Posts Tagged: "manny schecter"

Intellectual property (IP) promotes innovation. The limited right to exclude others from copying patented inventions, copyrighted original works of authorship, and trademarked brands and logos encourages innovators to invest their time and money. IP appeals to our sense of fairness by discouraging or preventing counterfeiting, passing off, and other harmful takings of the fruits of investments in research, development, creativity and innovation, and is leveraged by entrepreneurs seeking start-up capital. Unfortunately, the general public lacks a true understanding of how IP fuels our innovation economy. Today, IP practitioners are bombarded with so many free newsletters about IP that we simply cannot read them all—it is no longer a function of getting access to information, but which sources of information are the best use of one’s time. The same is true for the general public, which is increasingly exposed to references about IP in social and news media, advertising, and other public channels. Unfortunately, those references to IP are not always accurate and often require explanation.

This marks the final installment in my four-part interview with IBM’s Vice President and Assistant General Counsel Mark Ringes and Chief Patent Counsel Manny Schecter. I found our conversation fascinating and want to thank them both again for their time and insight. Below, we conclude with an in-depth discussion on how the U.S. patent system is affecting startups and the state of enforceability following Director Iancu’s Section 101 Guidance.

In Part I of my recent interview with IBM, I spoke with Mark Ringes, IBM Vice President and Assistant General Counsel, and Manny Schecter, Chief Patent Counsel, about the company’s commitment to innovation and approach to patenting. Our conversation took place at the IBM offices on Madison Avenue in New York City and touched on topics ranging from Section 101 to startups to the USPTO. Below, the conversation continues with an in-depth discussion of Section 101 law, software patents, and how the Federal Circuit and Supreme Court have contributed to the situation in which we find ourselves today.

As IBM was preparing to announce yet another milestone achievement, this year receiving 9,100 U.S. patents in 2018, I had the opportunity to sit down for an on the record conversation with Mark Ringes, Vice President and Assistant General Counsel for IBM, and Manny Schecter, Chief Patent Counsel for IBM. Our conversation was wide-ranging, but what appears below specifically relates to IBM’s innovation leadership and quest to patent as much of its technology and innovation as possible. We discuss how IBM’s commitment to innovation and how the company is unafraid of pursuing the hardest, riskiest innovations because those will be the most valuable innovations in the future. Of course, even IBM is constrained with a budget, and must report to shareholders, so the philosophy is to obtain patents in a variety of areas and allow the research, technology and market realities dictate where future resources, and company efforts, are placed.

For my wishes, I’ll make three. First, as I did last year and the year before, I again continue to wish for patent eligibility reform in Congress that would overrule Mayo, Myriad and Alice. My second wish is for Congress to amend the statutes that created post grant challenges and provide for a real presumption of validity that requires invalidity to be proven by clear and convincing evidence. Finally, as I did last year, I again hope the Federal Circuit dramatically significantly decreases its use of Rule 36 affirmances, and specifically stops using this docket management tool when cases are appealed from the PTAB and also with respect to appeals dealing with 101 patent eligibility issues.

While the goal of developing a US innovation policy bolstered by strong IP protections was the focus of the event it was clear that competition with China, who clearly has set their own innovation agenda on a country-wide level, created a clear sense of urgency in the discussions… Generally speaking, the panelists felt that the actions of the last few years had inflicted serious damage on the reliability of patent rights in the US and created substantial doubt about what those rights were worth economically with the changes. The panel was overwhelmingly in favor of making significant changes to the current environment especially with regard to the proceeding at the PTAB.

On May 9th I attended the International IP Commercialization Council (IIPCC) USA Chapter second annual program at the United States Capitol.  The topic of the event was Meeting the Threat to America’s Economic Future: US IP & Innovation Policy where representatives from IBM, Qualcomm, Personalized Media Communications, the Cleveland Clinic and the University of Michigan, as well as a Who’s Who of IP Leaders and policymakers, shared their real-world perspectives on the state of the US Patent System, and the effects it has and will have on the economy. 

For my wishes, I’ll make four. First, as I did last year, I again continue to wish for patent eligibility reform in Congress that would overrule Mayo, Myriad and Alice.With there major industry organizations coming out in 2017 to support legislative reform perhaps this wish will eventually come true, although as of now it seems to be a long shot in 2018. Second, I hope the Federal Circuit dramatically decreases its use of Rule 36 affirmances, and specifically stops using this docket management tool when cases are appealed from the PTAB and also with respect to appeals dealing with 101 patent eligibility issues. Third, I wish for the AIA post grant procedures to be declared unconstitutional, which with the Supreme Court set to decide Oil States in 2018 is at least plausible. Finally, assuming the Supreme Court does not do away with post grant challenges, I wish for the new PTO Director to dramatically reform the post grant process in ways that remove the systemic biases that have made the proceedings hopelessly one-sided against patent owners.

Typically, the reform debate over the U.S. patent system features smaller players, but America’s largest tech firms also have issues with the patent system, which go way beyond any single company’s ability to sustain success… Leading off the panel’s remarks was Manny Schecter, chief patent counsel for IBM, who noted that innovation is a risk-bearing operation. “The likelihood that you ever make an investment [into research & development] is based on the return you anticipate on getting in that investment,” Schecter said. Any reduction to the anticipated return caused by uncertainty in IP policy discourages R&D investment. Schecter added that one of the ways in which intellectual property promotes innovation is by preventing others from taking innovations which are not their own. “We want to minimize or control uncertainty in the IP space if we want to maintain an IP surplus and promote the viability of the economy,” he said.

“The results from the Patent Trial and Appeal Board reflect the procedures it applies, and in my judgment the procedures are wildly off base,” Judge Michel explained… “We’ve had PTAB final results… whatever the intentions were we don’t have to speculate… we have ample evidence of how it worked in practice. We know it doesn’t work satisfactorily.” *** “I don’t think things are really getting much better,” Kappos said. “We are in what I refer to as the leaky life raft.” When you are stranded and a leaky life raft comes along it looks great, but it doesn’t change the fact that it is still a leaky life raft. “The best you can say about 101 is that it has stabilized in a terrible space.”

Schecter joins other CIPU directors, Marshall Phelps (retired head of IP Business and Strategy at Microsoft and IBM), Brian Hinman (Chief IP Officer at Philips), Keith Bergelt (Open Invention Network CEO) and Harry Gwinnell (former head of IP at Cargill and founding President of the IPO Education Foundation).

First, I continue to wish for patent eligibility reform in Congress that would overrule Mayo, Myriad and Alice, although I am mindful of both how naive that sounds and dangerous it could become given competing interests at play. Of course, there is also a very real possibility any statutory reform would simply be ignored by the Supreme Court anyway, as they cling to the judicially created exceptions to patent eligibility that find no support anywhere in the statute or Constitution. Second, I am again also going to wish for meaningful copyright reforms and/or real Internet industry cooperation that recognizes the important rights of content creators, both large and small. It is too easy to steal original content with impunity and that threatens content creators large and small. Finally, while I would like to wish for an end to post grant procedures, I’ll remain content to more modestly wish for a new PTO Director unafraid to reform the post grant process in ways that remove the systemic biases that make the proceedings hopelessly one-sided against patent owners.

At exactly 11:42am on September 16, 2011, President Barak Obama signed the America Invents Act into law. As President Obama put his pen down he said: “All right guys, congratulations, the bill is signed.” It was at this precise moment that U.S. patent laws dramatically changed forever. With this in mind, over the next two weeks we will be examining the AIA in great detail in a special AIA 5th Anniversary series. I’ve invited a number of guests to comment, discuss and/or editorialize about the AIA. Below is a sneak peak of some of the contributions already received. As articles are published this preview article will be updated with links to the entire series.

Showing a bowl of spaghetti on one of his first few PowerPoint slides set the tone. The law as it applies to software patent eligibility is a tangled mess. “The Supreme Court has continually taken cases in this area and rather than clarify they have continued to hang on,” Schecter explained referencing the fact that the Supreme Court seems committed to the belief that their 101 jurisprudence is consistent and reconcilable. Of course, that is not the case. “There are too many cases that conflict with each other.” He is right. Schecter would go on to say that we are at a point where a legislative fix seems necessary.