Law Commons^™

The Federal Circuit's Treatment Of Rule 12 Dismissals For Lack Of Patent Eligible Subject Matter, Andrew Kanel

Akron Law Review

After the Supreme Court’s decision in Alice Corp. v. CLS Bank, there has been an increase in Federal Rule of Civil Procedure (Rule) 12 motions to dismiss for lack of patentable subject matter. These motions are often granted at the district court level and are predominantly upheld by the U.S. Court of Appeals for the Federal Circuit (Federal Circuit). This trend creates a hostile environment for inventors and patent holders and threatens to curb innovation in various areas including computer software, biotechnology, and medical diagnostics. The Federal Circuit’s current application of the Alice test at the Rule 12 stage favors …

Obviousness-Type Double Patenting: Why It Exists And When It Applies, Daniel Kazhdan

Akron Law Review

At least since 1819, courts have prohibited double patenting—where an inventor has two patents on the same or obvious variations of the same invention. There have always been two basic justifications for prohibiting double patenting. The first focused on the patentee: bad actors might try to improperly extend their patent monopoly by filing serial applications. The second focused on the public’s rights: the bargain of the patent is that in exchange for the inventor getting a term-limited patent, the public is entitled to use the claimed invention (and its obvious variations) once the patent expires. This public-rights rationale is broader, …

A Tale Of Two Copyrights, Glynn S. Lunney Jr.

Akron Law Review

This essay explores two possible copyright regimes. The first uses costless and perfect price discrimination to enable copyright owners to capture the full market or exchange value of their work. The second also uses costless and perfect price discrimination, but allows copyright owners to capture only the persuasion cost for authoring and distributing a work. We can call the first regime, costless copyright maximalism, and the second, costless copyright minimalism. The choice between these two regimes is primarily distributional: Should we design copyright to allocate the surplus associated with copyrighted works to copyright owners or to copyright consumers? This essay …

An Inside History Of The Burger Court's Patent Eligibility Jurisprudence, Christopher B. Seaman, Sheena X. Wang

Akron Law Review

Patent eligibility is one of the most important and controversial issues in intellectual property law. Although the relevant constitutional and statutory text is extremely broad, the Supreme Court has significantly narrowed the scope of patentable eligibility by creating exceptions for inventions directed to abstract ideas, laws of nature, and natural phenomenon. In particular, the Supreme Court’s decisions on this issue over the past decade have created considerable uncertainty regarding the patentability of important innovations. As a result, numerous stakeholders have called for reform of the current rules regarding patent eligibility, and members of Congress have introduced legislation to amend the …

Risk Taking And Rights Balancing In Intellectual Property Law, Clark D. Asay

Akron Law Review

Scholars have long worried that risk aversion can have significant negative effects in the marketplace. In the intellectual property law domain, some have worried that risk-averse actors can negatively influence the development of important intellectual property law doctrines, which can ultimately hamper innovation. For instance, risk-averse actors may frequently choose to obtain licenses for rights that the relevant laws do not actually require of them. When they do so, they inadvertently increase the scope of intellectual property rights because their risk-averse activities inform courts’ development of key intellectual property law doctrines.

In this Article, prepared as part of the IP …

The "Evergreening" Metaphor In Intellectual Property Scholarship, Erika Lietzan

Akron Law Review

This article is a plea for changes in the scholarly dialogue about “evergreening” by drug companies. Allegations that drug companies engage in “evergreening” are pervasive in legal scholarship, economic scholarship, medical and health policy scholarship, and policy writing, and they have prompted significant policymaking proposals. This Article was motivated by concern that the metaphor has not been fully explained and that policymaking in response might therefore be premature. It canvasses and assesses the scholarly literature—more than 300 articles—discussing or mentioning “evergreening.” It catalogues the definitions, the examples, and the empirical studies. Scholars use the term when describing certain actions taken …

Correcting Misunderstandings Of Literal Infringement Scope Regarding After-Arising Technologies Protected By The Doctrine Of Equivalents, Joshua D. Sarnoff

Akron Law Review

Based on conflicting Federal Circuit case law, many academics have written, and many practitioners likely believe, that claim meanings or their applications may expand over time for purposes of literal infringement. But this common wisdom is wrong. Under existing Federal Circuit rules, the first precedent controls in the event of a conflict over doctrine, unless and until reversed en banc. The first precedent on the issue, the 2000 Schering Corp. v. Amgen, Inc. case, held that claim scope does not reach after-arising technologies for literal infringement and suggested that if it did, then such claims would lack written description support. …