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Articles 1 - 16 of 16
Full-Text Articles in Law
A Functional Approach To Judicial Review Of Ptab Rulings On Mixed Questions Of Law And Fact, Rebecca S. Eisenberg
A Functional Approach To Judicial Review Of Ptab Rulings On Mixed Questions Of Law And Fact, Rebecca S. Eisenberg
Articles
The Court of Appeals for the Federal Circuit (“Federal Circuit”) has long relied on active appellate review to bring uniformity and clarity to patent law. It initially treated the PTO the same as the federal district courts, reviewing its factual findings for clear error and its legal conclusions de novo. Following reversal by the Supreme Court in Dickinson v. Zurko, the Federal Circuit began giving greater deference to PTO factual findings. But it continued to review the PTO’s legal conclusions de novo, while coding an expansive list of disputed issues in patent cases as legal conclusions, even when they …
Elite Patent Law, Paul Gugliuzza
Elite Patent Law, Paul Gugliuzza
Faculty Scholarship
Over the last twenty years, one of the most significant developments in intellectual property law has been the dramatic increase in the number of patent cases decided by the U.S. Supreme Court. That same time period has also seen the emergence of a small, elite group of lawyers specializing not in any particular area of substantive law but in litigation before the Supreme Court. In recent empirical work, I linked the Court’s growing interest in patent law to the more frequent participation of elite Supreme Court lawyers in patent cases, particularly at the cert. stage. Among other things, I found …
Is The Federal Circuit Learning Its Lessons? A Case Study Of Bpcia Preemption, Mary Lafleur
Is The Federal Circuit Learning Its Lessons? A Case Study Of Bpcia Preemption, Mary Lafleur
Chicago-Kent Journal of Intellectual Property
No abstract provided.
Petitioner Estoppel From Patent Trial And Appeal Board Proceedings After Sas Institute Inc. V. Iancu, Jennifer Esch, Paula Miller, Stacy Lewis, Tom Irving
Petitioner Estoppel From Patent Trial And Appeal Board Proceedings After Sas Institute Inc. V. Iancu, Jennifer Esch, Paula Miller, Stacy Lewis, Tom Irving
Chicago-Kent Journal of Intellectual Property
No abstract provided.
The Collapse Of Covered Business Method Reviews, Eleanor M. Yost
The Collapse Of Covered Business Method Reviews, Eleanor M. Yost
Chicago-Kent Journal of Intellectual Property
No abstract provided.
Huge Numbers Of Patent Cases: How One District Judge Manages Them - The 2018 Supreme Court Ip Review Address, The Honorable William Alsup
Huge Numbers Of Patent Cases: How One District Judge Manages Them - The 2018 Supreme Court Ip Review Address, The Honorable William Alsup
Chicago-Kent Journal of Intellectual Property
No abstract provided.
The Patent On-Sale Bar Post-Helsinn And Its Effect On The Pharmaceutical Industry, Raja Chatterjee
The Patent On-Sale Bar Post-Helsinn And Its Effect On The Pharmaceutical Industry, Raja Chatterjee
Chicago-Kent Journal of Intellectual Property
The purpose of the patent on-sale bar is to discourage inventors from misusing the patent system and unfairly extending their patent exclusivity period. In Helsinn Healthcare v. Teva Pharmaceuticals, the Federal Circuit has distorted this doctrine far beyond its purpose. By including non-public business transactions within the scope of the on-sale bar, the Federal Circuit’s decision contradicts legislative history and express statutory language from the America Invents Act (“AIA”). This interpretation also makes the U.S. the only major patent system where a non-public sale can lead to the forfeiture of an inventor’s patent rights. The inclusion of non-public agreements within …
Using A Phillips Construction In All Ptab Trials: The Impact On District Court Patent Actions And Ptab Proceedings, Sarah Jelsema, Andrew Mason, John Vandenberg
Using A Phillips Construction In All Ptab Trials: The Impact On District Court Patent Actions And Ptab Proceedings, Sarah Jelsema, Andrew Mason, John Vandenberg
Chicago-Kent Journal of Intellectual Property
No abstract provided.
Due Process In Aia Proceedings After Sas Institute Inc. V. Iancu, Mikaela Stone, Britton Davis
Due Process In Aia Proceedings After Sas Institute Inc. V. Iancu, Mikaela Stone, Britton Davis
Chicago-Kent Journal of Intellectual Property
No abstract provided.
All Or Nothing: Why The Supreme Court Sas Mandate Does Not Eliminate The Shaw Safe Harbor, Matt Johnson, Michael Lavine, Daniel Kazhdan Ph.D, Lisa Furby, David Anderson
All Or Nothing: Why The Supreme Court Sas Mandate Does Not Eliminate The Shaw Safe Harbor, Matt Johnson, Michael Lavine, Daniel Kazhdan Ph.D, Lisa Furby, David Anderson
Chicago-Kent Journal of Intellectual Property
No abstract provided.
The Procedure Of Patent Eligibility, Paul Gugliuzza
The Procedure Of Patent Eligibility, Paul Gugliuzza
Faculty Scholarship
A decade ago, the patent-eligible subject matter requirement was defunct. Several recent Supreme Court decisions, however, have made eligibility the most important issue in many patent cases. To date, debates over the resurgent doctrine have focused mainly on its substance. Critics contend that the Supreme Court’s case law makes patents too easy to invalidate and discourages innovation. Supporters emphasize that the Court’s decisions help eradicate the overly broad patents often asserted by so-called patent trolls.
Yet one important consequence of eligibility’s revival has been procedural. Because district courts often view eligibility to present a pure question of law, they are—for …
A Patent Reformist Supreme Court And Its Unearthed Precedent, Samuel F. Ernst
A Patent Reformist Supreme Court And Its Unearthed Precedent, Samuel F. Ernst
Fordham Intellectual Property, Media and Entertainment Law Journal
How is it that the Supreme Court, a generalist court, is leading a project of innovation reform in our times while the court of appeals established to encourage innovation is having its precedent stricken down time and again? This decade the Supreme Court has issued far more patent law decisions than in any decade since the passage of the Patent Act of 1952. In doing so, the Supreme Court has overruled the Federal Circuit in roughly threequarters of the patent cases in which the Supreme Court has issued opinions. In most of these cases, the Supreme Court has established rules …
Rule 36 Decisions At The Federal Circuit: Statutory Authority, Matthew J. Dowd
Rule 36 Decisions At The Federal Circuit: Statutory Authority, Matthew J. Dowd
Vanderbilt Journal of Entertainment & Technology Law
Recent commentary has questioned the validity of the US Court of Appeals for the Federal Circuit's use of Rule 36 affirmances in deciding appeals from the US Patent and Trademark Office (USPTO). One article in particular posits that 35 U.S.C. § 144 and 15 U.S.C.§ 1071(a)(4) require the Federal Circuit to write an opinion in every appeal from the USPTO and therefore the court's use of Rule 36 affirmances, particularly with appeals of cases from the America Invents Act, is improper. This Article presents a reasoned counterpoint to that argument. A complete analysis of the statutory text, the legislative history, …
The Federal Circuit As An Institution, Ryan G. Vacca
The Federal Circuit As An Institution, Ryan G. Vacca
Law Faculty Scholarship
The Court of Appeals for the Federal Circuit is a unique institution. Unlike other circuit courts, the Federal Circuit’s jurisdiction is bound by subject area rather than geography, and it was created to address a unique set of problems specific to patent law. These characteristics have affected its institutional development and made the court one of the most frequently studied appellate courts. This chapter examines this development and describes the evolving qualities that have helped the Federal Circuit distinguish itself, for better or worse, as an institution.
This chapter begins with an overview of the concerns existing before creation of …
The Post-Alice Jurisprudence Pendulum And Its Effects On Patent Eligible Subject Matter, John Robert Sepúlveda
The Post-Alice Jurisprudence Pendulum And Its Effects On Patent Eligible Subject Matter, John Robert Sepúlveda
Touro Law Review
No abstract provided.
Rising Confusion About 'Arising Under' Jurisdiction In Patent Cases, Paul Gugliuzza
Rising Confusion About 'Arising Under' Jurisdiction In Patent Cases, Paul Gugliuzza
Faculty Scholarship
By statute, all cases “arising under” patent law must be heard exclusively by the federal courts (not state courts) and, on appeal, by the Federal Circuit (not the twelve regional circuits). But not all cases involving patents “arise under” patent law. As recently as 2013, the Supreme Court ruled that the mere need to apply patent law in, for example, a malpractice case involving a patent lawyer, is insufficient to trigger exclusive jurisdiction. Rather, the Court held, for a case that does not involve claims of patent infringement to arise under patent law, the patent issue must be “important . …