Law Commons^™

Nothing Is Patentable, Michael Risch

Michael Risch

Layered Patent System, Michael Risch

Michael Risch

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, …

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, …

An Empirical Look At Trade Secret Law's Shift From Common To Statutory Law, Michael Risch

Michael Risch

Like many of its unfair competition brethren, trade secret law developed in the courts of England and the United States. In 1979, the Uniform Trade Secrets Act, affectionately known as the UTSA, was introduced. The UTSA has since become widely adopted - forty-six states now follow it. The UTSA did not represent a complete break from the common law, and there is a lingering influence of the common law over core aspects of trade secret law, even when that law conflicts with newer statutory provisions. Anecdotal studies have considered the continuing influence of the common law, but, to date, no …

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 …

Ip And Entrepreneurship In An Evolving Economy: A Case Study, Michael Risch

Michael Risch

What if you built an intellectual property clinic and hardly anyone came? This brief book chapter is a case study of the first two years of a new entrepreneurship law clinic in an evolving economy: West Virginia. While the clinic had entrepreneurial clients, those clients had developed little intellectual property. This chapter takes a closer look at the chicken-and-egg problem of knowledge development in an evolving economy, and concludes that law clinics can only support IP growth - they cannot create it on their own. The chapter then generalizes from the experience to suggest ways that law clinics can support …

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 …

A Failure Of Uniform Laws?, Michael Risch

Michael Risch

The Uniform Trade Secrets Act, adopted in forty-six states over 30 years, illustrates an important purpose of uniform laws: allowing states to adopt sister-state statutory interpretation when they enact the uniform statute. The case law of each UTSA state should theoretically apply in every other state adopting it, which provides an important benefit for small states that do not have enough litigation activity to generate their own substantial trade secret case law. This essay tests this purpose. It examines one small state’s opinions to see how much uniformity the UTSA provides. The results are somewhat surprising: the test state’s courts …

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. …

Trade Secret Law And Information Development Incentives, Michael Risch

Michael Risch

Trade secrets differ from other forms of intellectual property in many subtle ways that affect incentives to invest in information development. These differences relate not only to the types of information protected, but also to the requirements one must meet to protect that type of information. The various divergences and intersections of trade secret laws with other intellectual property laws lead to differences in the amount and types of investments companies make in developing information. This chapter explores five types of differential incentives associated with trade secret law: - Trade secret law v. no trade secret law - Trade secret …

Comments On Trade Secret Sharing In High Velocity Labor Markets, Michael Risch

Michael Risch

This essay is an edited and supplemented version of comments made during the 2008 AALS Annual Meeting Section on Law & Economics panel. The comments relate to information sharing in high velocity labor markets such as Silicon Valley, as discussed by presenter Alan Hyde. The essay discusses four topics. First, it agrees with the principle that trade secret law does generally not provide an independent incentive to generate secret information. Second, it asserts that trade secret law in California is strong when applied to valuable information, and that "information sharing" in high velocity markets is likely primarily tangential to core …

Virtual Third Parties, Michael Risch

Michael Risch

In virtual worlds, where 20 million people spend $200 million each year, rules of life are governed by contract, and three-party transactions are ubiquitous; every exchange of virtual cash, property, sound, pictures, and even conversation introduces a third party into the contractual relationship between user and virtual-world provider. Whenever a contract affects a non-party, the third-party beneficiary ("TPB") doctrine might apply; to date, however, the practical and theoretical boundaries of this important doctrine's application to virtual worlds have yet to be explored, perhaps because of an overly narrow doctrinal conception. Many states have loosened TPB requirements somewhat; most have adopted …

Virtual Rule Of Law, Michael Risch

Michael Risch

This article, which follows a presentation at the West Virginia Law Review Digital Entrepreneurship Symposium, is the first to consider whether virtual worlds provide a rule of law that sets expectations for virtual business. Many consider the rule of law a catalyst for economic development, and there is reason to believe that it will be equally important in virtual economies, despite differences from the real world. As more people turn to virtual worlds to earn a livelihood, the rule of law will become prominent in encouraging investments in virtual business. The article finds – unsurprisingly – that virtual worlds now …

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 …

Why Do We Have Trade Secrets?, Michael Risch

Michael Risch

Trade secrets are arguably the most important and most litigated form of intellectual property, yet very little has been written that justifies their existence, perhaps because they differ so much from other forms of intellectual property. This article explores the history of trade secret law in the United States and examines why it is that every state has opted to protect secret information, even though such protection is antithetical to the policies of access associated with patent law and non-protection of 'facts' associated with copyright law. In this article, I examine four potential ways to justify trade secret law. First, …

How Can Whelan V. Jaslow And Lotus V. Borland Both Be Right? Re-Examining The Economics Of Computer Software Reuse, Michael Risch

Michael Risch

The basic economic goal of copyright law is to balance an author's incentive to create with his or her ability to build on prior work in order to maximize social wealth. This balance is extremely important for computer software. On the one hand, software is often expensive to create and companies therefore need protection in order to recoup their investment. On the other hand, software is often expensive to create and companies can save costs by reusing pre-existing work. Quite often, the same companies that want to protect their software also want to use pre-existing work. As a result of …