Law Commons^™

Focusing Patent Litigation, Bernard Chao

Sturm College of Law: Faculty Scholarship

Patent litigation is often called the “sport of kings.” While that phrase may not be appropriate for all patent disputes, it is an apt description of the high-stakes cases. Attorneys in these lawsuits tend to zealously advocate for their respective sides by asserting every argument that they can legitimately raise. Patentees often assert an excessive number of patent claims and even pile on unnecessary patents. Some of these claims may be well-founded. But so long as they can make a colorable infringement argument, patentees typically include many weaker claims too. Likewise, patent defendants respond with burdensome and duplicative invalidity defenses. …

Saliency, Anchors & Frames: A Multicomponent Damages Experiment, Bernard Chao

Sturm College of Law: Faculty Scholarship

Modern technology products contain thousands, sometimes hundreds of thousands, of different features. Nonetheless, when electronics manufacturers are sued for patent infringement, these suits typically accuse only one feature, or in more complex suits, a handful of features, of actual patent infringement. But damages verdicts often do not reflect the relatively small contribution an individual patent makes to an infringing product. One study observed that verdicts in these types of cases average 9.98% of the price of the entire product. While both courts and commentators have blamed the law of patent damages, the role cognitive biases play in these outsized damages …

Lost Profits In A Multicomponent World, Bernard Chao

Sturm College of Law: Faculty Scholarship

Given our adversarial system, it is not surprising that plaintiffs advance creative damages theories that would help them maximize their recoveries. In patent law, one recurring tactic for patentees is to seek remedies based on the entire infringing product instead of the specific feature covered by the patent. This distinction can significantly inflate remedies because modern multicomponent products contain thousands, sometimes hundreds of thousands, of different features. Thus, entire products are orders of magnitude larger, more complex, and more valuable than individual features.

In recent years, the Supreme Court has sensibly rejected attempts to base patent remedies on entire products …

Testing The White Hat Effect In Patent Litigation, Bernard Chao, Roderick O’Dorisio

Sturm College of Law: Faculty Scholarship

Ideally, juries assess cases on the evidence presented at trial. To the extent that they are unrelated to the merits, the identities of the parties or their individual stories should not matter. But jurors are human, and both academics and practicing lawyers have long believed that how parties frame their cases to the jury can influence outcomes.' We examine two such frames common to patent law. First, we look at whether accused infringers can improve their chances of prevailing by being the aggressor. Prior studies have observed that accused infringers that file declaratory judgment actions to vindicate their rights win …

Countering The Plaintiff’S Anchor: Jury Simulations To Evaluate Damages Arguments, John Campbell, Bernard Chao, Christopher Robertson, David Yokum

Sturm College of Law: Faculty Scholarship

Numerous studies have shown that the amount of a juror's damages decision is strongly affected by the number suggested by the plaintiffs attorney, independent of the strength of the actual evidence (a psychological effect known as "anchoring"). For scholars and policymakers, this behavior is worrisome for the legitimacy and accuracy of jury decisions, especially in the domain of non-economic damages (e.g., pain and suffering). One noted paper even concluded that "the more you ask for, the more you get. " Others believe that the damage demand must pass the "straight-face" test because outlandishly high demands will diminish credibility and risk …

Trademark Laundering, Useless Patents, And Other Ip Challenges For The Marijuana Industry, Sam Kamin, Viva Moffat

Sturm College of Law: Faculty Scholarship

Marijuana law is changing rapidly in the United States today – since 1996, 23 states and the District of Columbia have legalized medical marijuana and five jurisdictions have made marijuana legal for all adults. Because marijuana remains a prohibited substance under federal law, however, the states are significantly limited in their ability to control marijuana policy within their borders. For example, because banking is regulated by the federal government, state-licensed marijuana businesses cannot gain full access to banking services; because bankruptcy is a federal benefit, it is unavailable to those involved in the business of violating federal law.

This article …

Patent Imperialism, Bernard Chao

Sturm College of Law: Faculty Scholarship

With a few narrow exceptions, U.S. patent law concerns itself with activity that either occurs within this country’s borders or crosses its borders. In the typical case, that means that a patentee can recover lost profits or reasonable royalties based on the domestic sales of infringing products. However, patentees have begun to successfully advance a new and creative approach that this Essay labels the “worldwide causation” theory. So long as some domestic infringement can be said to cause sales overseas, patentees argue that there should be no territorial limitation on their recovery, allowing recovery for damages suffered anywhere in the …

The Infringement Continuum, Bernard Chao

Sturm College of Law: Faculty Scholarship

For many years, patent law has struggled with the issue of permissible claim scope. A patent’s specification and its claims often suffer from a surprising disconnect. The specification generally describes an invention in terms of one or more specific implementations, suggesting a relatively narrow invention. But claims are drafted far more broadly. They frequently encompass unforeseen variations and even cover after-arising technology.

Although there are numerous existing doctrines that try to prevent claims from straying too far from their specification, these doctrines offer binary outcomes ill suited for patent law. Under these doctrines, as a claim encompasses subject matter further …

A Case Study Of Patent Litigation Transparency, Bernard Chao, Derigan Silver

Sturm College of Law: Faculty Scholarship

By focusing on a single high profile patent case, Monsanto v. DuPont, this article explores the problem of transparency in patent litigation from two perspectives. First, this article provides metrics for understanding the nature and quantity of documents that were filed under seal in the Monsanto case. Second, this article scrutinizes particular aspects of the case to provide a more nuanced understanding of what the public cannot see. Although primarily descriptive, this article critically analyzes the sealing of so many documents by questioning the level of judicial oversight applied in decisions to seal court filings. It then goes on to …

Finding The Point Of Novelty In Software Patents, Bernard Chao

Sturm College of Law: Faculty Scholarship

The issue of patentable subject matter eligibility is in considerable flux. In 2012, the Supreme Court set forth a confusing new framework for determining patent eligibility. The decision in Mayo v. Prometheus cast serious doubt on the continued viability of many software patents. Indeed, a split quickly emerged in the Federal Circuit. As a result, it was unclear whether adding computer limitations to an otherwise unpatentable concept somehow renders the concept patent-eligible. In an attempt to settle this question, the Federal Circuit granted a petition to rehear the issue en banc. But in CLS Bank Int’l v. Alice Corp., the …

Reconciling Foreign And Domestic Infringement, Bernard Chao

Sturm College of Law: Faculty Scholarship

This article proceeds in four parts. In Part II, I describe the primary theories of infringement: direct infringement, inducement and contributory infringement. Part II highlights two important characteristics of each of these theories-the intent required to commit infringement and the presence or absence of express territorial limitations. In short, direct infringement is a strict liability offense that only applies to conduct in the United States. Inducement requires the intent to infringe and has no territorial limitation. And contributory infringement requires the intent to infringe, but only applies to acts committed in the United States.

In Part III, I explain how …

Moderating Mayo, Bernard Chao

Sturm College of Law: Faculty Scholarship

The Supreme Court’s latest pronouncements on patentable subject matter in Mayo v. Prometheus have already created a firestorm of controversy. The Court found that various limitations did not add enough to the law of nature that lies at the heart of Prometheus’ medical diagnostic patents to render the claims patent eligible. Because the Supreme Court never explained what “enough” is, critics have been quick to deride Mayo and warn that it would radically limit patent eligibility in a wide-ranging number of industries. Although I agree with the ultimate result reached by the Supreme Court, I am also concerned that its …

The Case For Contribution In Patent Law, Bernard Chao

Sturm College of Law: Faculty Scholarship

Under tort law’s theory of contribution, when one party is sued, it can implead other parties that may be jointly and severally liable and ask that they pay their fair share of any judgment. Although contribution theory has spread to numerous wide-ranging areas of the law, patent law is not among them. Thus, when a manufacturer is sued for patent infringement, it cannot seek contribution from the component supplier that included the patented technology in its component. This omission from patent law has generated surprisingly little commentary. In the few instances where an accused infringer has sought a right of …

Breaking Aro’S Commandment: Recognizing That Inventions Have Heart, Bernard Chao

Sturm College of Law: Faculty Scholarship

Based on the landmark 1961 Supreme Court decision, Aro Manufacturing Co. v. Convertible Top Replacement Co., the long held wisdom in patent law has been that there is no heart or gist of the invention. In other words, patent law does not attribute any special significance to a particular subset of claim limitations regardless of how important those limitations are. Under Aro, judges and juries are told that they need to view all the limitations, even stock components, with equal significance. They must resist focusing on the heart of the invention when making any decision.

Aro’s commandment has spread far …

Rethinking Enablement In The Predictable Arts - Fully Scoping The New Rule, Bernard Chao

Sturm College of Law: Faculty Scholarship

In exchange for granting inventors a limited monopoly, the patent laws require inventors to "enable" the public to make and use their invention. In Liebel-Flarsheim Co. v. Medra4, Inc., Automotive Technologies International, Inc. v. BMW of North America, Inc., and Sitrick v. Dream works, L.L.C., the Federal Circuit made it far easier to show that patents are invalid based on lack of enablement in the predictable arts. These decisions rely on the enablement doctrine to invalidate claims that appear to be far broader in scope than what the written description of the patents suggests.

This Article: (1) explains the rationale …