Intellectual Property Law Commons^™

Federal Circuit’S Unconventionality Approach To Patent-Ineligibility Challenges In A Motion To Dismiss, 20 Uic Rev. Intell. Prop. L. 331 (2021), Ping-Hsun Chen

UIC Review of Intellectual Property Law

No abstract provided.

Patent Pilot Program Perspectives: Patent Litigation In The Northern District Of Illinois, 17 J. Marshall Rev. Intell. Prop. L. 348 (2018)

UIC Review of Intellectual Property Law

A Patent Pilot Program, or PPP, is geared towards giving designated judges in various districts more experience with patent cases. The Volume 17 RIPL Executive Board interviewed several participating judges in the Northern District of Illinois’ PPP.

This note is comprised of interviews with Judge Thomas M. Durkin, Judge Matthew F. Kennelly, and Judge Rebecca R. Pallmeyer of the United States District Court, Northern District of Illinois; taken over the course of May and June of 2017 by the Volume 17 RIPL Board members Kaylee Willis and Benjamin Lockyer. Its contents compile a uniform effort by both the judges interviewed …

The Supreme Court: A Help Or A Hindrance To The Federal Circuit's Mission?, 17 J. Marshall Rev. Intell. Prop. L. 298 (2018), Donald Dunner

UIC Review of Intellectual Property Law

Before the establishment of the Federal Circuit, the system of patent enforcement was deeply flawed, with the circuit courts then responsible for reviewing district court patent decisions harboring widely varying attitudinal views in the interpretation of the patent law. Suggestions for solving the problem through a single specialized appellate patent court were consistently rejected due to general hostility to specialized courts. The formation of the Federal Circuit in 1982 initially appeared to solve the problem in providing uniform and predictable rules governing the enforcement of patents, an essential aspect of the court’s mission. The Supreme Court did not provide any …

Issue Preclusion: The Effect B&B Hardware Will Have On Trademark Litigation, 15 J. Marshall Rev. Intell. Prop. L. 257 (2016), Lian Osier

UIC Review of Intellectual Property Law

Trademark issues are frequently litigated in the United States Patent and Trademark Office, yet circuits were previously divided on how much weight to give those decisions. The Supreme Court provided the answer. B&B Hardware v. Hargis Indus. held that in certain circumstances, the Trademark Trial and Appeal Board will have a preclusive effect on federal district courts. This comment looks at what effect this ruling will have on trademark litigation in district courts by examining the cases that caused the circuit split leading up to the Supreme Court’s decision.

Three Hundred Nos: An Empirical Analysis Of The First 300+ Denials Of Institution For Inter Partes And Covered Business Method Patent Reviews Prior To In Re Cuozzo Speed Technologies, Llc, 14 J. Marshall Rev. Intell. Prop. L. 112 (2015), Jarrad Wood, Jonathan Stroud

UIC Review of Intellectual Property Law

Tasked in 2011 with creating powerful new patent review trial regimes, the U.S. Patent and Trademark Office—through the efforts of their freshly empowered quasi-judicial body, the Patent Trial and Appeal Board—set to creating a fast-paced trial with limited discovery and concentrated efficiency. For two years, the proceedings have proved potent, holding unpatentable many of the claims that reached decisions on the merits. Yet a small subsection of petitions never make it past the starting gate, resulting in wasted time and effort on the parts of petitioners—and likely sighs of relief from the rights-holders. The AIA exempted institution decisions from appellate …

Functional Elements In Patent Claims, As Construed By The Patent Trial And Appeal Board (Ptab), 13 J. Marshall Rev. Intell. Prop. L. 251 (2014), Tom Brody

UIC Review of Intellectual Property Law

Claims in patents include both structural elements and functional elements. Functional elements occur in various categories: (1) Functional elements that mandate a particular range of structures that are able to perform the required function; (2) Functional elements that mandate a particular cooperation between structures; (3) Compound noun/function functional elements, (4) Active-type functional elements; (5) “Capable of”-type functional elements, (6) Single-word structural elements that are typical nouns, but that are also functional elements, e.g., “plasticizer,” and (7) Quasi-functional elements that lack any patentable weight. This article discloses which of these types of functional elements confers the broadest claim scope, and which …

What Reversals And Close Cases Reveal About Claim Construction: The Sequel, 13 J. Marshall Rev. Intell. Prop. L. 525 (2014), Thomas Krause, Heather Auyang

UIC Review of Intellectual Property Law

This article updates and elaborates on last year’s What Close Cases and Reversals Reveal About Claim Construction at the Federal Circuit. Like the previous article, this article provides empirical insight into claim construction at the Federal Circuit, by approaching the question with two unique and distinct subsets of data: (1) “reversals” of all district court claim construction decisions since Phillips v. AWH, and (2) “close cases,” or post-Markman claim construction cases that had dissents in which a currently-active judge participated. The past year’s reversals data once again confirms that district courts persistently favor narrow claim interpretations in cases in which …

Should There Be A Presumption Favoring Awards Of Attorney’S Fees In Copyright Litigation?, 12 J. Marshall Rev. Intell. Prop. L. 630 (2013), William T. Mcgrath

UIC Review of Intellectual Property Law

Section 505 of the Copyright Act allows courts to award attorney’s fees to the prevailing party in a copyright case. Almost twenty years ago, the Supreme Court in Fogerty resolved a split among the circuits over the interpretation of that statute. First, it held that courts should apply several nonexclusive factors when determining if the prevailing party, whether defendant or plaintiff, should be entitled to recover attorney’s fees. Second, the Court refused to apply a presumption that the prevailing party will automatically recover attorney’s fees, opting instead for the districts courts to apply “equitable discretion” in awarding fees. But in …

Comments On Paul R. Michel's Contributions To Justice, 10 J. Marshall Rev. Intell. Prop. L. 279 (2011), James F. Holderman

UIC Review of Intellectual Property Law

No abstract provided.

Chief Judge Michel's Current And Future Contributions To Improving U.S. Intellectual Property Rights, 10 J. Marshall Rev. Intell. Prop. L. 299 (2011), Herbert C. Wamsley

UIC Review of Intellectual Property Law

No abstract provided.

The Communications Decency Act And New York Times V. Sullivan: Providing Public Figure Defamation A Home On The Internet, 43 J. Marshall L. Rev. 491 (2010), Chris Williams

UIC Law Review

No abstract provided.

The Role Of The Office Of The Administrative Law Judges Within The United States International Trade Commission, 8 J. Marshall Rev. Intell. Prop. L. 216 (2009), Carl C. Charneski

UIC Review of Intellectual Property Law

Section 337 of the Tariff Act of 1930 makes unlawful, specifically, the importation of products that infringe intellectual property rights. The U.S. International Trade Commission (“ITC”) is the forum in which all section 337 proceedings are adjudicated and, within the ITC, the Office of Administrative Law Judges handles all these proceedings. Section 337 cases can be exceedingly complex and technical, and the Administrative Law Judges (“ALJ”) are the initial triers of fact, administrators, and decision makers in every case. Thus, the amount of work that the ALJs—along with their staff—must meet to see these cases to completion can be substantial. …

The Legacy Of Judge Howard T. Markey, 8 J. Marshall Rev. Intell. Prop. L. (Special Issue) 1 (2009), Antonin Scalia

UIC Review of Intellectual Property Law

On September 16, 2008, Associate Justice of the Supreme Court of the United States Antonin Scalia delivered a speech on the legacy of the late Howard T. Markey. The speech was given at The John Marshall Law School’s The Legacy of Judge Howard T. Markey Symposium, held at the law school in Chicago, Illinois. The text of the speech appears here.

Obviousness Before And After Judge Markey, 8 J. Marshall Rev. Intell. Prop. L. (Special Issue) 9 (2009), Mark J. Abate

UIC Review of Intellectual Property Law

Chief Judge Howard T. Markey left an everlasting mark on the meaning of obviousness under 35 U.S.C. § 103. Chief Judge Markey viewed all inventions as combinations of old elements because, in his own words, “Only God works from nothing. Man must work with old elements.” Chief Judge Markey’s obviousness jurisprudence can be characterized by three fundamental principles. First, he looked at an invention as a whole. Second, he looked for real world evidence of nonobviousness because it was a reliable indicator of obviousness. Third, he avoided the dangers of hindsight bias by looking for a reason to combine a …

Four Opinions By Chief Judge Markey On Limiting Patent Enforcement, 8 J. Marshall Rev. Intell. Prop. L. (Special Issue) 34 (2009), Joseph R. Re

UIC Review of Intellectual Property Law

Many commentators have characterized Judge Markey and the United States Court of Appeals for the Federal Circuit as being biased in favor of patent holders. These four opinions exemplify Judge Markey’s support of a strong patent system, a system that must include strong defenses against parties that have either wrongly obtained or misused patent rights.

The Role Of Juries In Managing Patent Enforcement: Judge Howard Markey's Opinions And Writings, 8 J. Marshall Rev. Intell. Prop. L. (Special Issue) 41 (2009), John R. Alison

UIC Review of Intellectual Property Law

In the 1970s, a trial by jury was rare in patent cases. By the time Chief Judge Markey left the United States Court of Appeals for the Federal Circuit in 1989, jury trials had become the norm. Throughout Judge Markey’s time on the bench he exerted great energy to promote, define, and improve the role of law juries in patent cases. This speech by Judge Markey’s former law clerk, John R. Alison, discusses the three Markey Principles. The first principle of Judge Markey is the fundamental right to a jury trial in patent cases. Second, proceedings in jury trials for …

Must The Jury Reach A Verdict? The Constitutionality Of Eliminating Juries In Patent Trials By Creating An Article I Tribunal, 7 J. Marshall Rev. Intell. Prop. L. 754 (2008), Daniel P. Sullivan

UIC Review of Intellectual Property Law

The February 2007 jury verdict against Microsoft totaling $1.52 billion marked the largest in a patent case ever, following the prevailing trend of juries awarding extraordinarily high damages. Because patent law deals with complex technology and complicated issues of fact and law, and because empirical evidence concludes that juries have significant biases in favor of patentees and against alleged infringers, this comment calls into question whether or not twelve lay persons are sufficiently equipped to handle patent trials. In lieu of juries rendering verdicts in patent trials – and even in lieu of U.S. District Court judges adjudicating patent trials …

Chief Judge Paul R. Michel's Address To The Federal Circuit Judicial Conference On The State Of The Court, 7 J. Marshall Rev. Intell. Prop. L. 647 (2008), Paul R. Michel

UIC Review of Intellectual Property Law

On May 15, 2008, Chief Judge of the United States Court of Appeals for the Federal Circuit Paul R. Michel delivered the annual State of the Court speech. Chief Judge Michel delivered this speech during the Federal Circuit Judicial Conference, held at the Grand Hyatt hotel in Washington. The text of that speech and the corresponding graphics appear here.

The Supreme Court's Trademark Jurisprudence: Categorical Divergence In The Interest Of Information Convergence, 25 J. Marshall J. Computer & Info. L. 635 (2008), Sheldon Halpern

UIC John Marshall Journal of Information Technology & Privacy Law

The author shows that convergence has placed trademark law in the center of some of the hard-fought battles over information ownership in intellectual property. From fights over moral rights, to collisions with patents, trademarks in the new technological age have raised questions that he suggests might be better analyzed if the associative nature of trademarks were recognized and applied.

Live Alienation: One Super-Promoter Eliminates Competition, Concert Fans Pay The Price, And The Sherman Act Waits In The Wings, 41 J. Marshall L. Rev. 527 (2008), Laura C. Howard

UIC Law Review

No abstract provided.

Judging Expertise In Copyright Law, 14 J. Intell. Prop. L. 1 (2006), William K. Ford

UIC Law Open Access Faculty Scholarship

No abstract provided.

American Courts Are Drowning In The "Gene Pool": Excavating The Slippery Slope Mechanisms Behind Judicial Endorsement Of Dna Databases, 39 J. Marshall L. Rev. 115 (2005), Meghan Riley

UIC Law Review

No abstract provided.

Public Use Or Experimental Use: Are Clinical Trials Susceptible To Another Attack Similar To That In Smithkline Beecham Corp. V. Apotex Corp., 39 J. Marshall L. Rev. 149 (2005), Nimalka Wickramasekera

UIC Law Review

No abstract provided.

Intellectual Property Law Decisions Of The Seventh Circuit, 36 J. Marshall L. Rev. 857 (2003), Molly Mosley-Goren

UIC Law Review

No abstract provided.

Budweiser Or Budweiser, 32 J. Marshall L. Rev. 1251 (1999), Jitka Smith

UIC Law Review

No abstract provided.

Federal Circuit's Forgotten Lessons: Annealing New Forms Of Intellectual Property Through Consolidated Appellate Jurisdiction, 32 J. Marshall L. Rev. 581 (1999), Chris J. Katopis

UIC Law Review

No abstract provided.

Licensed To Steal: Has Sovereign Immunity Gone Too Far, 32 J. Marshall L. Rev. 779 (1999), Sulaiman M. Qazi

UIC Law Review

No abstract provided.

Conflicts And The Federal Circuit, 29 J. Marshall L. Rev. 835 (1996), Glenn L. Archer Jr.

UIC Law Review

No abstract provided.

Growing Pains For The Board Of Patent Appeals And Interferences: A Plan For Restoring Judicial Independence, 29 J. Marshall L. Rev. 171 (1995), Scott E. Baxendale

UIC Law Review

No abstract provided.

Common Sense, Simplicity And Experimental Use Negation Of The Public Use And On Sale Bars To Patentability, 29 J. Marshall L. Rev. 1 (1995), William C. Rooklidge, Stephen C. Jensen

UIC Law Review

No abstract provided.