From Alice to Axle
IP Uncertainty for the Innovation Economy
In today’s episode, we’re discussing a recent court decision that judges have said could threaten "most every invention for which a patent has ever been granted", turning the patent system into a "litigation gamble."
Dr. David Jackrel, President of Jackrel Consulting, leads a discussion into American Axle’s recent bid to have the Supreme Court overturn a lower court decision that invalidated the company’s patent in a closely followed legal battle with rival Neapco Holdings. This case offered a much anticipated opportunity to more broadly clarify patent eligibility in a time where many believe that court precedent has undermined the U.S. patent process and, in the words of retired U.S. Court of Appeals Chief Judge Paul Michel, “confused and distorted the law of eligibility”, making it an “illogical, unpredictable, chaotic” mess. Critics of these rulings and the resulting present state of IP law claim that the confusion and inconsistency has led to courts canceling many patents that should be protected. The Solicitor General has stated that problems arising from the application of Section 101 have “made it difficult for inventors, businesses, and other patent stakeholders to reliably and predictably determine what subject matter is patent eligible”.
Despite cries for help and urges to provide clarification from multiple presidential administrations, the Solicitor General, members of Congress, the Federal Circuit Court, IP bar associations, and the Patent Office, the Supreme Court refused to hear this case, leaving many inventors and industries in limbo since as a USPTO spokesperson said after the ruling, innovation "cannot thrive in uncertainty."
David and our all star patent panel discuss the case law, its implications, how present statute is being conflated and taking section 101 well beyond its gatekeeping function, and in their analysis of the American Axle patent, provide some great tips that may have changed American Axle’s present fate – and can hopefully improve your odds of success if approached intentionally at the drafting stage.
David is joined today by our always exceptional group of IP experts including:
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Topic and guest participant requests
If you’re an agent or attorney and would like to be part of the discussion or an inventor with a topic you’d like to hear discussed, please reach out.
There are problems and then there are good problems. The quality of your submissions once again blew us away! This made for an incredibly difficult selection process – so many incredible innovations, all backed by stories of personal inspiration, focused solutions, and true entrepreneurial grit. Even though the world is far from back to normal, your resolve, steadfastness, and creative spirits have not been tempered one bit. After much vigorous deliberation by our selection committee, and our desire to help as many inventors as we can, we opted to once again lift the constraints of the original plan beyond the single $5,000 award to include the addition of awards to two other exceptional finalists.
Using a weighted matrix, our team scored applications based on the following criteria:
We can't say it enough, but the recipients are a truly gifted collection of entrepreneurs who will surely do great things. We couldn’t be more thrilled about the potential to be a part of their journey!
Drumroll please! And the 2022 awards go to...
We're so very pleased to announce that the first place, full $5,000 award, goes to heARsight LLC. heARsight's mission is to empower people who are d/Deaf or hard of hearing (HOH) with innovative tools that contribute to better speech comprehension and an overall higher quality of life. Their innovation is a pair of augmented reality smart-glasses that provide subtitles to a user during their in-person conversations. The need for assistive tech like this is massive – the World Health Organization (WHO) estimates the number of people globally who suffer from hearing difficulties to be 430 million. This number is expected to grow to 2.5 billion by 2050 due to the aging global population and unsafe listening practices. This mission is a personal one for the heARsight team – the company was founded by Danny Fritz and Riley Ellingsen during their time as Master's students at Notre Dame, where Danny conceived of the idea from his lived experience watching his girlfriend, Meg, struggle with hearing difficulties in everyday settings.
Our thought bubble. When we look for ideal RISE recipients, we look closely at potential for societal good matched with a team that can execute. heARsight is just this type of impactful innovation, backed by the kind of DNA it takes to see through to market success. Assistive technology is a corner of the market that unfortunately still has too much white space and we’re happy to help them fill it, in any way we can!
We’re excited to share that we’ve selected ThermoVERSE as our first runner-up, to receive a $4,000 award. ThermoVERSE is focused on pioneering technology that will deliver cost-effective heating and cooling energy retrofits so that low-to-middle income (LMI) housing property managers can reap the benefits of an energy efficiency (or building code) upgrade without having to open up the walls. Low-to-middle income housing constitutes approximately 30% of all housing stocks in the U.S., and retrofitting buildings to accommodate new HVAC installations often comes with the surprise of required building code upgrades that can triple expected costs! The goal of ThermoVERSE's highly modular thermoregulation systems will be providing thermal comfort without the need for these costly energy retrofits.
Our thought bubble. Their innovation is both timely and necessary. Given skyrocketing energy costs, soaring home prices, and housing shortages across the country, disruption in this space is essential to maintain viability for as many LMI properties as possible.
The RISE award offers the peace of mind for IP management that ThermoVERSE has been looking for. As an early-stage, unincorporated company it is often difficult to navigate IP without financial assistance, let alone attract the interest of investors. The team at Aurora Patents seems to be cognizant of this, and is coordinating with my local economic development hub, Ann Arbor SPARK, to ensure that any additional IP needs of ThermoVERSE are taken care of.
Spirit Fire Aftermarket
We are delighted to report that we've selected Spirit Fire Aftermarket as our second runner-up, also receiving a $2,500 award. Spirit Fire developed a solar powered light that activates at night when in motion. With traditional truck cab lights, you have to drill holes and rewire the whole vehicle to connect the light wires to the car battery. With Spirit Fire's lights, you just peel and stick the lights where you want them and they turn on at night when you're driving due to special sensors detecting light and certain kinetic energy. Luciano and his team have bootstrapped the entire mission, right down to the creation of the custom tool required to make the lights.
Our thought bubble. We love gritty entrepreneurs who roll up their sleeves and find ways to innovate. Spirit Fire's story is a great example of finding a real market need, self-bootstrapping, and doing a practical thing well.
We're firmly committed to the RISE award being an annual fixture. We love helping entrepreneurs. It's what gets us out of bed in the morning. Getting to help even more in an epically difficult time has proved to be exceptionally rewarding for us and we're certain it will prove to be such for the recipients. Please stay tuned for updates on these great companies. And if you haven't already, check out our recent podcast episode featuring a great sit down with three very innovative, up-and-coming inventors – all past recipients of the RISE award.
Join me in SF or Online
We're excited to share that we've been invited to host an IP workshop at this year's InnovatorMD World Congress. This is the largest physician innovation event and provides access to top-tier health innovation education, innovation ecosystem networking, and all the CME you need for the year. You can see the full agenda here.
Time and location: Aug 17-20, both online and SF Bay Area
About the Workshop
Top 3 Inventor Mistakes and How to Avoid Them
A critical rescue line to future self
The patent world is full of trap doors that lie waiting for unsuspecting inventors. Some of these mistakes are reversible with limitations. Others have no undo button. In this talk, we will cover the most common patenting mistakes made by inventors and startups. We’ll highlight best practices for not making the mistakes in the first place and explore available remedial options. Topics include public disclosure mishaps, prior art searching consequences, and ownership quagmires.
Time and location: Thursday, August 18, 2022 | 2:00 PM - 3:30 PM PT | Live via Zoom and in-person
For a 50% discount, use code SPEAKERREF when checking out.
InnovatorMD's mission is to globally advance the work of physician innovators and entrepreneurs delivering solutions that revolutionize patient care. They are a group of physician innovators from various backgrounds with a single vision - to spread physician innovation to the rest of the world and to have a positive impact on patient outcomes and physician wellness while moving the healthcare industry forward.
We're excited to announce that we're welcoming Ty F. Davis to the growing Aurora family! Ty joins us this summer, starting his role as a Patent Strategy Associate. Ty's blend of hands-on, real world startup experience as an engineer and IP practitioner, combined with his kind, laid back, and deeply empathetic personality make him a perfect fit for Aurora and her clients. He will actively be working in the areas of patent portfolio management and educational content development.
Mechanical and Energy Expertise. Ty holds a Bachelor of Science in Mechanical Engineering from The New Mexico Institute of Mining and Technology, where he also designed systems for the rocket sled track where the land-based speed record for a vehicle was set (Mach 8.5!). Throughout his career, Ty has worked as a product development engineer, managing member, and patent agent in energy sector startups. This experience included electro-mechanical automation development, firmware development, and remote telemetry solutions.
Inventor First. In addition to founding his own start-up to develop methane-emission reducing technologies, as an inventor, Ty has two issued patents and is actively pursuing several more. This experience, combined with his business and IP acumen, allows him to communicate with inventors with a level of precision and empathy like few practitioners can.
Ashley Sloat, Ph.D.
Startups have a unique set of patent strategy needs - so let this blog be a resource to you as you embark on your patent strategy journey.