Bernard Knight, known throughout the industry simply as “Bernie,” was an important part of “Team Kappos” during what many are already referring to as the “Golden Years” of the United States Patent and Trademark Office. Knight has a resume full of government service, rising through the ranks to become Acting General Counsel of the Treasury Department, and then General Counsel of the United States Patent and Trademark Office during the Kappos era. That means that he was one of core group of leaders tasked with creating and then implementing the rules of practice necessitated by passage of the America Invents Act (AIA).
In September 2013, Knight left the United States Patent and Trademark Office. I bumped into him shortly thereafter and he agreed to go back on the record with me for an interview, which took place on December 16, 2013. To read my first interview with Knight please see Exclusive Interview: USPTO Attorneys Bernie Knight & Ray Chen.
Knight is now a partner in the Washington, DC, offices of McDermott, Will & Emory, where he focuses his practice on complex patent litigation matters. Knight advises clients on intellectual property cases before the United States Supreme Court, as well as engaging in oversight on patent and trademark cases before the Court of Appeals for the Federal Circuit and the district courts.
There was nothing off the table, so to speak, in this interview. We discuss how and why he choose McDermott, as well as what it was like working for David Kappos and working with Judge Ray Chen when he was Solicitor at the USPTO. We also discuss the future of the Patent Office, the appointment of Michelle Lee to be Deputy Director of the USPTO, substantively what the USPTO was trying to do with respect to post grant procedures, the new ethical rules applicable to Patent Attorneys and Agents, and a variety of other issues.
On July 1, 2013, I spoke on the record with Ray Niro, who is one of the most well known patent litigators in the United States. Throughout his career he has been a champion for the inventor who was facing long odds due to widespread patent infringement. So loathed was Niro, he was the one who was originally referred to as the “patent troll” by the media due to his representing innovators against giant technology companies. Of course, if you are going to call Ray Niro a patent troll you might want to also point out that he is extraordinarily successful, which means he has been very good at proving that large corporations have infringed valid patents, sometimes on fundamentally important innovations.
I have been writing about patent infringement litigation abuses for quite a while, and Chief Judge Rader of the Federal Circuit has this spring in a variety of fora openly discussed the problems he sees. But at the beginning of June 2013 the anti was raised significantly in the ongoing discussion of litigation abuses in the patent arena. The White House chimed in, which you might be inclined to think would be an important development. Sadly the President getting involved in the discussion had more to do with grandstanding and perhaps political payback to investors in his two Presidential campaigns.
On July 1, 2013, we did speak on the record again. What follows is that interview with Ray Niro, the man for whom the media coined the term “patent troll.” Ray unapologetically, and unsurprisingly, comes out in defense of American inventors and those who engage in the hard work that is research and development of new and wonderful innovations. He pulls no punches and in part 1 of our interview he calls out Cisco, a strong critic of non-practicing entities, as a hypocrite for doing the very thing that they rail against.
On May 31, 2013, I spoke with Glen Duff, a client of mine who is the inventor of an exceptionally easy to use wake board. In part 1 of our interview, which kicked off our Fun in the Sun Summer 2013 series, we discussed how the patented Zup™ Boardis the best selling product that Overton’s has ever seen in their 37 year history, as well as the importance of an inventor’s perseverance, bringing on industry experts to advise and engaging in a project you are passionate about.
In part 2, which is the final segment, Glen talks about how the patented Zup™ wake board is being made in America, which at a time when so many larger operations are moving offshore and outsourcing jobs is really quite refreshing. While there is a certain allure to selling products made in America, Glen explains that there is also a very real business reason as well. It is quite difficult to reliably enforce high quality standards when manufacturing is overseas.
We also discuss how Glen views himself as his competition as he continues to engage in research and development for improvements and future products, and how great it is to be able to put on a pair of shorts and jump on a boat as part of R&D efforts. I also ask him if he could go back in time to give himself advise based on what he knows now, what advise would he give? This leads us into an interesting discussion relating to the relative merits of licensing versus manufacturing and distributing yourself.
The Zup™ is perhaps the most cool and innovative wake board you have ever seen. There are a number of other patent applications pending, trademark applications pending and ongoing research and development for future products. The Zup™ is special because literally anyone can ride the board and participate in the fun. I knew that Glen was onto something when he showed me a video of an early prototype in use years ago. There was a giant fellow — 6’8″ and easily 290 pounds — who managed to get up on the board with ease. I thought to myself, “that shouldn’t happen!” Being a big guy myself I understand how difficult, if not nearly impossible, it is to get up on a traditional wake board. In that same video I also saw an elderly grandmother get up on the board. Neither size nor upper body strength mattered. It was then I knew Glen had something special.
Glen will easily be one of my most successful clients ever when all is said and done and we are telling our stories at our retirement parties. An inventor on several patents prior to his entry into the wake board market, Glen has simply done everything right along the way. He has listened to advice and has surrounded himself with an all-star advisory group of industry insiders who are very optimistic about the likely future success. Thus, this is a story of growing success, but also one of perseverance and commitment. It illustrates the importance of moving forward with a patent position to secure rights that can be build upon, and how critical it is to surround yourself with people knowledgeable about the industry. As Glen explains below in our interview he managed to connect with several key industry leaders who helped open doors for the Zup™ and who are on his advisory board.
On May 10, 2013, I had a conversation with patent litigator Rachael Lamkin, who is known to many on Twitter as @Rachael_IP.
In part 1 of the interview we discussed the definition of a patent troll, a pro bono program to help those facing patent troll lawsuits and more. We left off discussing how defendants really need to make patent trolls spend money rather than cave. We pick up our conversation discussing woefully inadequate patent infringement complaints.
QUINN: I agree and I think that Judge Rader is trying to do something to address this problem. I asked him at the AUTM Conference, you know, we’ve got this problem with these complaints that are just — they’re terrible. I mean, maybe they satisfy the Federal rules of procedure.
Rachael Lamkin is a patent litigator who recently became Associate General Counsel at Blue Ocean Enterprises, Inc. I have known Rachael virtually for several years, communicating with her both via e-mail and via Twitter (she is @Rachael_IP on Twitter).
Occasionally I have tried to convince her to go on the record with me so we could have a more in depth conversation for publication. After an exchange about six weeks ago relating to patent trolls and the definition of a patent troll I proposed the idea of an on the record conversation about patent trolls, which Rachael accepted. On May 10, 2013, we had the following conversation.
During our conversation we discussed our various definitions for a patent troll, the difficulty of coordinating a joint defense in a patent infringement case, potential solutions and a program that she is involved with called Troll Bono, which is a pro-bono effort to assist companies and individuals who are facing troll lawsuits.
Steve Kunin is the head of Oblon Spivak’s Post Grant Patent Proceedings practice group, and is also on the firm’s Management Committee. He is also a friend. For several years now I’ve been getting together with Steve for lunch periodically to talk about a variety of patent issues. I have long wished that the tape recorder were running. Like me, he loves talking patents, law and policy. I floated the idea of an on the record conversation and he agreed. Between our individual travel schedules we managed to meet up with my iPhone recorder running on May 6, 2013, in a conference room at Oblon Spivak in Alexandria, Virginia.
Kunin is not your typical attorney and brings a unique perspective to virtually any conversation on patents. For over three decades he was a career employee of the United States Patent and Trademark Office, rising to the level of Deputy Commissioner for Patent Examination Policy, which is a particularly important position within the USPTO, and one that put him on the front lines of patent examination policy for a decade.
As we ate lunch after the interview Kunin told me that he thought I might ask about the difference between working for government and private practice and what lessons he has learned in each role. Sadly, that is an excellent line of questioning that I didn’t consider. We did, however, talk about numerous, hard-hitting issues ranging from secret prior art, to the estoppel provisions associated with post grant procedures, to the Economic Espionage Act, to Metallizing Engineering, to the Supreme Court, the Washington Nationals, upcoming summer blockbuster movies and much more. We also discussed the algorithm cases at the Federal Circuit and whether the patent system is really broken, but our interview was several days before the Federal Circuit’s “decision” in CLS Bank v. Alice Corp.