BP/G Radio Intellectual Property Podcast

Guest:  Katie Wilhoit, Oppenheimer Wolff & Donnelly

We loved this interview.  Katie is a good friend and former colleague of G, has done IP litigation in the past, worked at Travelers Insurance as a claims attorney (in their IP division!) and now focuses on insurance coverage counseling and litigation.  She loves insurance!  So who better to chat with on the strange intersection of intellectual property and insurance.  A myth she busted - there is no insurance coverage for IP litigation.  Wrong - there can be.  You gotta read your policy.  And you have to be creative and persistent.

We talk about the types of insurance that might cover IP, what to do when you have a possible claim, and strategies for working with insurers.  We also briefly discuss a recent case from the Minnesota Supreme Court (General Casualty Co. of WI v. Hobbit Travel)  that held that trademark infringement claims trigger ”advertising injury” provisions of insurance policies (good news for those sued for trademark infringement).  Give a listen.  All comments/questions are welcome.

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Guest: Abel de la Rosa, Ph.D - Pharmasset, Inc.

The headlines tell it all: Pfizer Buys Wyeth for $68B; Roche Acquires Genentech for $46.8B. Big Pharma companies are buying each other and consolidating. What will be the future of smaller pharma and biotech companies? How will innovative start-up ventures survive? Where will new research and development come from? BP-G Radio explores the answers to these questions and more with our guest, Abel De La Rosa, Ph.D. In this episode, Dr. De La Rosa brings his vast experience and knowledge of business, science and intellectual property to discuss some of the Big Pharma deals and how they will affect the future of the industry. He also discusses the plight of the small innovator companies and how they will fare in these difficult economic times.

Dr. De La Rosa is currently Senior Vice President, Business Development & Scientific Affairs at Pharmasset, Inc. (NASDAQ: VRUS) and has been with them since 2002. Our guest has held both scientific and business positions at several pharma and biotech companies. Most notably, while at Visible Genetics Inc. he was responsible for the development, transfer and improvement of products, including TRUGENE HIV-1 v1.0 Genotyping Test(r) and other sequencing-based assays for HCV and HBV. He is an inventor and author on several U.S. patents and publications relating to molecular diagnostic methods and techniques for infectious diseases and cancer.

And he loves what he does (give a listen - we need this kind of enthusiasm).

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A few shows ago, we spoke with popular mystery writer David Fulmer about publishing deals – good ones, bad ones and how to tell the difference. But of course, publishing deals are not something you typically you learn about in your advanced writing seminar in college. There you learn your craft. How to peddle your craft (assuming you have craft) is a different proposition altogether. To sell what you’ve got, you need help – an agent. Preferably one from New York (where all the big publishing houses are). And really, you should get one from Midtown Manhattan.

Of course, agents are like publishing deals – there are good ones and bad ones. Some who will pound the pavement and work the phone to get you a deal. And others who will sign you up – and do nothing. Or, even worse, charge you to read your book and still do nothing (David says: never pay anyone to read your book). You need an agent who is ethical, industrious and focused on your subject matter (children’s, mysteries, travel, etc.) if you want results. So get personal referrals, do meticulous research and interview anyone you are thinking about working with in depth. Oh yeah, the agent should be connected. As in they go to the same bars and cafes the editors go to. Do you know where they go? Better get an agent.

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Guests: Prof. Tom Cotter of the University of Minnesota Law School; Prof. Carl Moy of William Mitchell College of Law

When is a method of doing something patentable? Specifically, assuming a process is new, useful and non-obvious, what substantive test controls whether the patent law should protect a given process under 35 U.S.C. §101? Courts have struggled to formulate an all purpose test – one that would accommodate the range of technical innovation. Perhaps the inquiry was simpler in times when basic mechanical, electrical and chemical engineering questions were being resolved (such as the vulcanization of rubber – see Goodyear’s method patent #3633). There are few, if any, philosophical disputes that the patent system was intended to, and does, cover such inventive processes. The U.S. economy move from a manufacturing base to an information base posed new challenges. Would the system evolve to protect new information and business method innovations - such as a tax refund system?? Sometimes, yes – see H & R Block’s U.S. Pat. No. 7,177,829.

In determining whether a given process is patentable, courts have applied various tests, including: (a) “useful, concrete and tangible result” test of State Street Bank (Fed. Cir.’s original effort to resolve business method problem child); (b) Freeman-Walter-Abele test (CCPA jurisprudence); (c) machine-or-transformation (S. Ct. in Benson); and (d) technological arts test (proposed by some Bilski amici). In its en banc Bilski decision, the Federal Circuit has now provided its official position on the matter: the Benson machine-or-transformation test governs exclusively and all the other tests are thrown under the bus (Prof. Moy’s phraseology – see below). While the Court was careful to state that there are no bright-line exclusions of business method and software subject matter, the Court also noted that these arts must meet the machine-or-transformation test. Most agree that business method patent practice will be a little trickier going forward (perhaps the Court’s intent?).

So now what? Of all the tests, why this one? Further, why use the cleaver of §101 to tighten patent eligibility when the scalpels of §§102, 103 and 112 do just fine? Is this the death of business method and software patents (as some have suggested)? Have we now in fact closed the debate on the patentability of business methods!?! (slight chuckle). Or will it all be resolved with careful claim drafting?

To help part the waters and clear the clouds on this evolving law, we turned to the academy - Prof. Tom Cotter of the University of Minnesota and Prof. Carl Moy of William Mitchell College of Law (each with some pointedly distinct views). We do a quick-fire dissection of the decision, take a quick romp of significant caselaw back to 1850 (when Goodyear was working on rubber), and ponder impact going forward. Joining us as well for a bit of pontification are a few colleagues with particular interest in Bilski (Denise Kettelberger; Rob Kalinsky; Ben Tramm; Al Vredeveld; Eric Chad). Stay tuned for more developments (review by the Supremes?).

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