Law Commons^™

Certiorari, Universality, And A Patent Puzzle, Tejas N. Narechania

Michigan Law Review

The most important determinant of a case’s chances for Supreme Court review is a circuit split: If two courts of appeals have decided the same issue differently, review is substantially more likely. But practically every appeal in a patent case makes its way to a single court—the Court of Appeals for the Federal Circuit. How, then, does the Supreme Court decide whether to grant certiorari in a patent case?

The petitions for certiorari in the Court’s patent docket suggest an answer: The Supreme Court looks for splits anyway. These splits, however, are of a different sort. Rather than consider whether …

The Uneasy Case For Patent Law, Rachel E. Sachs

Michigan Law Review

A central tenet of patent law scholarship holds that if any scientific field truly needs patents to stimulate progress, it is pharmaceuticals. Patents are thought to be critical in encouraging pharmaceutical companies to develop and commercialize new therapies, due to the high costs of researching diseases, developing treatments, and bringing drugs through the complex, expensive approval process. Scholars and policymakers often point to patent law’s apparent success in the pharmaceutical industry to justify broader calls for more expansive patent rights.

This Article challenges this conventional wisdom about the centrality of patents to drug development by presenting a case study of …

The "Broadest Reasonable Interpretation" And Applying Issue Preclusion To Administrative Patent Claim Construction, Jonathan I. Tietz

Michigan Law Review

Inventions are tangible. Yet patents comprise words, and words are imprecise. Thus, disputes over patents involve a process known as “claim construction,” which formally clarifies the meaning of a patent claim’s words and, therefore, the scope of the underlying property right. Adversarial claim construction commonly occurs in various Article III and Article I settings, such as district courts or the Patent Trial and Appeal Board (PTAB). When these proceedings ignore each other’s claim constructions, a patent’s scope can become inconsistent and unpredictable. The doctrine of issue preclusion could help with this problem. The Supreme Court recently reemphasized in B & …

Understanding Nautilus's Reasonable-Certainty Standard: Requirements For Linguistic And Physical Definiteness Of Patent Claims, Gary M. Fox

Michigan Law Review

Patent applicants must satisfy a variety of requirements to obtain a patent from the U.S. Patent and Trademark Office (USPTO). The definiteness requirement forces applicants to describe their inventions in unambiguous terms so that other inventors will understand the scope of granted patent rights. Although the statutory provision for the definiteness requirement has been stable for many years, the Supreme Court’s decision in Nautilus v. Biosig Instruments altered the doctrine. The Court abrogated the Federal Circuit’s insoluble-ambiguity standard and replaced it with a new reasonable-certainty standard. Various district courts have applied the new standard in different ways, indicating the need …

The Supreme Assimilation Of Patent Law, Peter Lee

Michigan Law Review

Although tensions between universality and exceptionalism apply throughout law, they are particularly pronounced in patent law, a field that deals with highly technical subject matter. This Article explores these tensions by investigating an underappreciated descriptive theory of Supreme Court patent jurisprudence. Significantly extending previous scholarship, it argues that the Court’s recent decisions reflect a project of eliminating “patent exceptionalism” and assimilating patent doctrine to general legal principles (or, more precisely, to what the Court frames as general legal principles). Among other motivations, this trend responds to rather exceptional patent doctrine emanating from the Federal Circuit in areas as varied as …

Beyond Eureka: What Creators Want (Freedom, Credit, And Audiences) And How Intellectual Property Can Better Give It To Them (By Supporting, Sharing, Licensing, And Attribution), Colleen Chien

Michigan Law Review

In the theater of the courtroom or the rough and tumble arena of intellectual property policymaking, the day-to-day lives of creators are rarely presented. We often instead see one-dimensional vignettes, for example, “the new artist or band that has just released their [sic] first single and will not be paid for its success,” described on Taylor Swift’s Tumblr last summer when she initially withdrew from Apple’s music streaming service. While instructive, this description leaves out that Swift and other artists have long relied on “free play” mediums like radio and, more recently, YouTube to develop, not cannibalize, their audiences and …

An Administrative Meter Maid: Using Inter Partes Review And Post-Grant Review To Curb Exclusivity Parking Via The "Failure To Market" Provision Of The Hatch-Waxman Act, Brian T. Apel

Michigan Law Review

Congress created the unique Hatch-Waxman framework in 1984 to increase the availability of low-cost generic drugs while preserving patent incentives for new drug development. The Hatch-Waxman Act rewards generic drug companies that successfully challenge a pharmaceutical patent: 180 days of market exclusivity before any other generic firm can enter the market. When a generic firm obtains this reward, sometimes drug developers agree to pay generic firms to delay entering the market. These pay-for-delay agreements give rise to exclusivity parking and run counter to congressional intent by delaying full generic drug competition. The Medicare Prescription Drug, Improvement, and Modernization Act created …

Forcing Patent Claims, Tun-Jen Chiang

Michigan Law Review

An enormous literature has criticized patent claims for being ambiguous. In this Article, I explain that this literature misunderstands the real problem: the fundamental concern is not that patent claims are ambiguous but that they are drafted by patentees with self-serving incentives to write claims in an overbroad manner. No one has asked why the patent system gives self-interested patentees the leading role in delineating the scope of their own patents. This Article makes two contributions to the literature. First, it explicitly frames the problem with patent claims as one of patentee self-interest rather than the intrinsic ambiguity of claim …

Reinventing Copyright And Patent, Abraham Bell, Gideon Parchomovsky

Michigan Law Review

Intellectual property systems all over the world are modeled on a one-size-fitsall principle. However important or unimportant, inventions and original works receive the same scope of protection, for the same period of time, backed by the same variety of legal remedies. Essentially, all intellectual property is equal under the law. This equality comes at a heavy price, however. The equality principle gives all creators access to the same remedies, even when those remedies create perverse litigation incentives. Moreover, society overpays for innovation through more monopoly losses than are strictly necessary to incentivize production. In this Article, we propose a solution …

The Audience In Intellectual Property Infringement, Jeanne C. Fromer, Mark A. Lemley

Michigan Law Review

Every intellectual property (“IP”) right has its own definition of infringement. In this Article, we suggest that this diversity of legal rules is largely traceable to differences in the audience in IP cases. Patent, trademark, copyright, and design patent each focus on a different person as the fulcrum for evaluating IP infringement. That patent law, for example, focuses on an expert audience while trademark looks to a consumer audience explains many of the differences in how patent and trademark cases are decided. Expert audiences are likely to evaluate infringement based on the technical similarity between the plaintiff’s and defendant’s works. …

Antitrust Rulemaking As A Solution To Abuse On The Standard-Setting Process, Adam Speegle

Michigan Law Review

While many recognize the critical role that technology plays in modern life, few appreciate the role that standards play in contributing to its success. Devices as prevalent as the modern laptop computer for example, may be governed by over 500 interoperability standards, regulating everything from the USB drive to the memory chip. To facilitate adoption of such standards, firms are increasingly turning to standard-setting organizations. These organizations consist of members of an industry who agree to abide by the organization's bylaws, which typically regard topics such as patent disclosure and reasonable licensing. Problems arise, however, when members violate these bylaws …

The Myth Of The Sole Inventor, Mark A. Lemley

Michigan Law Review

The theory of patent law is based on the idea that a lone genius can solve problems that stump the experts, and that the lone genius will do so only if properly incented. But the canonical story of the lone genius inventor is largely a myth. Surveys of hundreds of significant new technologies show that almost all of them are invented simultaneously or nearly simultaneously by two or more teams working independently of each other. Invention appears in significant part to be a social, not an individual, phenomenon. The result is a real problem for classic theories of patent law. …

The Accession Insight And Patent Infringement Remedies, Peter Lee

Michigan Law Review

What is the appropriate allocation of rights and obligations when one party, without authorization, substantially improves the property of another? According to the doctrine of accession, a good faith improver may take title to such improved property, subject to compensating the original owner for the value of the source materials. While shifting title to a converter seems like a remarkable remedy, this outcome merely underscores the equitable nature of accession, which aims for fair allocation of property rights and compensation between two parties who both have plausible claims to an improved asset. This Article draws upon accession-a physical property doctrine …

Innovative Copyright, Greg Lastowka

Michigan Law Review

For over a decade, Michael Carrier has been exploring the intersection of antitrust and intellectual property ("IP") law, contributing many articles that offer new solutions and approaches to the vexing problems confronting the law of innovation. Carrier's academic writing is situated in a voluminous scholarly discourse about the appropriate rules and goals of the laws of copyright, patent, and antitrust. While Carrier easily could have written an "insider" tome for specialists in this area, his new book, Innovation for the 21st Century, is targeted at a broader audience. Carrier's book is directed at legislators, jurists, and opinion makers-as well as …

The Family Law Doctrine Of Equivalence, Amy L. Wax

Michigan Law Review

Students of patent law learn the doctrine of equivalents. According to the doctrine, a patent protects an invention that does "the same work in substantially the same way, and accomplish[ es] substantially the same result," as the device described in the patent, even if it differs "'in name, form, or shape." In her new book, Nancy Polikoff has fashioned something like a parallel doctrine for families. Let's call it (with a slight play on words) the family law Doctrine of Equivalence. In today's world, according to Polikoff, a broad set of relationships now plays the same role as marriage and …

Exclusion Confusion? A Defense Of The Federal Circuit's Specific Exclusion Jurisprudence, Peter Curtis Magic

Michigan Law Review

Specific exclusion has become a controversial limitation on the doctrine of equivalents, which is itself an essential and controversial area of patent law. The doctrine of equivalents allows a patentee to successfully claim infringement against devices that are outside of the literal reach of the language used by the patentee in her patent to describe what she claims as her invention. The Supreme Court has prescribed some of the outer limits of the doctrine of equivalents and articulated the underlying policy concerns that inform its analysis-noting that courts should balance protection of the patentee's intellectual property with the public's reasonable …

Personal Jurisdiction Over Aliens In Patent Infringement Actions: A Uniform Approach Toward The Situs Of The Tort, David Wille

Michigan Law Review

This Note examines current approaches to the question of personal jurisdiction over alien patent infringers. Part I describes personal jurisdiction requirements in the context of patent infringement suits against aliens. The leading case addressing these requirements has been interpreted differently by several courts, thus resulting in conflicting outcomes. Part II explains the current controversy over the locus of the tort of patent infringement. The three different modes of reasoning currently used by courts to determine the locus of the tort would allow immunity from suit for the alien in at least two hypothetical cases. This Part concludes that in order …

Total-Sales Royalties Under The Patent-Misuse Doctrine: A Critique Of Zenith, Michigan Law Review

Michigan Law Review

This Note criticizes the Supreme Court's treatment of total-sales royalties. Part I outlines the scope of the patent-misuse doctrine, and Part II describes the development of the Zenith conditioning test. Part III analyzes that test; it suggests that the Zenith opinion is not internally consistent and that courts may not be able to apply the conditioning test satisfactorily. Finally, in response to Justice Harlan's dissenting opinion in Zenith, in which he notes the dearth of literature on the economic consequences of total-sales royalty provisions, 14 Part III undertakes an analysis of those consequences. The analysis demonstrates that total-sales royalty …

Patents And Antitrust Law, Merrill N. Johnson

Michigan Law Review

A Review of Patents and Antitrust Law by Ward S. Bowman, Jr.

Unreduced Royalty Arrangements And Packaged Patents: An Improper Extension Of The Patent Monopoly?, Michigan Law Review

Michigan Law Review

This Comment will examine the merits of Brulotte and the propriety of extending its rule to the package licensing context. In order to do this it is necessary to consider the Brulotte and Rocform decisions in somewhat greater detail.

Jurisdiction--Foreign Patents--Jurisdiction Over Foreign Patent Claims, Michigan Law Review

Michigan Law Review

The territorial limitations of sovereignty have been held to preclude a country from giving extraterritorial effect to its patent laws, and, therefore, a patent confers rights which are protected only within the boundaries of the issuing country. Thus, United States and foreign patents, even when granted for the same invention, create separate and distinct rights which may differ in scope and effect in the respective countries. Concomitantly, courts have also held that a foreign patent confers upon its owner no rights or protection with respect to acts done in the United States.

Ball: Dynamics Of The Patent System, Robert A. Choate

Michigan Law Review

A Review of Dynamics of the Patent System. Edited by William B. Ball.

Vaughan: The United States Patent System. Legal And Economic Conflicts In American Patent History, Bernard F. Garvey

Michigan Law Review

A Review of The United States Patent System. Legal and Economic Conflicts in American Patent History. By Floyd L. Vaughan.

Book Reviews, Edward S. Rogers, John Barker Waite

Michigan Law Review

Patent Law. by John Barker Waite, Professor of Law in the University of Michigan Law School. Princeton University Press, x92o.

Restrictions On The Use Of Patented Articles, Edward S. Rogers

Michigan Law Review

The case of Henry v. Dick recently decided by the Supreme Court of the United States, has occasioned considerable unfavorable comment in the public press. It seems to be the opinion of many that the decision lays down a new principle of law, particularly adaptable to the working of a monopoly, and that the public is, under the supposed new principle, exposed to a practically unlimited exploitation by any patentee. It is believed that neither of these contentions is correct.

Rights Of A Traveler To Use Here Articles Made And Purchased Abroad But Patented Here, Dwight B. Cheever

Michigan Law Review

The question to be answered by this paper is whether or not when an American citizen goes abroad and purchases there from a manufacturer in any foreign country any article whatsoever be it wearing apparel or an automobile which is patented in this country has such a purchaser the right to bring that article into this country and to use it in this country without paying tribute to the American patentee or his assignee. As to small articles the question is of course unimportant, for no one would think of going to the expense of a suit over the use …

The Proposed Court Of Patent Appeals, Otto Raymond Barnett

Michigan Law Review

Experience has demonstrated that nowhere was the foresight and wisdom of the framers of the Federal Constitution more clearly shown than when they embodied in that instrument the provision that to encourage progress in science and the useful arts, Congress should have authority to secure to writers and inventors for limited times, exclusive rights to their productions. When the Federal Constitution was drafted, the manufacturing industries of this country were insignificant. Since then the industrial progress of the United States has been one of the marvels of the world's history and this progress and the supremacy of American manufacturers have …

Rights Of Joint Owners Of A Patent, Dwight B. Cheever

Michigan Law Review

0wing to the fact that the courts have decided the question Squite at variance from the expectations of ordinary persons, there is, perhaps, no legal proposition in patent law more interesting or important than that of the rights of joint owners of a patent. The relationship may arise from the parties being joint inventors, by their being joint assignees from the inventor or previous owner, or by the most common method, of one being an assignee from the patentee of a fractional interest in a patent; frequently in consideration of paying the expense of procuring the patent. By authority of …

Rights Of Employer And Employee To Inventions Made By Either During The Relationship, Dwight B. Cheever

Michigan Law Review

The interesting and difficult question not infrequently arises, what are the respective rights of employer and employee to inventions made by either during the continuance of the relation. While the constantly occurring cases are almost always complicated by special and peculiar facts which must modify to a greater or less extent the decision to be reached in the particular case, it is believed that the following review of the controlling principles and leading cases on the subiect will be of assistance. Since the courts have repeatedly said that "no one is-antitled to a patent for that which he did not …