Law Commons^™

A Generation Of Patent Litigation, Michael Risch

Michael Risch

This study compares twenty-five years of litigation and patents of the ten most litigious NPEs (as of 2009) with a random group of cases and patents in the same yearly proportions. All cases involving every patent was gathered, allowing the life cycle of each asserted patent to be studied. The data includes litigation data, patent data, reexaminations, and other relevant data. This paper considers outcomes and patent quality. A future paper will examine innovation and markets. Unsurprisingly, the data shows that the studied NPE patents were found invalid and noninfringed about twice as often as the comparable nonNPEs. But there …

Functionality And Graphical User Interface Design Patents, Michael Risch

Michael Risch

Modern designers of graphical user interfaces, or GUIs, have obtained design patent protection for creative computer software displays, a realm previously limited to copyright. The difference in protection is important because design patents do not traditionally allow the same defenses - life fair use - associated with copyright. Apple's nearly billion dollar judgment against Samsung, which included such a GUI patent, brought this issue to the forefront.

This article answers three emerging questions:

1. Aren't GUIs something that should be protected by copyright only? Why should there be a patent? The answer is relatively simple: the law has, since 1870, …

Framing The Patent Troll Debate, Michael Risch

Michael Risch

The patent troll debate has reached a fevered pitch in the USA. This peer reviewed editorial seeks to frame the debate by pointing out the lack of clarity in defining patent trolls and their allegedly harmful actions. It then frames the debate by asking currently unanswered questions: Where do troll patents come from? What are the effects of troll assertions? Will policy changes improve the system?

Licensing Acquired Patents, Michael Risch

Michael Risch

Patents have always been licensed. Patents have always been acquired. Patents have even been acquired for the purpose of licensing new entrants. In short, there have always been secondary markets. But licensing acquired patents is a fairly recent business model. To be sure, there have been some historical exceptions but, for the most part, historical licensing and secondary markets primarily involved inventors (and their companies) and producers of products and services. While some of the same costs and benefits might apply to licensing of non-acquired patents by individuals or producing companies, examining the acquisition model improves analytical rigor. This essay, …

America's First Patents, Michael Risch

Michael Risch

Courts and commentators vigorously debate early American patent history because of a spotty documentary record. To fill these gaps, scholars have examined the adoption of the Intellectual Property Clause of the Constitution, correspondence, dictionaries, and British and colonial case law. But there is one largely ignored body of information — the content of early patents themselves. While many debate what the founders thought, no one asks what early inventors thought — and those thoughts are telling. This Article is the first comprehensive examination of how early inventors and their patents should inform our current thoughts about the patent system. To …

Patent Troll Myths, Michael Risch

Michael Risch

It turns out that just about everything we thought about patent trolls – good or bad – is wrong. Using newly gathered data, this article presents an ethnography of sorts about highly litigious non-practicing entity (NPE) plaintiffs. The results are surprising: they show that the conventional wisdom about patent trolls is likely based on anecdotal, but infrequently occurring, events. Instead, the patents enforced by so-called trolls – and the companies that obtained them – look a lot like other litigated patents and their owners. To be sure, whether an NPE qualifies as a troll depends on who is doing the …

Life After Bilski, Michael Risch

Michael Risch

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 …

A Surprisingly Useful Requirement, Michael Risch

Michael Risch

For 220 years, the Patent Act has required patentable inventions to be “new and useful.” For almost as long, courts have struggled with difficult questions about what to protect by patent and what to leave in the public domain. Patent laws provide a variety of rules to help answer these questions, but the very nature of translating an inventive principle into written form can make application of these rules elusive. As a result, consistent application of patent law can often involve guesswork and hand-waving at the margins of difficult cases. There are many principled ways to make headway through such …

Forward To The Past, Michael Risch

Michael Risch

The Supreme Court’s decision in Bilski v. Kappos - banning all patents claiming ‘‘abstract ideas,’’ but refusing to categorically bar any particular type of patent - represents a return to the Court’s past patentable subject matter jurisprudence. In so returning, the Court determined that business methods could potentially be patentable. This Supreme Court Review article discusses what is essentially a restart: lower courts and the PTO must remake the law using the same precedent that led to the rigid rules rejected by the Court in Bilski. Part I discusses Mr. Bilski’s patent application and the Court’s ruling that it is …

Patent Challenges And Royalty Inflation, Michael Risch

Michael Risch

Eliminating bad patents is supposed to be a good thing, and so federal law allows any interested party to challenge a patent's validity almost any time. But the law goes a step further than merely conferring broad challenge rights. It also makes them nearly impossible to contract away. Instead, federal law voids any agreement not to challenge a patent. While a contract ordinarily signifies a final resolution of all issues covered by its terms, no such peace exists in patent licensing. This inalienability of patent challenge rights comes at a cost, a cost borne by many patent licensees and their …

Reinventing Usefulness, Michael Risch

Michael Risch

Patent law includes one of this country’s oldest continuous statutory requirements: since 1790, and without variance, inventors are only entitled to patent “new and useful” inventions. While “newness” receives constant attention and debate, usefulness has been largely ignored. Usefulness has transformed into the toothless and misunderstood “utility” doctrine, which requires that patents only have a bare minimum potential for use. This article seeks to reinvent patentable usefulness. It is the first comprehensive look at usefulness and it reasons that a core benefit of the requirement is to aid in the commercialization of inventions. The article then proposes two ways that …

A Brief Defense Of The Written Description Requirement, Michael Risch

Michael Risch

This essay provides a brief defense of the much maligned "written description" requirement in patent law. Many argue that there is no such requirement, and that a patent specification that enables a person having ordinary skill in the art (the PHOSITA) to make and use the invention is sufficient, even if the specification contains no description of the invention. This essay briefly describes the dispute, and then raises an important but under-theorized argument in favor of a separate written description requirement. The essay accepts the persuasive grammatical reading of the statute proposed by opponents of a separate written description requirement. …

Everything Is Patentable, Michael Risch

Michael Risch

The currently confused and inconsistent jurisprudence of patentable subject matter can be clarified by implementing a single rule - that which is otherwise patentable under the Patent Act is patentable subject matter. In other words, if a discovery otherwise meets the requirements of patentability - namely category, utility, novelty, non-obviousness, and specification - then the discovery will be properly patentable without need to consider traditional non-statutory subject matter issues such as mathematical algorithms, products of nature, or natural phenomena. The primary virtue of the proposed rule is that it provides a more rigorous and consistent doctrinal framework for determining patentability. …

The Failure Of Public Notice In Patent Prosecution, Michael Risch

Michael Risch

Patents often contain technical information intertwined with legal meaning, and inventions are often difficult to describe in words. Despite complex interpretive rules, patent law has failed in one of its essential missions - giving those who need to read patents the ability to understand the scope of a patent's claims in a consistent and predictable manner. As a result, those who rely on patents - patentees, potential and actual licensees, potential and actual defendants, future patent applicants, courts, and even the Patent and Trademark Office - may find it difficult or impossible to discern the metes and bounds of any …