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Full-Text Articles in Technology and Innovation
Teva And The Process Of Claim Construction, Lee Petherbridge Ph.D., R. Polk Wagner
Teva And The Process Of Claim Construction, Lee Petherbridge Ph.D., R. Polk Wagner
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In Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., the Supreme Court addressed an oft-discussed jurisprudential disconnect between itself and the U.S. Court of Appeals for the Federal Circuit: whether patent claim construction was “legal” or “factual” in nature, and how much deference is due to district court decisionmaking in this area. In this Article, we closely examine the Teva opinion and situate it within modern claim construction jurisprudence. Our thesis is that the Teva holding is likely to have only very modest effects on the incidence of deference to district court claim construction but that for unexpected reasons the …
Life After Bilski, Mark A. Lemley, Michael Risch, Ted Sichelman, R. Polk Wagner
Life After Bilski, Mark A. Lemley, Michael Risch, Ted Sichelman, R. Polk Wagner
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In Bilski v. Kappos, the Supreme Court declined calls to categorically exclude business methods—or any technology—from the patent law. It also rejected as the sole test of subject matter eligibility the Federal Circuit’s deeply-flawed machine-or-transformation test, under which no process is patentable unless it is tied to a particular machine or transforms an article to another state or thing. Subsequent developments threaten to undo that holding, however. Relying on the Court’s description of the Federal Circuit test as a “useful and important clue,” the U.S. Patent and Trademark Office, patent litigants, and district courts have all continued to rely on …
Of Patents And Path Dependency: A Comment On Burk And Lemley, R. Polk Wagner
Of Patents And Path Dependency: A Comment On Burk And Lemley, R. Polk Wagner
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This Article delves into issues surrounding the relationship between technology and the patent law. Responding to Dan Burk and Mark Lemley's earlier article, Is Patent Law Technology-Specific?, the piece notes that the basic question posed by Burk and Lemley's article is a relatively easy question given the several doctrines that explicitly link the subject matter context of an invention to the validity and scope of related patents. This sort of technological exceptionalism (which this Article refers to as micro-exceptionalism) is both observable and easily justifiable for a legal regime directed to technology policy. In contrast, Burk and Lemley's identification of, …
Reconsidering Estoppel: Patent Administration And The Failure Of Festo, R. Polk Wagner
Reconsidering Estoppel: Patent Administration And The Failure Of Festo, R. Polk Wagner
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Last Term, in Festo Corporation v. Shoketsu Kinzoku Kogyo Kabashuki Co., the United States Supreme Court missed perhaps the most important opportunity for patent law reform in two decades. At the core of the failure to grasp the implications of "prosecution history estoppel" - a judicially-crafted principle limiting the enforceable scope of patents based on acts occurring during their application process - is the heretofore universal (but ultimately unsupportable) view of the doctrine as an arbitrary ex post limitation on patent scope. This Article demonstrates the serious flaws in this traditionalist approach, and develops a new theory of prosecution history …
The More Things Change, The More They Stay The Same: Implications Of Pfaff V. Wells Electronics, Inc. And The Quest For Predictability In The On-Sale Bar, Timothy R. Holbrook
The More Things Change, The More They Stay The Same: Implications Of Pfaff V. Wells Electronics, Inc. And The Quest For Predictability In The On-Sale Bar, Timothy R. Holbrook
Faculty Articles
This Article posits a two prong approach to the on-sale bar. First, for the anticipatory version, the courts should expressly incorporate the law of enablement under 35 U.S.C. § 112 and of utility under 35 U.S.C. § 101 into the on-sale bar, thus providing a well-known body of law to promote predictability. Procedurally, the courts should establish a hierarchy of evidence, similar to the approach used in claim construction, that considers certain, more readily available information as the most pertinent while eschewing the use of expert testimony and other litigation based evidence. Second, for the obviousness version of the on-sale …