Startups and Advocates Keep a Hopeful Eye on Biden’s Pick to Run the US Patent Office
Sam primarily covers entertainment and media for dot.LA. Previously he was Marjorie Deane Fellow at The Economist, where he wrote for the business and finance sections of the print edition. He has also worked at the XPRIZE Foundation, U.S. Government Accountability Office, KCRW, and MLB Advanced Media (now Disney Streaming Services). He holds an MBA from UCLA Anderson, an MPP from UCLA Luskin and a BA in History from University of Michigan. Email him at samblake@dot.LA and find him on Twitter @hisamblake
After seven years trying to make it as an entrepreneur, Josh Malone's dreams and savings were running dry. With a growing family, urgency was mounting for his return to the safety and stability of corporate life. Desperate for a final crack, he asked his wife for patience and built one last prototype – a patented device that could quickly fill and tie multiple water balloons at once, which he called "Bunch O Balloons" – and started a Kickstarter campaign.
Malone raised nearly $1 million from 21,000 backers, and was invited on the national TV circuit, including a feature on the "Today Show."
"That's when it blew up," he recalled.
Malone struck a big deal with Zuru, a Los Angeles-based toy company, to exclusively license his patent, and his invention soon lined retail shelves across the country.
But he quickly learned that his patent, which was supposed to grant him legal recourse to prevent others from exploiting his invention for 20 years, hadn't deterred copycats, and that his ability to stop them wasn't as ironclad as he'd expected.
Patents can be the lifeblood of a startup and their immediate future will be shaped by the next head of the U.S. Patent and Trade Office (USPTO), which receives over 600,000 patent applications a year and sets the tone for how the executive branch enforces patent rights. Once small-time players like Google and Intel used patents to shoot ahead in their industries, along with many other founders who've leveraged patents to help raise money and protect investors. If the company fails, they may be able to sell the patents off to others.
Over the last 15 or so years, however, a combination of court decisions, regulatory changes and new legislation has weakened U.S. patent protection, leaving smaller patent owners few ways to prevent others from exploiting their inventions, according to USC law professor Jonathan Barnett.
Since 2006, the trend "has tended to favor the interests of larger firms and firms that use system or platform business models, like Google or Facebook, and disfavor entrepreneurs and firms that focus on innovation but don't necessarily convert those innovations into products for end-users, like Qualcomm, UCLA or BioNTech," said Barnett.
Startups often have a tougher time taking on established companies when patent rights are weakened, Barnett found after examining 116 years of U.S. patent and antitrust history for his latest book.
Patents can help startups raise money and attract partners and open doors to new markets. Established companies, on the other hand, can more easily self-finance commercialization of their innovations, said Bridget Smith, an L.A.-based patent lawyer who recently filed a brief to the U.S. Supreme Court arguing for stronger patent rights. Weaker patent rights often help incumbents fend off new competitors trying to grab a toehold in their market, she said.
As the Biden administration takes office, Smith, Malone and others concerned with how the government wields its patent policies are watching closely to see who will become the new leader of the USPTO.
"There are big debates about who the patent system benefits," said Barnett. Opponents to patent protection argue that patents slow innovation or increase prices, he said, but "empirical data is either uncertain or, in some cases, refutes these claims."
While changes under the outgoing USPTO director have slowly started to tilt the scales back toward stronger patent protection, Barnett said, "it will be interesting to see if the new administration reverts to the policies under the Obama administration, which was more patent-skeptical."
Who Will Be the Next USPTO Director?
It is too early to tell who Biden will pick to lead the USPTO. He has not publicly indicated who his choice will be, and the people he has surrounded himself with so far don't provide many clues about which way his appointee could lean.
Gina Raimundo is a former venture capitalist and current governor of Rhode Island.
On one hand, Gina Raimundo, a former venture capitalist and current governor of Rhode Island, is awaiting Senate confirmation to lead the Commerce Department, under which the USPTO falls. Based on her past career, she is "familiar" with IP and startups, said former USPTO Director David Kappos, suggesting that Raimundo may lean toward an inventor- and startup-friendly patent regime.
There are also indications, however, that Biden could take a harder line on patent-protection. He appointed UC Santa Clara law professor and former Obama IP-advisor Colleen Chien to his transition team, for instance. Chien has previously opposed the STRONGER Patents Act, legislation carried by Delaware Senator Chris Coons (D), who is now chairman of the Senate Subcommittee on Intellectual Property.
Traditionally, the appointment and confirmation of the USPTO director occurs after the secretary of commerce is confirmed. Should Raimundo's appointment go forward, Kappos said the new USPTO director appointee could enter the extensive vetting process by April and assume the position a few months later. At that point, the director will start to implement the direction that the Biden administration wants to take U.S. patent rights.
The Patent-Protection Pendulum
One key issue that the new director will have to weigh in on, and which has had a big influence on the recent push toward weaker patent protection, is how to subdue "patent trolls" — entities that accumulate patents with the sole purpose of suing companies for infringement. In many of those cases, companies settle out-of-court to avoid prolonged and expensive legal battles.
Ten years ago, in response to what he and others saw as "rampant abuse of the system" by patent trolls, Kappos oversaw the establishment of a new entity at the USPTO empowered to retrospectively invalidate patents. The Patent Trial and Appeal Board (PTAB) was hailed by proponents as an efficient and easy process to clean up the patent system, but critics say it went too far.
Particularly under Kappos' successor, former Google executive Michelle Lee, the PTAB "became a killing field for patents," said Brian Pomper, executive director of the Innovation Alliance, a pro-patent trade group that represents companies including Qualcomm and Dolby Labs.
Pomper said a recent series of rulings by the Supreme Court — motivated in part by a fear of patent trolls — has injected an unwelcome uncertainty over what is and isn't eligible for a patent, a sentiment echoed by multiple sources and shared by numerous current and former judges, appointees and legislators.
Smith and Pomper said the upshot of this uncertainty is weaker patent-rights and lower patent values.
Some politicians have taken note. Senator Coons, for example, has said that "U.S. patent law discourages innovation in some of the most critical areas of technology, including artificial intelligence, medical diagnostics and personalized medicine."
Of Balloons and Slingshots
Much of the support for the weakening of patent-protection has been backed by big tech lobbying at the expense of smaller, would-be competitors, according to critics like intellectual property lawyer Robert Taylor.
"In the matchup between David and Goliath, Goliath didn't need a slingshot; he only had to take David's away from him," said Taylor. "That's what large tech companies are doing with respect to small companies' patents."
It was against this backdrop that Malone's patent litigation battle unfolded.
Not long after Bunch O Balloons had arrived on retail shelves nationwide, TeleBrands – a large firm that invented the "As Seen On TV" method of selling products through pitchmen like Billy Mays – began selling a knock-off product.
From 2015 to 2019, Zuru, the L.A.-based company that had licensed Bunch O Balloons, pumped almost $100,000 a week into litigation and attorney and expert fees to sue TeleBrands, ultimately spending "$20 million in legal costs fighting over a stupid water balloon intellectual property," Malone said.
Ultimately, they prevailed. TeleBrands and several retailers were ordered to pay Malone and Zuru $31 million for infringing on their patent. They were also forced to permanently stop selling the knock-off product. Bunch O Balloons has now done nearly half a billion dollars in total sales.
Malone, who has since gone on to work as a full-time volunteer for patent-protection advocacy group US Inventor, says he is a rare exception. If not for his deep-pocketed backer, he said, he would have been another victim of an intellectual property system that he sees as rigged against the little guy.
"The average patent trial is about $450,000," said Smith. "That's nothing to FAANG companies, but that could eat up a startup's entire funding."
Adding more certainty over patent-eligibility and mitigating the power of the PTAB to invalidate patents are steps that the outgoing USPTO director, Andrei Iancu, took to strengthen patent protection. These decisions, Smith said, helped provide confidence to investors and lawyers working on contingency that it's worth putting up the fight against infringers.
Such changes were never codified into law, however, and the next director could take a new approach.
"There really is a chance to make a break (from weaker patent-protection), or do business as usual," Smith said.
Malone hopes for a course correction from what he and others view as an overreaction. "The problem with the efforts to stop the so-called patent troll is that they have thrown the baby out with the bathwater," he said.
The new USPTO director will inherit that legacy – and the power to decide what to do about it.
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Though Silicon Valley is still very much the capital of venture capital, Los Angeles is home to plenty of VCs who have made their mark – investing in successful startups early and reaping colossal returns for their limited partners.
Who stands out? We thought there may be no better judge than their peers, so we asked 28 of L.A.'s top VCs who impresses them the most.
Mark Mullen, Bonfire Ventures<p>Mark Mullen is a founding partner of Bonfire Ventures. He is also founder and the largest investor in Mull Capital and Double M Partners, LP I and II. A common theme in these funds is a focus on business-to-business media and communications infrastructures.</p><p>In the past, Mullen has served as the chief operating officer at the city of Los Angeles' Economic Office and a senior advisor to former Mayor Villaraigosa, overseeing several of the city's assets including Los Angeles International Airport and the Los Angeles Convention Center. Prior to that, he was a partner at Daniels & Associates, a senior banker when the firm sold to RBC Capital Markets in 2007.</p>
Dana Settle, Greycroft<p>Dana Settle is a founding partner of Greycroft, heading the West Coast office in Los Angeles. She currently manages the firm's stakes in Anine Bing, AppAnnie, Bird, Clique, Comparably, Goop, Happiest Baby, Seed, Thrive Market, Versed and WideOrbit, and is known for backing female-founded companies.</p><p>"The real change takes place when female founders build bigger, independent companies, like Stitchfix, TheRealReal," she said this time last year in <a href="https://www.businessinsider.com/greycrofts-dana-settle-on-closing-funding-gap-for-female-founders-2019-12" target="_blank" rel="noopener noreferrer">an interview with Business Insider</a>. "They're creating more wealth across their cap tables and the cap tables tend to be more diverse, so that gives more people opportunity to become an angel investor." Prior to founding Greycroft, she was a venture capitalist and startup advisor in the Bay Area.</p>
Erik Rannala, Mucker Capital<p>Erik Rannala is a founding partner at Mucker Capital, which he created with William Hsu in 2011. Before founding Mucker, Rannala was vice president of global product strategy and development at TripAdvisor and a group manager at eBay, overseeing its premium features business.</p><p>"As an investor, I root for startups. It pains me to see great teams and ideas collapse under the pressure that sometimes follows fundraising. If you've raised money and you're not sure what comes next, that's fine – I don't always know either," Rannala wrote in <a href="https://www.mucker.com/more-funding-wont-magically-fix-your-startup/" target="_blank" rel="noopener noreferrer">a blog post for Mucker</a>. </p><p>Mucker has a portfolio of 61 companies, including Los Angeles-based Honey and Santa Monica-based HMBradley.</p>
William Hsu, Mucker Capital<p>William Hsu is a founding partner at the Santa Monica-based fund Mucker Capital. He started his career as a founder, creating BuildPoint, a provider of workflow management solutions for the commercial construction industry not long after graduating from Stanford. </p> <p><a href="https://www.fastcompany.com/3048173/the-unexpected-and-hard-earned-lessons-from-a-dot-com-flame-out" target="_blank" rel="noopener noreferrer">In an interview with Fast Company</a>, he shared what he learned in the years following, as he led product teams at eBay, Green Dot and Spot Runner, eventually becoming the SVP and Chief Product Officer of At&T Interactive: "Building a company is about hiring correctly, adhering to a timeline, and rigorously valuing opportunity. It's turning something from inspiration and creative movement into process and rigor."</p> <p>These are the values he looks for in founders in addition to creativity. "I like to see the possibility of each and every idea, and being imaginative makes me a passionate investor."</p>
Jim Andelman, Bonfire Ventures<p>Jim Andelman is a founding partner of Bonfire Ventures, a fund that focuses on seed rounds for business software founders. Andelman has been in venture capital for 20 years, previously founding Rincon Venture Partners and leading software investing at Broadview Capital Partners.<br><br>He's no stranger to enterprise software — he also was a member of the Technology Investment Banking Group at Alex. Brown & Sons and worked at Symmetrix, a consulting firm focusing on technology application for businesses.</p> <p><a href="https://dot.la/la-venture-podcast-jim-andelman-of-bonfire-ventures-2648143780.html" target="_self">In a podcast with LA Venture's Minnie Ingersoll</a> earlier this year, he spoke on the hesitations people have about choosing to start a company.</p>"It's two very different things: Should I coach someone to be a VC or should I coach someone to enter the startup ecosystem? On the latter question, my answer is 'hell yeah!'"
Josh Diamond, Walkabout Ventures<p>Josh Diamond founded Walkabout Ventures, a seed fund that primarily focuses on financial service startups. The firm raised a $10 million fund in 2019 and is preparing for its second fund. Among its 19 portfolio companies is HMBradley, which Diamond helped seed and recently <a href="https://dot.la/hm-bradley-2649022900.html" target="_self">raised $18 in a Series A</a> round.</p><p>"The whole reason I started this is that I saw there was a gap in the funding for early stage, financial service startups," he said. As consumers demand more digital access and transparency, he said the market for financial services is transforming — and Los Angeles is quickly becoming a hub for fintech companies. Before founding Walkabout, he was a principal for Clocktower Technology Ventures, another Los Angeles-based fund with a similar focus.</p>
Kara Nortman, Upfront Ventures<p>Kara Nortman was recently promoted to managing partner at Upfront Ventures, making her one of the few women – along with Settle – to ascend to the highest ranks of a major VC firm.</p><p>Though<a href="https://upfront.com/thoughts/announcing-upfronts-new-co-managing-partner" target="_blank" rel="noopener noreferrer"> Upfront had attempted to recruit her</a> before she joined in 2014, she had declined in order to start her own company, Moonfrye, a children's ecommerce company that rebranded to P.S. XO and merged with Seedling. Upfront invested in the combination, and shortly after, Nortman joined the Upfront team.</p><p>Before founding Moonfrye, she was the SVP and General Manager of Urbanspoon and Citysearch at IAC after co-heading IAC's M&A group.</p><p><a href="https://dot.la/moving-from-the-passenger-seat-to-the-drivers-seat-upfronts-kara-nortman-named-managing-partner-2648493740.html" target="_self">In an interview with dot.LA earlier this year</a>, she spoke on how a focus for her as a VC is to continue to open doors for founders and funders of diverse backgrounds.<br></p><p>"Once you're a woman or a person of color in a VC firm, it is making sure other talented people like you get hired, but also hiring people who are not totally like you. You have to make room for different kinds of people. And how do you empower those people?"<br></p>
Brett Brewer, Crosscut Ventures<p>Brett Brewer is a co-founder and managing director of Crosscut Ventures. He has a long history in entrepreneurship, starting a "pencil selling business in 4th grade." In 1998, he co-founded Intermix Media. Under their umbrella were online businesses like Myspace.com and Skilljam.com. After selling Intermix in 2005, he became president of Adknowledge.com.</p><p>Brewer founded Santa Monica-based Crosscut in 2008 alongside Rick Smith and Brian Garrett. His advice to founders <a href="https://crosscut.vc/team/" target="_blank">on Crosscut's website</a> reflects his experience: "Founders have to be prepared to pivot, restart, expect the unexpected, and make tough choices quickly... all in the same week! It's not for the faint of heart, but after doing this for 20 years, you can spot the fire (and desire) from a mile away (or not)."</p>
Eva Ho, Fika Ventures<p>Eva Ho is a founding partner of Fika Ventures, a boutique seed fund, which focuses on data and artificial intelligence-enabled technologies. Prior to founding Fika, she was a founding partner at San Francisco-based Susa Ventures, another seed-stage fund with a similar focus. She is also a serial entrepreneur, most recently co-founding an L.A. location data provider, Factual. She also co-founded Navigating Cancer, a health startup, and is a founding member of All Raise, a nonprofit that supports and provides resources to female founders and funders.</p><p><a href="https://medium.com/@John_Livesay/when-google-bought-my-startup-81f1ee21488c" target="_blank" rel="noopener noreferrer">In an interview with John Livesay</a> shortly before founding Fika, Ho spoke to how her experience at Factual helped focus what she looks for in founders. "I always look for the why. A lot of people have the skills and the confidence and the experience, but they can't convince me that they're truly passionate about this. That's the hard part — you can't fake passion."</p>
Brian Lee, BAM Ventures<p>Brian Lee is a co-founder and managing director of BAM Ventures, an early-stage consumer-focused fund. <a href="https://dot.la/brian-lee-los-angeles-venture-capital-2645125301.html" target="_self">In an interview with dot.LA earlier this year</a>, Lee shared that he ended up being the first investor in Honey, which was bought by PayPal for $4 billion, through investing in founders and understanding their "vibe."</p> <p>"There's certain criteria that we look for in founders, a proprietary kind of checklist that we go through to determine whether or not these are the founders that we want to back…. [Honey's founders] knew exactly what they were building, and how they were going to get there."</p> <p>His eye for the right vibe in a founder is one gleaned from experience. Lee is a serial entrepreneur, founding LegalZoom.com, ShoeDazzle.com and The Honest Company.</p>
Alex Rubalcava, Stage Venture Partners<p>Alex Rubalcava is a founding partner of Stage Venture Partners, a seed venture capital firm that invests in emerging software technology for B2B markets. Prior to joining, he was an analyst at Santa Monica-based Anthem Venture Partners, an investor in early stage technology companies. It was his first job after graduating from Harvard, and during his time at Anthem the fund was part of Series A in companies like MySpace, TrueCar and Android.</p><p>He has served as a board member in several Los Angeles nonprofits and organizations like KIPP LA Schools and South Central Scholars.</p> <p>"Warren Buffett says that he's a better businessman because he's an investor, and he's a better investor because he's a businessman. I feel the same way about VC and value investing. Being good at value investing can make you good at venture capital, and vice versa," Rubalcava said in <a href="https://moiglobal.com/alex-rubalcava-interview/" target="_blank" rel="noopener noreferrer">an interview with Shai Dardashti of MOI Global</a>.</p>
Mark Suster, Upfront Ventures<p>Mark Suster, managing partner at Upfront Ventures, is arguably L.A.'s most visible VC, frequently posting on Twitter and on his <a href="https://bothsidesofthetable.com/" target="_blank" rel="noopener noreferrer">blog</a>, not only about investing but also more personal topics like weight loss. In more normal years, he presides over LA's biggest gathering of tech titans, the Upfront Summit. Before Upfront, he was the founder and chief executive officer of two software companies, BuildOnline and Koral, which was acquired by Salesforce. Upfront backed both of his companies, and eventually he joined their team in 2007.</p><p>In a piece for his blog, "Both Sides of the Table," <a href="https://bothsidesofthetable.com/finding-an-investor-who-is-in-love-with-you-d0badf1a3998" target="_blank" rel="noopener noreferrer">Suster wrote about the importance of passion</a> — not just for entrepreneurs and their businesses, but for the VCs that fund them as well.<br></p><p>"On reflection of the role that I want to play as a VC it is clearly in the camp of passion. I really want to start my journeys only with people with whom I want to work closely with for the next 5–7 years or more. I only want to work on projects in which I believe can produce truly amazing change in an industry or in the world."</p>
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