Intellectual Property Law Commons^™

Maturing Patent Theory From Industrial Policy To Intellectual Property, Oskar Liivak

Oskar Liivak

We have always known that technological progress is important and this country has always aimed to promote it. A large part of that responsibility has fallen on the shoulders of the patent system. Embarrassingly, despite over two hundred years of experience, we still do not actually know if the patent system helps or hinders technological progress. This Essay argues that the problem is not the patent system but rather patent theory. Patent theory suffers from three linked problems: exceptionalness, indeterminacy, and animosity. First, patent law is seen as a necessarily unique exception to the overall market economy. By artificially making …

Establishing An Island Of Patent Sanity, Oskar Liivak

Oskar Liivak

There is a growing, inescapable sense that something has gone terribly wrong with the patent system. The patent system is described as a failure, broken, and dysfunctional. Yet, despite the fact that much of today’s headline-grabbing patent activity appears facially unproductive, we really can’t be sure that the system has failed in its mission. Current patent theory is so indeterminate that it is hard to decisively criticize these activities. In fact, the current narrative cannot conclusively show that patent trolls or any other patent-related activities are or are not economically justified. Though depressing and perhaps embarrassing, this patent indeterminacy is …

Patents, Genetically Modified Foods, And Ip Overreaching, Elizabeth A. Rowe

Elizabeth A Rowe

Genetically engineered plants and animals have become and will continue to constitute a large part of the food we consume. The United States is the world's largest producer of genetically modified foods, making American consumers the most exposed population to these products. Agricultural biotechnology patents spur and support innovation. Accordingly, patent law is one of the main contributors to this phenomenon that has changed not only the kinds of food we eat, but the nature of the agri-business industry that produces these foods. This Article takes on an area of concern involving the patenting of food that has remained unexplored: …

Trolls Or Great Inventors: Case Studies Of Patent Assertion Entities, Ryan Holte

Prof. Ryan T. Holte

There has been much debate about the economic harms caused by patent infringement lawsuits filed by patent holders who do not make or sell products covered by their own patents—entities pejoratively referred to as “patent trolls.” This debate has thus far been largely theoretical or based on broad industry-wide data. The purpose of this article is to present a focused empirical report that has previously been lacking—detailed information regarding the inventors themselves, the patent assertion entities (PAEs) that represent them, and the stories behind their patents. The research for this article centers on two instructive case studies: (1) MercExchange, L.L.C., …

The Shield Act: A Good Attempt At Curbing Patent Trolls That Leaves Us Wanting More, Adina Sivaraman

The Journal of Business, Entrepreneurship & the Law

This Comment explores the SHIELD Act in its entirety. Part II examines the historical background of the patent troll issue--focusing on former legislation and case law that sought to curb patent troll lawsuits. Part III discusses what the SHIELD Act is and what it aims to do. Part IV analyzes the positive and negative effects that the SHIELD Act would have if passed and takes a look at other options for limiting patent troll litigation, while ultimately contending that the SHIELD Act should be reformed to take a stronger stand against patent trolls by taking into account other proposed reforms. …

Whodunnit? Divided Patent Infringement In Light Of Akamai Technologies, Inc. V. Limelight Networks, Inc., Mark Tomlinson

The Journal of Business, Entrepreneurship & the Law

This Note provides background information on divided patent infringement in the United States with emphasis on landmark cases and the previous understanding of the Patent Act. Part II provides background information on the underlying controversies and the software at issue in each case. Part III discusses the opinions of the factions of the court, and Part IV dissects the reasoning of each. Part V examines the implications of Akamai on businesses and other method patent holders while acknowledging that the future of the court's holding remains uncertain.

Teece's Competing Through Innovation, Herbert J. Hovenkamp

All Faculty Scholarship

This essay reviews David J. Teece's book, Competing Through Innovation: Technological Strategies and Antitrust Policies (2013).

The Rule Of Reason And The Scope Of The Patent, Herbert Hovenkamp

Herbert Hovenkamp

For a century and a half the Supreme Court has described perceived patent abuses as conduct that reaches "beyond the scope of the patent." That phrase, which evokes an image of boundary lines in real property, has been applied to both government and private activity and has many different meanings. It has been used offensively to conclude that certain patent uses are unlawful because they extend beyond the scope of the patent. It is also used defensively, however, to characterize activities as lawful if they do not extend beyond the patent's scope. In the first half of the twentieth century …

Gender Diversity In The Patent Bar, Saurabh Vishnubhakat

Faculty Scholarship

This article describes the state of gender diversity across technology and geography within the U.S. patent bar. The findings rely on a new gender-matched dataset, the first public dataset of its kind, not only of all attorneys and agents registered to practice before the United States Patent and Trademark Office, but also of attorneys and agents on patents granted by the USPTO. To enable follow-on research, the article describes all data and methodology and offers suggestions for refinement. This study is timely in view of renewed interest about the participation of women in the U.S. innovation ecosystem, notably the provision …

One Hundred Nos: An Empirical Analysis Of The First 100 Denials Of Institution For Inter Partes And Covered Business Method Patent Reviews, Jonathan R. K. Stroud, Jarrad Wood

Jonathan R. K. Stroud

Tasked in 2011 with creating three 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 Appeals Board—set to creating a fast-paced trial with minimal discovery and maximum efficiency. In the first two years of existence, the proceedings have proved potent, holding unpatentable many of the claims that reach 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. Parties on …

Patents, Antitrust, And The Rule Of Reason, Herbert Hovenkamp

Herbert Hovenkamp

Antitrust law has historically immunized many patent agreements if they fell within the "scope of the patent." Three dissenting Justices in the Actavis case advocated this test: a pharmaceutical pay-for-delay settlement falls within the scope of the patent if it delays a competitor's entry no longer than the remaining life of the patent. In that case the patentee will not be obtaining any more than it would from a valid patent -- namely, the right to exclude infringers for the full patent term.

The "scope of the patent" test is not useful for defining the boundaries of antitrust immunity in …

Which Patent Systems Are Better For Inventors?, James Bessen, Grid Thoma

Faculty Scholarship

International comparisons of patent systems are essential to harmonization treaties and to analyze economic growth. Yet these comparisons often rely on little but conventional wisdom. This paper develops an empirical method to compare the economic strength and quality of patent systems by using renewal analysis of matched patents in different countries (same patent family). Comparing patents on the same inventions filed at the EPO for Germany and in the US, we find that the German patents generate substantially greater market power than their US equivalents, especially for small inventors. Also, the average US patent has relatively lower economic value (“quality”).

Federal Circuit's Obviousness Test For New Pharmaceutical Compounds: Gobbledygook?, Douglas L. Rogers

Chicago-Kent Journal of Intellectual Property

No abstract provided.

Patent, But Where Is Home And Global Justice? A Rawlsian And Senian Inquiry, Deming Liu

Chicago-Kent Journal of Intellectual Property

No abstract provided.

Making Room For Cooperative Innovation, Liza S. Vertinsky

Florida State University Law Review

Patent law, created in response to a constitutional mandate to encourage innovation, may be discouraging important forms of cooperative innovation. Advances in technology have enabled new ways of pooling knowledge and computational capabilities, facilitating cooperation among many participants with complementary skills and motivations to collectively solve complex problems. But emerging models of cooperative innovation increasingly run into patent roadblocks.

Why might patent law sometimes thwart instead of support socially beneficial cooperative innovation? The problem lies in the tensions between the market-based incentives that patent law creates and the mechanisms that support emerging models of cooperative innovation. The complexity and cost …

Competing With The “Patent Court”: A Newly Robust Ecosystem, Arti K. Rai

Chicago-Kent Journal of Intellectual Property

In a provocative address, Chief Judge Wood of the Seventh Circuit Court of Appeals suggests exposing the Court of Appeals for the Federal Circuit, created in 1982 to hear all appeals from patent cases, to competition from sister appellate courts. This response, published as part of a Symposium on Chief Judge Wood's address, argues that competition is indeed desirable. Whether such competition is best provided by other appellate courts is unclear, however. The more tractable approach is to improve competitive input from sources that have already emerged. These include dissenting Federal Circuit judges, parties and amici who are not "patent …

Federal Circuit Exclusive Appellate Patent Jurisdiction: A Response To Chief Judge Wood, Harold C. Wegner

Chicago-Kent Journal of Intellectual Property

No abstract provided.

It’S Blonder-Tongue All Over Again, Alex Kozinski, Daniel Mandell

Chicago-Kent Journal of Intellectual Property

No abstract provided.

Reconciling Twombly And Patent Pleadings Beyond The Text Of Form 18, Yoonhee Kim

Chicago-Kent Journal of Intellectual Property

No abstract provided.

The 360° Of Information Fluency Delivery To Freshman Engineering Students, Marian G. Armour-Gemmen, Robin A.M. Hensel, Mary L. Strife

Faculty & Staff Scholarship

For three years, engineering librarians from West Virginia University (WVU) have been teaching information fluency skills to 700-1000 freshman engineering students per year, using a specific information fluency cycle. The librarians’ responsibilities in the Fall 2013 course syllabus included teaching once in each section, providing a two-hour, in-library group sessions to accommodate almost 700 students, delivering an intellectual property Blackboard™ module for students to complete over a specific period of time, and requiring students to complete a Plagiarism Avoidance Tutorial with quiz. Some of these components are similar to those of past semesters. However, past collection of the data was …

Software Patentability After Prometheus, Joseph Holland King

Georgia State University Law Review

This Note examines the history of patentability of abstract ideas and the tests that courts have used to make the determination of whether an invention incorporating an abstract idea is patentable. Part I provides a history of the four seminal cases related to patentable subject matter, as well as some more recent on point decisions. Part II changes focus to the various tests and factors that have been used by the courts, exploring the history of each, discussing the treatment by the Supreme Court, and determining the strengths and weaknesses of each. Based on the discussion in Part II, Part …

The Trespass Fallacy In The "Software Patent" Debate, Ryan Holte

Prof. Ryan T. Holte

In The Trespass Fallacy in Patent Law, Professor Adam Mossoff details how patent law jurisprudence and scholarship is dominated by an indeterminacy critique or “trespass fallacy” in two respects. Professor Mossoff’s essay, however, only briefly mentions the now paramount contemporary issue surrounding the more-focused “software patent” debate. In this short essay, I briefly discuss Professor Mossoff’s trespass fallacy analysis as it relates to “software patents” and the Supreme Court’s October 2013 Term case Alice Corp. Pty. Ltd. v. CLS Bank Int’l.

Fixing Notice Failure: How To Tame The Trolls And Restore Balance To The Patent System, Mark Rawls

William & Mary Business Law Review

Patent litigation has become more frequent, more uncertain, and more expensive. Much of this can be traced to the rise of patent trolls asserting vague and uncertain software patents. Trolls have been derided as bringing frivolous and vexatious suits against productive companies, sapping the very same innovativeness that the patent system is supposed to encourage. Instead, companies are subject to nuisance-value suits as an ordinary course of business; for less established companies, such suits can threaten their very existence. Often, because of uncertain rules about claim construction and the granting of very broad patents, the accused infringer has no notice …

Mark Mckenna Was Quoted Ap Story Jury Selection Begins In Apple-Samsung Case On March 31, Mark Mckenna

Mark P. McKenna

Mark McKenna was quoted AP story Jury selection begins in Apple-Samsung case on March 31 “There’s a widespread suspicion that lots of the kinds of software patents at issue are written in ways that cover more ground than what Apple or any other tech firm actually invented,” Notre Dame law professor Mark McKenna said. “Overly broad patents allow companies to block competition.”

Commercialization Awards, Camilla A. Hrdy

Camilla A Hrdy

Some patent law scholars have proposed introducing new forms of patents to promote commercialization of inventions that would not otherwise be commercialized, or at least not within a reasonable period of time. In this Article I suggest that so-called commercialization patents are unnecessary because the United States already has a system for promoting commercialization of inventions that does not require creating unprecedented exclusive rights: direct government financing. Drawing on statutes and administrative codes, I provide an in-depth account of the major commercialization financing options for inventors and entrepreneurs at both the federal and state levels. I then compare these incentives, …

What Patent Attorney Fee Awards Really Look Like, Saurabh Vishnubhakat

Faculty Scholarship

This essay gives an empirical account of attorney fee awards over the last decade of patent litigation. Given the current attention in legislative proposals and on the Supreme Court’s docket to more liberal fee shifting as a check on abusive patent litigation, a fuller descriptive understanding of the current regime is of utmost importance to forming sound patent litigation policy. Following a brief overview of judicial experience in patent cases and trends in patent case filing, this study presents analysis of over 200 attorney fee award orders during 2003-2013.

The study confirms the commonsense view that plaintiffs have tended to …

The Growing Public Domain In Medicine, Saurabh Vishnubhakat

Faculty Scholarship

This essay describes the growing public domain of inventions associated with drugs and medicine, and geographies associated with identifiable shifts in the balance of innovation that may be especially favorable for promoting wider access to socially useful technologies. To do so, it departs from the largely ex ante perspective that currently informs the intersectional debate regarding human rights and patent rights and, instead, looks backward to inquire what innovations from past patents have already become publicly available in service of the human rights objective of greater access to technology. Ex post analysis of this kind may help public and private …

Induced To Infringe: Divided Patent Infringement In Light Of The Akamai Ruling, Sean Africk

Nevada Law Journal

No abstract provided.

Brief Of Amici Curiae Law, Business, And Economics Scholars In Alice Corp. V. Cls Bank, No. 13-298, Jason Schultz, Brian Love, James Bessen, Michael J. Meurer

Faculty Scholarship

The Federal Circuit’s expansion of patentable subject matter in the 1990s led to a threefold increase in software patents, many of which contain abstract ideas merely tethered to a general-purpose computer. There is little evidence, however, to suggest this expansion has produced an increase in software innovation. The software industry was highly innovative in the decade immediately prior to this expansion, when the viability of software patentability was unclear and software patents were few. When surveyed, most software developers oppose software patenting, and, in practice, software innovators tend to rely on other tools to capture market share such as first-mover …

The Standard For Awarding Attorney Fees Under 35 U.S.C. Section 285 To Prevailing Parties In Patent Litigation - Octane Fitness, Llc V. Icon Health & Fitness, Inc. And Highmark, Inc. V. Allcare Health Management Systems, Dennis D. Crouch, Jafon Fearson

Faculty Publications

The Supreme Court granted certiorari in two patent infringement cases that both concern shifting of attorney fees under the “exceptional case” standard of 35 U.S.C. § 285. The Federal Circuit has traditionally been resistant to fee shifting awards—especially in cases where an accused infringer is the prevailing party. In Octane Fitness, petitioner asks the Court to lower the standard for proving an exceptional case. In Highmark, petitioner asks for deference to lower court exceptional case findings.