BCLT’s Expert Series Podcast

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BCLT’s Executive Director Wayne Stacy, along with BCLT’s Life Sciences Project Director Allison Schmitt, facilitate interviews with leading law and tech experts to discuss current cases and recent decisions concerning: antitrust and regulation, product development, content development and platforms, privacy and cybersecurity, technology and society, and brand protection. For inquiries email natcoletta@berkeley.edu

Also available on Apple Podcasts, Google Podcasts, and Spotify.

April 27
Last Week in Texas with Michael Smith | Episode 24

 The Eastern District provides us with a side-by-side comparison of motions for amending contentions. Together, these decisions illustrate the important facts for both sides. Judge Gilstrap also provides us with a wonderful example of what it takes to win a 12(c) motion and strike down a patent under 101. Compare this outcome to Judge Albright’s “uphill scrabble” to win a Rule 12 motion on 101. Finally, Judge Albright gives updated guidance on alternative service and about modifying his model protective orders.  

April 7
Matthew Meyer & Jake Chabon | Where law and business guidance meet — the world of startups

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For innovation companies, their success is often tied to the skill with which they handle the legal and regulatory issues in their industry. Law and business strategy go hand in hand. And this lesson is especially important for emerging companies… and junior lawyers. Today, we hear directly from a successful emerging company about the need for and value of combined legal and business advice.  

March 30
Last Week in Texas with Michael Smith | Episode 23                                      

 

Two JMOLs give us a good lesson on strategy and picking your battles. And Judge Gilstrap gives us great guidance on exceptional-case motions.

 

March 23
Last Week in Texas with Michael Smith | Episode 22

Satisfying fee awards remain elusive, but attorneys keep asking. Insanity or persistence? Apparently hoping to guide lawyers in their future filings, Judge Albright continues issuing detailed rulings on discovery disputes. This week’s important ruling focuses on discovery for related products. And finally, two severance motions with different outcomes. Together, these rulings demonstrate the contours of a successful severance motion.

 

March 1
Last Week in Texas with Michael Smith | Episode 21

What is the difference between bad behavior and sanctionable behavior? And can bad behavior be cured? Two opinions give us excellent guidance on these questions.

 

One of the most interesting questions this week—what is the difference between Waco and Austin? Judge Yeakel’s venue decision tells you all that you need to know.

 

February 16
Last Week in Texas with Michael Smith | Episode 20

Judge Albright continues to provide detailed guidance on motion practice in his court. These cases illustrate what motions not to file and how to better craft the motions that you do file.

February 2
Last Week in Texas with Michael Smith | Episode 19

Teaching moments in Texas. Trial guidance from Judge Gilstrap and guidance on infringement complaints.

January 26
Last Week in Texas with Michael Smith | Episode 18

Who’s afraid of a design patent?  An ex parte injunction demonstrates that we should all be paying attention. And how much is enough when it comes to claim charts? Judge Albright gives us meaningful guidance and a strong warning about second chances.

January 20
Ian Ballon | A preview of the year to come in internet law

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The litigation risks around data and privacy management continue to grow. Evolving class-action strategies, statutory damages, and new state laws create even more risks. Ian Ballon identifies a few of the biggest issues that we should be looking for in the next 12 months.

January 19
Last Week in Texas with Michael Smith | Episode 17

Should patent owners be afraid of NDTX now that the patent pilot is over? And what can we learn from a preliminary injunction denial? Hint—a lot.

January 4
Henry Huang, White & Case

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The Federal Circuit gave us a new case on pleading standards.  While it provides some clarity and some definite warnings, does it provide any clarity?  Or does it simply give judges the same discretion that they always had?

January 12
Last Week in Texas with Michael Smith | Episode 16

Judges Gilstrap and Albright provide guidance on trial procedures and remote hearings.  And a strong warning against Rule 33(d) games.

 

January 6
Beyond the holding – A nuanced look at the Federal Circuit’s patent decisions | Episode 6

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The Federal Circuit gave us important guidance with its recent Intel v. Qualcomm decision. What can we anticipate for Article III jurisdiction going forward? And is the Court quietly reviving the “gist” doctrine of old for claim construction? Featuring Wayne Stacy (BCLT) and Seth Lloyd (MoFo).

 

January 5
Last Week in Texas with Michael Smith | Episode 15

 

Judge Albright provides guidance for smooth patent trials and hints at distinctions in types of 101 motions.

 

December 17
Stuart Brotman | University of Tennessee, Knoxville

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The future of consumer and privacy protection may involve the broader concept of digital trust. Governments and companies both have a critical role to play—if they are willing.

 

December 15
Beyond the holding – A nuanced look at the Federal Circuit’s patent decisions | Episode 5

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When do post-marketing tests required by FDA not indicate a reasonable expectation of success for a drug combination?  And, what is the interplay between reasonable expectation of success and disclosed ranges in prior art?  Allison Schmitt (BCLT) and Brian Matsui (MoFo) discuss the Teva v. Corcept decision (18 F.4th 1377 (Fed. Cir. 2021)).  Featuring Allison Schmitt (BCLT) and Brian Matsui (MoFo).

December 15
Last Week in Texas with Michael Smith | Episode 14

 

What do you need to know about the new Magistrate Judge in Waco? And a textbook decision on seeking fees as a prevailing patent plaintiff.

 

November 19
Stuart Brotman | University of Tennessee, Knoxville                                          

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Local, state, national, and international—everyone is getting in on the privacy game. But what does the future hold for harmonization? And where does the new USMCA (the new NAFTA) fit in?

 

November 18
Beyond the holding – A nuanced look at the Federal Circuit’s patent decisions | Episode 4

In Hatch-Waxman cases, where is the act of infringement committed, and who commits it?  Allison Schmitt (BCLT) and Seth Lloyd (MoFo) discuss the Celgene v. Mylan decision (17 F.4th 1111 (Fed. Cir. 2021)). Featuring Seth Lloyd. 

November 17
Last Week in Texas with Michael Smith | Episode 13

Has the Federal Circuit abandoned all judicial restraint when reviewing Judge Albright’s orders? The Federal Circuit is now issuing opinions on Judge Albright’s venue decisions that are not even on appeal.  What can we expect next? And moving beyond venue, last week’s rulings provide important lessons on both summary judgment practice and expert reports.

November 10
Last Week in Texas with Michael Smith | Episode 12

The Senate turns a harsh gaze toward Texas. Will recent heat from Washington result in more cases being transferred out of Texas? Or will the Federal Circuit’s continued tinkering with venue make a difference? 

November 4
Stuart Brotman | University of Tennessee, Knoxville                                                                                                                                                                                                                             
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Using Europe as the model, privacy regulations worldwide are taking a strong turn toward punishment-based regulatory models. But is that the way that American privacy laws should go? What about offering a little carrot instead of all stick?

October 28
Beyond the holding – A nuanced look at the Federal Circuit’s patent decisions | Episode 3

 

Is the USPTO bonus system for APJs still vulnerable if challenged by a factually-armed patent owner? And how much clearer can the Federal Circuit be—District Court judges have significant discretion on inequitable conduct. Featuring Brian Matsui.

October 25
Jonathan Brightbill and Jennifer Porter, Winston & Strawn

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With the SEC evaluating new disclosure regulations and companies already being held responsible for sloppy ESG statements, in-house attorneys cannot afford to look past their environmental and ESG statements. What does the future hold? And what traps are already waiting for you?

October 25
Sarah Guske and Eliot Williams,                        Baker Botts

Would anyone tolerate Federal judges being paid based on the number of cases they dispose of? Probably not—it looks bad and erodes faith in the system. With faith in the USPTO at a low point, why then does the USPTO compensate PTAB judges using a bonus system that appears biased? 

October 20
Last Week in Texas with Michael Smith | Episode 11       

                       

Two trials and two patent owner losses. Who said Texas was a plaintiff’s dream? Could 101 be the most powerful invalidity attack in front of the jury? And a venue argument that was too much for Judge Albright.

October 14
Beyond the holding – A nuanced look at the Federal Circuit’s patent decisions | Episode 2                                 

Can parties contract away their rights to file an IPR? And what can a party expect when it fails to appeal an alternative rationale? Featuring Seth Lloyd.

October 11
Catherine Crump, Samuelson Clinic

Using publicly available information, Clearview AI built a massive database of faceprints for commercial use and police use. Did they have the right to do so? Not in Illinois at least. What does this important case mean for those outside of Illinois? And how will other states be looking to provide similar protections?

October 7
Reece Hirsch, Morgan Lewis

The Data Protection Act of 2021 would change privacy regulation worldwide. Will growing hostility toward Big Tech drive this Congress to act? And if they do act, what can we expect from this new agency?

 

October 7
Sheryl Garko, Orrick                                                                                        

 

Stealing signs is definitely cheating. But can it be considered theft of trade secrets? A creative lawsuit says “yes.”

 

October 6
Last Week in Texas with Michael Smith | Episode 10

 

The WSJ unnecessarily attacks Judge Gilstrap’s integrity. And the Federal Circuit declares rural America as too inconvenient for patent cases. Does the Federal Circuit even care about In re Volkswagen anymore?

October 5
Beyond the holding – A nuanced look at the Federal Circuit’s patent decisions | Episode 1                                 

Every other week, BCLT Executive Director Wayne Stacy conducts interviews with a Morrison & Foerster team member to discuss the Federal Circuit’s recent patent decisions. We all know the basic holdings. The key, however, lies in the nuances of how the Federal Circuit reached its decision. If you want to know more—with an eye toward predicting the future—we have the nuanced information for you.

This week, we interview Brian Matsui:
Opening the floodgates with SRI? Did the Federal Circuit return willfulness tactics back to 20 years ago?  And more Fintiv fallout? The Federal Circuit addresses a possible workaround to what some see as the Fintiv problem.  

September 30
Last Week in Texas with Michael Smith | Episode 9                                                                                                                                          

When should you worry that too much advocacy feeds a fee motion? And is the Federal Circuit driving venue and convenience disputes to robust, early discovery?

 

 

 

 

 

 

 

 

September 28
Jill Bronfman, Common Sense Media                                                    

Face it, few people read privacy policies. But when it comes to kids’ privacy, can we afford not to understand how their data is being used? Will badging systems like those provided by Common Sense Media get us to actually pay attention?

September 22
Last Week in Texas with Michael Smith | Episode 8

Contempt and attorney-fee motions are rarely received warmly by courts. Last week was no exception. And a 101 decision that proves pleadings matter.

September 21
Samantha Jameson and Aaron Nathan, Tensegrity

Antitrust claims are difficult to maintain in patent cases. But with the growth of large portfolios—especially through acquisition—the legal landscape could be changing. What do practitioners need to know?

September 20
Emily Bullis, Fenwick                                                                                          

Obviousness proves to be tricky for partial product designs. After the Federal Circuit’s ruling, what is the future of secondary considerations? And will the guidance on primary references make it harder to obtain design patents? 

September 15
Andrew Gesior and Elizabeth Weiswasser, Weil
 

 

 

Juno IP is another in a long line of Federal Circuit cases flipping jury decisions on genus claims. What should prosecutors and trial attorneys be thinking about to survive both the jury and the Federal Circuit?

September 15
Ken Herzinger and Eric Sibbitt, Paul Hastings

 

 

Is the SEC trying to regulate cybersecurity and innovative financial products through easy enforcements? And is a leanly-staffed SEC prepared for robust pushback from defendants?

September 15
Last Week in Texas with Michael Smith, Episode 7

Does willfulness evidence play a role in persuading the jury on infringement and validity? The Courts take a harsh view toward parties taking factual shortcuts in briefing. And a claim construction decision turns into an indefiniteness rout. 

 

September 8
Last Week in Texas with Michael Smith, Episode 6

Judge Albright followed the Federal Circuit’s venue roadmap. Will the Federal Circuit like the result?  And EDTX gives us a rare, detailed look at 251 defenses.

 

September 8
Chris Mammen, Womble

While patents and trade secrets can co-exist for the same device, the scope of the trade secret needs careful examination. Is this a case of bad facts overwhelming that careful examination?

September 3
Charles Tait Graves, Wilson Sonsini

While patents and trade secrets can co-exist for the same device, the scope of the trade secret needs careful examination. Is this a case of bad facts overwhelming that careful examination?

September 3
Last Week in Texas with Michael Smith, Episode 5

 

 

Is it fair to say that Judge Albright is privatizing the role of judicial clerk by forcing litigants to hire his former clerk as a technical advisor?  What value are litigants getting from the process? And what can litigants expect in the future?

August 24
Last Week in Texas with Michael Smith, Episode 4

 

 

Two textbook cases on how to win an injunction. And what to make of the Federal Circuit’s new “mandamus light” procedure?

August 23
Jim Brogan and Abby Parsons, King & Spalding                             

 

While patents and trade secrets can co-exist for the same device, the scope of the trade secret needs careful examination. Is this a case of bad facts overwhelming that careful examination?

August 20
Jenny Chen and Ewa Wojciechowska, McDermott Will & Emory

 

In an unusual move, the USPTO went to the Federal Register with a reminder on how to address prophetic examples. What does this guidance mean for those that rely heavily on translations?  And how will this standard work its way into District Court litigation?

August 19
Era Anagnosti and Doug Landy, White & Case                

 

Based on the recent attention from regulators, cryptocurrency is going mainstream, but who is writing the rules and to what end? And how will these regulators view the difference between cryptocurrency and stable coin? 

August 18
Last Week in Texas with Michael Smith, Episode 3

 

A pair of unusual cases gives us a roadmap for invalidity and inequitable conduct standards. Judge Albright shows us that he will hold parties to their promises. And we learn more about the boundaries of privilege waiver.

August 12
Nimalka Wickramasekera and Juan Yaquian, Winston & Strawn

Arthrex grabbed headlines, but will it actually be a useful tool for PTAB oversight? Will the USPTO Director be willing to take a hard look at PTAB decisions? And what can we expect from a new Director?

August 6
Travis Jensen, Orrick

When is winning an IPR a handicap in District Court litigation? One District Court issued—in its own words—a “counterintuitive” result allowing the patent owner to try claims invalidated by the PTAB in a FWD while prohibiting the accused infringer from challenging the validity of those same claims.

August 5
Lothar Determann, Baker McKenzie

With the fall of Privacy Shield and the Safe Harbor program, what can we expect for the future of transatlantic data transfers? Can the EU and US work out a trade deal? 

August 5
Nitika Fiorella, Fish & Richardson

Proving non-obviousness with secondary indicia is hard on the best of days. It is even harder when the PTAB creates additional hurdles. The Federal Circuit, in the Chemours case, had something to say about these new hurdles. 

August 5
Christopher Cox and Joseph Spoerl

The Federal government is joining the state attack on unfair non-compete agreements. With the FTC preparing to draft new rules limiting the use of non-compete agreements, what should companies be considering and how can they get involved in the rule-making process?  

August 4
Ted Claypoole, Womble

How far is too far when it comes to hiding the truth? Should companies be prohibited from reporting factual, public information? The differences between the EU and the US illustrate the fight for disclosure vs. the fight for privacy.

August 4
Last Week in Texas with Michael Smith, Episode 2

Big week for venue–Is Judge Albright criticizing district courts that stay cases pending IRP resolutions? And the Federal Circuit rules against common sense and judicial experience.

July 29
Mark Cohen, AsiaIP/Berkeley Law                                  

US trade representatives have been focusing their attention on getting the Chinese government to adopt criminal and administrative sanctions for IP theft.  What does this focus mean for patent infringement? And what should US companies do about it?
Related article: The Criminal Bias in U.S. Intellectual Property Diplomacy

July 28
Last Week in Texas with Michael Smith, Episode 1

Texas is home to over 40% of all patent litigation. And with that many on-going cases, important changes happen weekly. To keep you updated, Michael Smith, author of the award winning edtexweblog.com, shares both his research and his local perspective about what’s happening around the entire state.

This week, Michael walks us through bad meet-and-confer tactics, the impact that termination of the patent pilot program is having on the Northern District, and trial tactics during COVID.

July 27
Robert Merges, BCLT/Berkeley Law                               

Minerva, on its face, seems relatively straight forward–assignor estoppel survives in some cases. But how will District Courts handle mandatory fact discovery? And what can companies do to anticipate the future?

July 26
Carol Sun, Yuanda

China is poised to significantly update its current data-protection framework with a key new law: the PRC Personal Information Protection Law (“PIPL”). These new regulations will undoubtedly impact multinationals operating in the PRC. Carol Sun, from Yuanda, explains what you should start thinking about now.
Related article: Cross-Border Data Transfers Under the New PRC Data Protection Regime

July 15
Sarah Guske, Baker Botts

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Patent venue challenges often turn on a company’s operations within a particular venue. As company’s permit and even encourage remote work, this venue analysis may be changing. And with remote work growing in the Austin area, what can you anticipate happening in the Western District of Texas?