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Articles 1 - 10 of 10
Full-Text Articles in Law
A Statutory Anti-Anti-Suit Injunction For U.S. Patent Cases?, Jorge L. Contreras
A Statutory Anti-Anti-Suit Injunction For U.S. Patent Cases?, Jorge L. Contreras
Utah Law Faculty Scholarship
Litigation relating to fair, reasonable and non-discriminatory (FRAND) licensing of patents essential to industry standards has recently seen a sharp increase in cross-jurisdictional competition fueled by the trend of courts in some jurisdictions (particularly China) to seek to establish FRAND royalty rates applicable around the world, and the increased use of anti-suit injunctions (ASIs) to prevent parties from pursuing parallel litigation in other jurisdictions. The proposed “Defending American Courts Act” (DACA), introduced to the U.S. Senate Judiciary Committee in March 2022, seeks to deter the use of foreign-issued ASIs in U.S. patent litigation. The DACA would effectively create a statutory …
Assessing Responses To The Pto’S 2021 Patent Eligibility Study, Jorge L. Contreras, Victoria T. Carrington
Assessing Responses To The Pto’S 2021 Patent Eligibility Study, Jorge L. Contreras, Victoria T. Carrington
Utah Law Faculty Scholarship
In July 2021, the US Patent and Trademark Office (PTO) issued a public request for comments regarding the impact of recent patent eligibility jurisprudence on US businesses and markets. The PTO received 145 responses to its request by the October 2021 deadline. In this paper, we analyze the responses by industry sector and respondent type, assessing whether responses were generally positive, neutral or negative toward US patent eligibility jurisprudence, and also identifying those responses that cited international competitiveness of US businesses (particularly with respect to China) in their reasoning.
Anti-Suit Injunctions And Jurisdictional Competition In Global Frand Litigation: The Case For Judicial Restraint, Jorge L. Contreras
Anti-Suit Injunctions And Jurisdictional Competition In Global Frand Litigation: The Case For Judicial Restraint, Jorge L. Contreras
Utah Law Faculty Scholarship
The proliferation of international jurisdictional conflicts and competing “anti-suit injunctions” in litigation over the licensing of standards-essential patents has raised concerns among policy makers in the United States, Europe and China. This article suggests that national courts temporarily “stand down” from assessing global “fair, reasonable and nondiscriminatory” (FRAND) royalty rates while international bodies develop a more comprehensive, efficient and transparent methodology for resolving issues around FRAND licensing.
Preliminary Injunctive Relief In Patent Cases: Repairing Irreparable Harm, John C. Jaros, Jorge L. Contreras, Robert L. Vigil
Preliminary Injunctive Relief In Patent Cases: Repairing Irreparable Harm, John C. Jaros, Jorge L. Contreras, Robert L. Vigil
Utah Law Faculty Scholarship
Unlike a permanent injunction, which is an equitable remedy awarded to an injured party, a preliminary injunction is a form of interlocutory relief that is imposed by a court to preserve the status quo during litigation. In patent cases decided since (and often before) the Supreme Court’s 2006 decision in eBay v. MercExchange, courts have applied a four-factor test when considering the issuance of a permanent injunction. A similar test has evolved for preliminary injunctions, following the Court’s decision in Winter v. NRDC. Both the eBay and Winter tests rely heavily on whether the patentee is likely to suffer “irreparable” …
Patents On 5g Standards Are Not Matters Of National Security, Jorge L. Contreras
Patents On 5g Standards Are Not Matters Of National Security, Jorge L. Contreras
Utah Law Faculty Scholarship
Recent arguments for stronger patent rights, particularly on 5G wireless telecommunications technologies, are relevant to discussions of national industrial policy and economic development, but are not matters of national security.
Certification (And) Marks – Understanding Usage And Practices Among Standards Organizations, Brad Biddle, Vigdis Bronder, Jorge L. Contreras
Certification (And) Marks – Understanding Usage And Practices Among Standards Organizations, Brad Biddle, Vigdis Bronder, Jorge L. Contreras
Utah Law Faculty Scholarship
In addition to creating technical standards that describe how different products or services interoperate, many standards development organizations (SDOs) also perform testing services that are designed to ensure that products that ostensibly comply with a standard actually work together. SDOs frequently call this process “certification,” and authorize implementers that pass the testing process to use a logo or similar mark. Certification marks are a type of trademark that would seem to be tailor-made for this process. Our empirical analysis shows that SDOs use certification marks only relatively rarely, however. This dissonance is striking, providing insight into both the remarkably sophisticated …
'In The Public Interest' - University Technology Transfer And The Nine Points Document – An Empirical Assessment, Jorge L. Contreras
'In The Public Interest' - University Technology Transfer And The Nine Points Document – An Empirical Assessment, Jorge L. Contreras
Utah Law Faculty Scholarship
In 2007, eleven major U.S. research universities and the Association of American Medical Colleges signed an accord titled “In the Public Interest: Nine Points to Consider in Licensing University Technology.” It outlined a range of issues that universities should consider when licensing their technology to the private sector - from reservations of rights and limitations on exclusivity to refraining from dealing with patent assertion entities to making medical technologies accessible at affordable prices. More than talking points, the document proposed specific contractual clauses intended to promote the educational and public welfare missions of universities. Today, more than one hundred academic …
Patent Reality Checks: Eliminating Patents On Fake, Impossible And Other Inoperative Inventions, Jorge L. Contreras
Patent Reality Checks: Eliminating Patents On Fake, Impossible And Other Inoperative Inventions, Jorge L. Contreras
Utah Law Faculty Scholarship
The recent assertion of patents originally held by Theranos, the defunct blood analysis company whose founders are under federal indictment for fraud, highlights the existence of patents that might claim non-existent or inoperative inventions. While such patents may ultimately be subject to validity challenges in court, their issuance nevertheless has harmful effects on markets and innovation. I propose several administrative and legislative measures directed toward the elimination of patents claiming inoperative inventions including (1) increasing USPTO efforts to detect potentially inoperable inventions, (2) heightening examination requirements, including a certification of enablement, for certain inventions, (3) enabling greater public input into …
Unenjoined Infringement And Compulsory Licensing, Jorge L. Contreras, Jessi Maupin
Unenjoined Infringement And Compulsory Licensing, Jorge L. Contreras, Jessi Maupin
Utah Law Faculty Scholarship
The United States has traditionally held a dim view of compulsory patent licensing, which occurs when a government mandates the licensing of privately held patents to a third party in order to advance a public goal. Yet following the U.S. Supreme Court’s 2006 decision in eBay v. MercExchange, federal courts have denied a substantial number of requests for permanent injunctions following a finding of patent infringement. Without an injunction, an infringing party may continue to practice the infringed patent subject, in most cases, to the payment of a courtapproved ongoing royalty. In the years following eBay, courts and scholars have …
Balance And Standardization: Implications For Competition And Antitrust Analysis, Justus Baron, Jorge L. Contreras, Pierre Larouche
Balance And Standardization: Implications For Competition And Antitrust Analysis, Justus Baron, Jorge L. Contreras, Pierre Larouche
Utah Law Faculty Scholarship
Most technical standards development organizations (SDOs) have adopted internal policies embodying “due process” criteria such as openness, balance of interests, consensus decision making, and appeals. Unlike other aspects of SDO governance, relatively little scholarly research has considered the history, scope, and interpretation of SDO balance requirements. Likewise, existing case law and agency guidance offer little assistance in understanding precisely how these balance principles translate into specific antitrust requirements that apply to standards development. Given the absence of specific guidance on the meaning and implications of balance requirements for SDOs under the antitrust laws, it is necessary to review the development …