The Semi Interesting Podcast with Nathaniel Lucek and Elizabeth Morris

Standing Together Against Patent Assertion Entities: LOT Network

Patent Assertion Entities (PAEs), or patent trolls, seem to be lurking everywhere.  The semiconductor industry is not immune from their threats.  Yet the semiconductor industry also helps fuel their threat through patent transfers.  Patents from companies both big and small end up in the hands of PAES, which perpetuates the problem across industries.  Enter LOT Network, a group that helps its members gain immunity from PAE threats when a PAE acquires a patent from a member.  In this episode, Elizabeth and Nathaniel learned about how LOT Network is growing in the semiconductor space from Lew Zaretzki at LOT Network and Sam Wiley at Ocean Tomo.  Elizabeth also shared her perspective as a member of LOT Network.

AI’s Impact on Trade Secrets

There have been countless articles about how trade secrets can lose protection if they are used to train artificial intelligence.  But what about some of the other impacts that AI may have on trade secrets as AI becomes more prevalent.  For example, what happens to the value of your trade secret if AI can approximate it?  Trade secrets must derive value from their secrecy, so this means a trade secret may be less valuable, right?  The value of a trade secret can be affected by other particulars like marketing, but can that save your IP protection?  Nathaniel Lucek and Elizabeth Morris were joined by Steven Balcof to explore these and other impacts on trade secrets (with some delicious baking examples).

Hiring Challenges for New Semiconductor Fabs

Thanks to the CHIPS Act and other global pressures, there is a surge of new semiconductor fabrication plants popping up across the United States. While that’s encouraging news for the industry, it also presents some challenges for human resources departments. Aside from simply filling the available jobs, teams are also faced with numerous other challenges once the hiring bonanza at a new facility begins.
Nathaniel and Elizabeth are joined by Andy Drilling, a senior associate at Hodgson Russ LLP who focuses on labor and employment law. Andy outlines some of the obstacles human resources teams face when filling positions at new fabs, including relocation concerns, non-solicit and non-compete clauses, and familiarity with local and state laws and regulations.

Implementing a Trade Secret Policy

Regardless of the type of business or industry, employers understand that employees may encounter confidential information that should be handled carefully. That is especially true when trade secrets are involved, in which case, protecting sensitive and confidential information is of paramount importance.
 
It’s easy to label something as confidential, but in order to successfully uphold that designation, employers must have a strong policy in place. Nathaniel and Elizabeth are joined by Luisa Bostick, a labor and employment attorney and partner at Hodgson Russ LLP. She discusses some of the best practices toward implementing a strong confidentiality policy, takes a look at the role human resources plays in implementation and enforcement, and looks at the impact a lack of policy could have on potential partners or buyers of the business.

Increasing Diversity in Innovation with The Diversity Pledge

We’ve made great strides increasing diversity in innovation. This is essential to a company’s success.  Yet, some groups as still underrepresented in the intellectual property process. That’s where the Diversity Pledge comes in. The Diversity Pledge helps companies better understand their strengths and weaknesses as they try to improve their statistics through best practices. The companies also share their progress, which helps refine the best practices. For example, experience shows changing terminology from “inventor” to “innovator” will net more participation from groups that may not consider themselves as inventors or that don’t usually participate in the process. In another example, making invention disclosure submission more accessible (preferably with feedback) has a strong impact to the number of invention disclosures that are submitted.
Nathaniel and Elizabeth were joined by Suzanne Harrison, Chair of the Patent Public Advisory Committee at the USPTO, and Frances Winkler, Manager of IP Operations & Innovation Programs at Pure Storage, to explore some of the findings and learn how the Diversity Pledge was implemented at Pure Storage.

Using Australian Expedited Examination to Accelerate Your Global Patent Portfolio

Australia is a big country (a continent, in fact), but it’s position in the global semiconductor market is not nearly as large.  Even though the Australian semiconductor industry is small, nestled in the country’s unique patent examination system is a pathway to accelerate examination of your global patent portfolio.  Expedited examination in Australia is free and can be requested in many situations.  It also can result in a granted patent in less than one year from the request.  Elizabeth and Nathaniel are joined on this episode by Paul Davis and Fraser Smith from Davis IP to discuss how a positive result down under can then be used to accelerate patent examination in other jurisdictions.  They also talked about how navigate Australia’s acceptance window during patent examination and some upcoming changes to the fee structure for Australian patent applications.

What Legal Teams in the Semiconductor Industry Can Learn from Barbie

While the knockoff concerns and “packaging” are a little different, the underlying legal problems are surprisingly similar between the semiconductor and toy industries. Both have extremely complex supply chains. Knockoffs in either space can lead to costly reliability and quality problems. For both, IP is one of the most valuable assets and represents thousands of hours of development and market research. 
 
Nathaniel and Elizabeth were joined by Jordan Walbesser, Director of Legal & Business Affairs at Mattel, Inc., to learn more about how the toy industry approaches these issues. They talked about a more friendly approach to licensing, working upstream in the supply chain, RFPs, and how to protect products when patent protection isn’t appropriate (or isn’t possible). On the last point, Jordan explained that product quality and customer service can protect you when patent protection is limited – whether that cost-sensitive customer is a parent shopping for an upcoming birthday or a massive multinational company.

AI Trends: A (non-GPT) Chat with OpenAI

Companies can’t escape AI.  It’s in the news.  It’s being added to existing software products we use.  It’s being pitched to solve all sorts of problems.  AI seems like it will play a big role in R&D, legal, HR, and other fields, but how will it be implemented?  What should companies be doing during adoption and testing?  What are the risks?  Rather than ask ChatGPT, Elizabeth Morris and Nathaniel Lucek spoke with Ashley Pantuliano, Deputy General Counsel at OpenAI.  Ashley admitted that are still legal grey areas with AI usage, but these grey areas keep changing.  Tech fluency and updated policies can help avoid pitfalls in this ever-evolving area of law.

Board Members and Consultants: A Threat to Your Company’s Trade Secrets

Board members and consultants receive lots of high-value information from your company to do their job.  They also can work with more than one company, so that amount of high-value information is multiplied.  Not surprisingly, that makes them very attractive as a target for hackers and criminals.  But you must carefully balance cybersecurity protection against making large changes to their software environment because these people are difficult to find.  You certainly don’t want to turn them off, but you also don’t want them receiving trade secrets at their personal email address.  Elizabeth and Nathaniel are joined by Charlotte Edwards from Cyberwolf in this episode to discuss this balance and security options for board members and consultants.

Litigation Finance: Impact to the Semiconductor Space

Cost can be a limiting factor (or even THE limiting factor) when considering a patent infringement lawsuit. Staying under a million dollars in legal spending can be considered a victory of sorts for complex matters. That is a huge impediment to small companies and entrepreneurs. On this episode, we explore an alternative that may help level the playing field across high-tech industries: litigation funding. Nathaniel Lucek and Elizabeth Morris are joined by Justin Maleson from Longford Capital to discuss how litigation funding works and what makes an interesting case for a litigation funder.