi Student Universite de Montreal

Thomas Benson CEO 4E Therapeutics

Arthur Heere Merck

James McCormick Counsel King & Spalding LLP

Antonietta Calitri Senior Legal Counsel Intact Philippe Chemla President Business Consulting Christian Chessman Attorney DLA Piper LLP (US) Michel Cloutier Client Relationship Leader National Research Council of Canada

Gregg Jacobson Attorney King & Spalding LLP Joel Jameson President Silicon Economics Qiaoni Jing President & CEO Genective USA Corp.

Chitra Kalyanaraman Partner Maynard Cooper & Gale

James Lynch Vice President Rockwell Medical Inc.

Clint Mehall Partner Davidson, Davidson & Kappel, LLC Rohit Mehta President Mr. Matt Mroz Director of Enterprise Technology Transfer The Research Foundation for SUNY

Laila Paszti Of Counsel Norton Rose Canada LLP Sunny Patel Director, Quality Gilead Sciences, Inc. Stephen Scott CEO Starling John Sears Principal and Founder Innovators Legal Aneesha Sehgal Associate King & Spalding Renee Shaw 2020 Juris Master Emory University School of Law Roberta Sinistri MSD International GmbH Kalpa Vithalani Executive Director of Technology Transfer Marquette University Patrick Walsh VP Business Development Akebia Therapeutics Elizabeth Zeligs COO, Co-owner Boulder Bioscience LLC

In Memoriam - Jack Stuart Ott

12 | LES Viewpoints

W

e honor Jack Ott, a good friend and colleague to many of us in the Licensing Executives Society. Jack recently passed after living a wonderful life for 88 years, and we will miss him.

Jack contributed mightily to the Licensing Executives Society. He served as editor of the quarterly publication les Nouvelles from 1974 to 2000 and also edited other publications including LES Viewpoints and the LES USA & Canada Annual Report. We all appreciate his devotion to LES in chronicling its founding and early years in a short book called The Licensing Executives Society: The First 40 Years A Living History.

In his early years, Jack attended Ohio State University where he graduated with a degree in journalism and married his high school sweetheart Phyllis Roley in 1953. Together they raised four sons while moving around Ohio as Jack worked as a photographer, reporter and editor at the Dayton Daily News, the Painesville Telegraph and finally

for SOHIO, where he edited and wrote for their publications about the Alaska pipeline.

Jack was accomplished in scouting, reaching the top rank of Eagle Scout, as did all four of his sons and four grandsons. He could always be found with a camera in hand. Additionally, Jack ran many triathalons, and loved to take his boat Osprey out for scuba diving adventures. He thoroughly enjoyed spending time with his family and friends.

We honor Jack and appreciate all he did for LES, especially in his friendship and in maintaining the high quality of our publications.

PROTECTING & COMMERCIALIZING FUTURE TECHNOLOGIES THE FUTURE IS NOW! KEYNOTE SPEAKERS

Gain the insight, knowledge, and connections that you have come to expect from LES, in a new and exciting way. We are using the latest technology to deliver a thought-provoking program of high-quality intellectual property and licensing content to help you in your job.

Join us for this digital gathering and log into any of our 30+ live and on-demand sessions and participate in peer-to-peer discussion groups.

Fabian Gonell Senior Vice President, Licensing Strategy and Legal Counsel, Qualcomm

Dr. Daria Mochly-Rosen Professor, Stanford University and founder and director of The SPARK Program

October 15-20, 2020

PROGRAM TOPICS INCLUDE: •

Patent Eligibility for Machine Learning Networks, Home Automation, and the Internet of Things

•

Promoting Innovation Where Market Incentives Don’t Work

•

Top 10 Court Decisions of the Year Affecting Licensing

•

International IP Strategies for Protecting Emerging Technologies

•

Commercializing Big Data for Life Scientists (and Everyone Else!)

•

Machine Learning in the Lab and in the Marketplace -- Biases and Other Risks in Technologies that Teach Themselves

•

Why Is It So Hard to License Programs Out of Large Pharma

Look for our Group Registration rates to save!

Don’t miss this exciting opportunity to learn how to handle IP and licensing issues around new technologies.

LESMEETINGS.ORG/AM20 13 | September 2020

Expand your brand and increase your exposure with hundreds of IP and licensing professionals. Sponsor or exhibit at the 2020 LES Annual Meeting.

Contact enelson@les.org for details.

CBM Patent Review Letter Referenced In LES Policy Report June 17, 2020 Sen. Thom Tillis, Chairman Subcommittee on Intellectual Property Senate Judiciary Committee 224 Dirksen Senate Office Building Washington, D.C. 20510

Sen. Chris Coons, Ranking Member Subcommittee on Intellectual Property Senate Judiciary Committee 224 Dirksen Senate Office Building Washington, D.C. 20510

14 | LES Viewpoints

Dear Chairman Tillis and Ranking Member Coons: The Covered Business Method (CBM) Patent Review Program, a postgrant administrative proceeding at the Patent Trial and Appeal Board (PTAB), is set to expire September 16, 2020. The undersigned urge you to let this postgrant proceeding expire permanently, and we would oppose any efforts to renew this program.

As you know, the CBM “transition” program was enacted as section 18 of the Leahy-Smith America Invents Act (AIA) in 2011. From the beginning, its purpose and rationale were suspect and controversial. The provision establishing CBM postgrant review was, as the New York Times put it, “largely aimed at helping banks rid themselves of the Ballard problem.”1 This refers to inventor Claudio Ballard, who invented and was awarded patents on a digital imaging system that enables financial services institutions to process checks electronically. This saved banks millions of dollars in shipping and other costs to haul checks physically to far-flung banks for cancelling and returning the checks to depositors. Mr. Ballard’s invention proved of tremendous market value, sparing the banking industry huge costs and improving efficiency. However, banks faced having to pay his company, DataTreasury, royalties and patent licensing fees to benefit from Mr. Ballard’s invention.

Banks lost court challenges of his patents’ validity, lost in court where banks were found to be infringing the patents through unauthorized use of the invention, and couldn’t dominate in licensing negotiations because, as Mr. Ballard’s 13-plus-year winning streak maintained through constant litigation in Article III courts and pre-AIA Patent & Trademark Office proceedings attests, his patents were objectively sound. The banking industry attempted to advance “Check 21” legislation that initially failed to be enacted.

The AIA presented another legislative vehicle. The financial services industry sought what was effectively the Check 21 legislation, via the AIA, to create a customized method of administratively invalidating patents, beginning with those owned by a lone inventor who had prevailed in Article III judicial proceedings in which fairness and due process are the norm. CBM patent review provided the banking industry the “tilt in the system” and “stacked procedures of Section 18” to invalidate2 Mr. Ballard’s patents, which had been repeatedly found valid and successfully enforced in federal courtrooms.3 The Check 21/section 18/CBM proceeding, as the New York Times put charitably, was intended to “allow for an expanded consideration of other elements in a new [administrative patent] review format.” 4 Having delivered the banks’ goal, the CBM program is used less and less. The Government Accountability Office reported that patents granted on business methods increased as a share of issued patents from 6 percent in 1990 to 28 percent in 2014, following State Street. 5 Yet, CBM patent challenges since the proceeding’s creation have been low, especially compared with another PTAB patent validity-challenge proceeding, inter partes review (IPR). GAO reported 524 CBM petitions in PTAB’s first five years (September 2012-September 2017) versus 6,958 IPR petitions filed.

Further, CBM challenges have trended down since May 2015 to fewer than 5 petitions filed per month by September 2017. GAO found “the number of [CBM] petitions per month fluctuating but tapering off over time.”6 No CBM petitions were filed the final two months of fiscal year 2017, the last of the period GAO studied. More recently, the PTO reports 36 CBM petitions filed in FY 2018, 22 in FY 2019, and 9 filed in FY 2020 through April 30.7 Thus, CBM should expire of disinterest, if not to eliminate a proceeding of questionable use, of illegitimate vintage, and of unjust intent.

Congress considered an extension of CBM in 2015; it was defeated on a strong bipartisan basis. The House Judiciary Committee rejected a CBM extension amendment, which the IP Subcommittee chairman offered with the support of the full committee chairman. The ranking minority member opposed the amendment. He noted the ostensibly transitional status of CBM, how PTO had broadened the program beyond its statutory boundaries, and that extending CBM “would work injustice on legitimate patent holders.”8 In fact, it already had, including upon Claudio Ballard. Congress in 2020 should follow suit and let CBM expire.

For these reasons, we strongly urge you to oppose any efforts to extend the CBM program. We ask that you not only allow CBM to cease existence, as scheduled, this September 16, but also that you take steps to ensure CBM’s expiration and permanent cessation.

Respectfully, Chris Israel, Executive Director, Alliance of U.S. Startups & Inventors for Jobs* James Edwards, Executive Director, Conservatives for Property Rights Brian Pomper, Executive Director, Innovation Alliance Brian O’Shaughnessy, Sr. V.P., Public Policy, Licensing Executives Society (USA and Canada), Inc. Joe Zheng, Ph.D. (over 20 U.S. patents), Managing Director, Logicpatents, LLC Charles Sauer, President, Market Institute Todd McCracken, President & CEO, National Small Business Association Robert N. Schmidt, Co-Chairman, Small Business Technology Council Kevin L. Kearns, President, U.S. Business & Industry Council Randy Landreneau, President, U.S. Inventor *Organization names appear for identification purposes only.

1. Edward Wyatt, “Banks Turn to Schumer on Patents,” New York Times, June 14, 2011.

2. Richard A. Epstein and F. Scott Kieff, letter to Congress, March 30, 2011, pp. 4, 11.

3. Epstein and Kieff, p. 2.

4. Wyatt.

5. State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368, 1375 (Fed. Cir.1998). In State Street, the Federal Circuit said inventions involving a computer or business method is patentable if it yields a “useful, concrete and tangible result.”

6. U.S. Government Accountability Office, “U.S. Patent and Trademark Office: Assessment of the Covered Business Method Patent Review Program,” GAO-18-320, March 2018, p. 17.

7. U.S. Patent & Trademark Office, various Trial Statistics reports, PTAB Statistics, at www.uspto.gov/patentsapplication-process/patent-trial-and-appeal-board/statistics.

8. Gene Quinn, “Amendment to extend CBM defeated in House Judiciary Committee,” IPWatchdog, June 11, 2015.