Law Commons^™

Expanding Patent Law's Customer Suit Exception, Brian J. Love, James C. Yoon

Faculty Publications

Recent years have seen a marked increase in patent suits filed primarily for nuisance value. Non-practicing patent holders like Innovatio, Lodsys, PACid, and many others have collectively sued thousands of alleged patent infringers in cases that generally settle for less than the cost of mounting even the slightest defense. Suits like these overwhelming target the numerous resellers and end users of allegedly infringing products, rather than the accused products’ original manufacturer. More individual defendants means more lawyers, more discovery, and, thus, more litigation costs to inflate settlement amounts. With legislative reform unlikely at present, doctrinal solutions to this problem are …

Patent Trolls By The Numbers, Colleen Chien

Faculty Publications

Following President’s Obama remarks and reintroduction of the SHIELD Act, Congress is holding hearings on patent trolls (aka patent assertion entities or PAEs) on March 14, 2013. One question concerns the prevalence of patent troll demands and other troll metrics, on which I have previously reported. These statistics draw heavily upon proprietary research as well as my own analyses, so, in the interest of full disclosure, this blog post lays out the numbers as I see them, and what I know about them:

• PAEs brought 62% of 2012 patent litigations
• In 2012, PAEs sued more non-tech companies than tech companies …

Overcharging, Kyle Graham

Faculty Publications

The prosecutors in several recent high-profile criminal cases have been accused of “overcharging” their quarry. These complaints have implied — and sometimes expressly asserted — that by “overcharging,” the prosecutors engaged in socially undesirable, illegitimate, and even corrupt behavior. United States Supreme Court Justice Antonin Scalia also weighed in on the “overcharging” phenomenon not long ago, describing this practice as a predictable though regrettable aspect of modern plea bargaining.

Unfortunately, many of these commentators either have failed to explain precisely what they meant by “overcharging,” or have used the same word to describe different types of charging practices. The various …

Does The Us Patent System Need A Patent Small Claims Proceeding?, Colleen Chien, Michael J. Guo

Faculty Publications

Patent litigation is expensive. The primary motivation for the creation of a patent small claims proceeding is to make enforcement more affordable. However, in the twenty or so years since the American Intellectual Property Law Association (AIPLA) first endorsed the idea of a small claims patent court through Resolution 401‐4, the patent litigation landscape has drastically changed. Although patent litigation costs are still high, the equities have shifted. The marketplace for patents has developed, providing more options than previously existed to monetize and assert patents. However, the cost of patent defense has not gone down, and small companies cannot afford …

Will Fda Data Exclusivity Make Biologic Patents Passé?, Vincent J. Roth

Santa Clara High Technology Law Journal

Much controversy has ensued over the current twelve-year data exclusivity period afforded to biosimilars, pursuant to the Biologics Price Competition and Innovation Act of 2009 (BPCI).

Many commentators speculate whether data exclusivity will overtake patents as the preferred method of intellectual property protection for new biologic drugs. A comparison of data exclusivity with the patent system, however, reveals few similarities and many differences. Moreover, legislative gaps and absent industry mechanisms leave a void that is a barrier to entry in the biosimilars market, referred to here as “regulatory impracticality.”

A survey was conducted with senior management at biopharma companies regarding …

State Taxation Of Cloud Computing, Stephen J. Lusch

Santa Clara High Technology Law Journal

As the digital environment in which we live continues to change at speeds that were unfathomable two decades ago, archaic state tax systems have struggled to keep pace. Cloud computing is the latest innovation to introduce considerable complexity into the state and local tax system. Cloud computing is prevalent in many aspects of the user experience with companies such as Apple, Amazon, and Google now providing their traditional services via a cloud component. With three primary service models and countless transactional forms, cloud computing is difficult to fit into most current tax systems. Though some jurisdictions have begun to issue …

Downloading, Distributing, And Damages In The Digital Domain: The Need For Copyright Remedy Reform, Joe Donnini

Santa Clara High Technology Law Journal

Should copyright remedy laws be changed to address the proliferation of sharing of online content? On one hand, harsh penalties may improve compensation and infringement deterrence; on the other hand, harsh penalties may harm the interests of free expression and the enrichment of society through sharing. This article focuses on identifying the ideal level of enforcement and proposes a new remedy scheme to appropriately address social media sharing versus commercial misappropriation.

In order to do that, Part I of this article explores the purposes of compensation and deterrence that are behind the copyright statutory remedy scheme. Thereafter, Part II sheds …

Ten Years Of Inter Partes Patent Reexamination Appeals: An Empirical View, Eric J. Rogers

Santa Clara High Technology Law Journal

An empirical analysis of the first ten years of decisions by the Board Patent Appeals and Interferences regarding inter partes patent reexamination appeals was conducted. The analysis of 101 cases focused on answering three broad questions: (1) How accurate are the specialist patent examiners of the Central Reexamination Unit of the U.S. Patent and Trademark Office? (2) Do patent owners or third party requestors fare better in appeals of decisions in inter partes reexamination proceedings? (3) Which types of appeals are more likely to be successful? The examiners’ determinations were upheld more than three fourths of the time; third party …

Software Patents & Functional Claiming, Colleen Chien, Aashish Karkhanis

Faculty Publications

On Feb 12, 2013, the PTO held a roundtable about software patents at Stanford. Software patents have received a lot of attention and we don't believe it is undue: software patents are behind a disproportionate share of patent litigations -- more specifically, over half (55%) of all patent defendants and 82% of PAE ("patent troll") defendants are there because of a software patent, applying the Graham-Vishnubhakat definition to data provided by RPX Corporation. In this presentation, we more rigorously apply 35 USC 112(f) in accordance with the proposal Mark Lemley outlines in his WIRED oped "Let's Go Back to Claiming …

10 Things The Pto Can Do To Enhance Context-Based Patent Disclosure, Colleen Chien

Faculty Publications

The PTO held a roundtable and solicited comments on a proposal to require Real-Party-in-Interest disclosures in patents. Through this comment, which I submitted to the PTO, I support their efforts to elicit and disseminate ownership data by 1) explaining why ownership information, and context-information in particular, is so important to the core functions of the patent system of technology transfer and technology commercialization; 2) commending and suggesting several steps the PTO could take/continue to take to improve the quality, quantity, and dissemination of ownership information; and 3) providing an Appendix that summarizes each of the 17 comments that the PTO …

The Future Of The American Law School Or, How The 'Crits' Led Brian Tamanaha Astray And His Failing Law Schools Fails, Stephen F. Diamond

Faculty Publications

Debate over the impact of the economic crisis on the future of the American law school has reached an exceptional level of intensity. Brian Tamanaha’s short book, Failing Law Schools, serves as the manifesto for those who believe the law school must undergo radical restructuring and cost cutting. While there is room for disagreement with almost all aspects of the reform argument no critic of Tamanaha has attempted to place his critique in the context of his pre-existing scholarly work on the rule of law. This review essay argues that only an appreciation for the dual nature of the modern …

Masck V. Sports Illustrated, United States District Court For The Eastern District Of Michigan

Historical and Topical Legal Documents

No abstract provided.

Has Delaware Become The "New" Eastern District Of Texas? The Unforeseen Consequences Of The Aia, Fabio E. Marino, Teri H.P. Nguyen

Santa Clara High Technology Law Journal

To stem the rising tide of patent suits brought by non-practicing entities (NPEs), Congress enacted the anti-joinder provisions of the Leahy-Smith America Invents Act (AIA) while, at nearly the same time, the Federal Circuit issued a series of decisions making it easier for defendants to transfer multi-defendant cases filed by NPEs away from the Eastern District of Texas. The unexpected result of these initiatives, however, has been that NPEs have selected the District of Delaware as their new “forum of choice,” making it the most popular forum for patent litigation in the country and displacing the Eastern District of Texas.

Copyright's Hand Abstractions Test For Patent's Section 101 Subject-Matter Eligibility, Mark R. Carter

Santa Clara High Technology Law Journal

Since the Federal Circuit’s 2007 In re Bilski decision and the Supreme Court’s 2008 Bilski v. Kappos decision, patent law’s subject-matter eligibility standard under 35 U.S.C. §101 has been uncertain. This paper posits patent law’s patent-ineligible abstract ideas are science concepts and science laws, composed of science concepts, as defined by science philosophers. Somewhat analogous to copyright law, it also presents a downward patent-eligibility Hand abstractions test from an alleged abstract idea, natural law, or natural phenomenon to independent claims as a coherent, systematic, and practical approach to judging utility-patent eligibility. Patent claims manifest an innate vertical abstractions ladder, so …

Why International Inventors Might Want To Consider Filing Their First Patent Application At The United States Patent Office & The Convergence Of Patent Harmonization And E-Commerce, Michael H. Anderson, Daniel Cislo, Jaime Saavedra, Kimberly Cameron

Santa Clara High Technology Law Journal

On March 16, 2013, the United States implemented the Leahy-Smith America Invents Act (AIA). Enactment of the AIA substantially enhances the value of U.S. provisional and non-provisional patent applications (PPAs and NPAs) to foreign applicants. Here, the authors endeavor to outline the procedural and strategic considerations facing foreign applicants for PPAs by offering a brief survey of protective foreign patent application law, followed by an analysis of the modern benefits of PPA filing in the post-AIA world. The analysis here suggests that the traditional benefits to foreign filers of PPAs encompassing term extension, cost-efficiency and secrecy have been amplified by …

In Privity With The Public Domain: The Standing Doctrine, The Public Interest, And Intellectual Property, Russell W. Jacobs

Santa Clara High Technology Law Journal

This Article explores two recent Supreme Court cases—Association of Molecular Pathology v. Myriad Genetics, Inc. and Golan v. Holder—and other intellectual property litigation in the context of the standing doctrine and the public interest.

These cases present significant public policy questions, but the adversarial nature of the courts makes them ill-equipped to consider the multiple public interests and multiple stakeholder perspectives. As a result, adjudication of these cases in the courts results in propertization of the intellectual property interests, the exclusion of non-parties from the formation of policy, and the exhaustion of any further policy debate after the court decision. …

A Witness Against Himself: A Case For Stronger Legal Protection Of Encryption, Benjamin Folkinshteyn

Santa Clara High Technology Law Journal

This Article examines the application of the Fifth Amendment privilege against self-incrimination to compelled disclosure of unencrypted data. Such disclosure can include provision of passwords to access encrypted data as well as, increasingly, providing unencrypted data after compelled decryption.

The pervasiveness and persistence of electronic data drastically increases the availability of information with potential evidentiary value that has not previously existed with physical evidence. The courts have struggled with finding the appropriate balance in determining the scope and applicability of the privilege against self-incrimination to electronic evidence. The lack of precise physical world analogues to encryption has led to particular …

Litigation Following A Cyber Attack: Possible Outcomes And Mitigation Strategies Utilizing The Safety Act, Brian E. Finch, Leslie H. Spiegel

Santa Clara High Technology Law Journal

Liability for a cyber attack is not limited to the attackers. An attack may be foreseeable in some circumstances, and the failure of the target or the other entities to take steps to prevent the attack can constitute a breach of duty to injured victims. In the absence of the protections provided by the Support Anti-Terrorism By Fostering Effective Technologies (SAFETY) Act, a cyber attack on a chemical facility could give rise to a number of common-law tort and contract claims against the target of the attack and other entities, potentially including the target’s cyber security vendors. This article discusses …

Choosing The Genetics Of Our Children: Options For Framing Public Policy, Girard Kelly

Santa Clara High Technology Law Journal

This paper examines the controversial topic of choosing our children’s genes through human germ-line manipulation otherwise known as Inheritable Genetic Modification (IGM) with current Assisted Reproductive Technologies (ARTs) and future Reproductive Genetic Biotechnologies (RGBs) such as genetic engineering. The purpose of the paper is to examine these potentially revolutionary biotechnologies and the emerging social, and bioethical perspectives advanced by both proponents and opponents—in the context of the legal and regulatory policies impacting ARTs and RGBs. Lastly, the paper recommends new public policy and regulatory frameworks to support future research and development of RGBs by providing legislative guidance to policymakers to …

Bringing Standards To Life: Synthetic Biology Standards And Intellectual Property, Andrew W. Torrance, Linda J. Kahl

Santa Clara High Technology Law Journal

In aspiring to become a true engineering discipline for the biological sciences, the field of synthetic biology has a unique opportunity to create and encourage the widespread adoption of standards to enhance innovation and social impact in the field. This article presents a study of the standards setting efforts by the institutions, firms, governments, and individuals within the field of synthetic biology.

Numerous standards have been proposed in synthetic biology, including those relevant to structure, function, description, measurement, data, information exchange, software, biosafety and biosecurity, and even law. At the present time, the adoption of technical standards has been relatively …

Information Costs And Reverse Payment Settlements: Bridging The Gap Between The Courts And The Antitrust Agencies, Brenna E. Jenny

Santa Clara High Technology Law Journal

Reverse payment settlements have attracted increased scrutiny due to the controversial presence of a payment from a brand-name drug company to a generic company that is ostensibly preparing to infringe on the branded company’s patent. The antitrust agencies and the courts settled into an intergovernmental stalemate regarding the appropriate framework of analysis to apply when reviewing antitrust challenges to these settlements. The FTC and DOJ have viewed the deals skeptically as a vehicle for competitors to split monopoly profits, but the lower courts have generally been deferential to what they identified as an exercise of a patent holder’s lawful right …

Your Work Will Be Your Most "Faithful Mistress": Thoughts On Work-Life Balance Occasioned By The Loss Of Professor Jane Larson, Michelle Oberman

Faculty Publications

“Work-Life” balance has become part of contemporary public discourse. Whether in boardrooms, job interviews, or classrooms, we speak of this balance as a goal that is within our reach and worthy of our pursuit, collectively and individually. To date, the bulk of the discourse on work-life balance presupposes that a balance is obtainable and desirable. This essay challenges that notion. At the heart of my challenge is an alternate perspective on women’s relationship to work, inspired by a seemingly off-hand, yet rich comment made by my dear friend, the late Professor Jane Larson: "Your work will be your most faithful …

"What Else Could I Do?": Single Mothers And Infanticide, 1900-1950 [Book Review], Michelle Oberman

Faculty Publications

In her book ‘What Else Could I Do?’: Single Mothers and Infanticide, 1900–1950, Cliona Rattigan excavates a narrow, yet deep cache of cases about one of the world’s oldest and saddest phenomena: mothers who kill their children. Rattigan’s painstaking investigation of 300 such cases from Ireland, drawn from a half century during which the country knew great political turmoil, casts light on a more intimate, yet equally profound turmoil that took place among unmarried pregnant women during that same period in time. As the title suggests, in this history Rattigan dispels the notion that infanticide is a random crime committed …

A Social Justice Lens Turned On Legal Education: Next Steps In Representing The Vulnerable And Inspiring Law Students, Stephanie M. Wildman, Deborah Moss-West

Faculty Publications

No abstract provided.

Privilege Revealed: Past, Present, & Future [Revisiting Privilege Revealed And Reflecting On Teaching And Learning Together], Stephanie M. Wildman

Faculty Publications

No abstract provided.

In Her Own Voice: Ann Scales As Philosopher, Storyteller, Feminist, And Jurisprude, Patricia A. Cain

Faculty Publications

This Essay references numerous articles written by Ann Scales and discusses ways in which she spoke as a philosopher, a storyteller, a feminist, and a jurisprude. The author’s favorite lines from these articles are reproduced and explored in the context in which they were written. Many of the quotes are witty and capture the gist of a situation or a feminist point without the need for further explanation. Others express a point of view in such creative ways that they bring new insights to those of us who grapple with feminist issues.

Family Drama: Dangling Inheritances And Promised Lands, Patricia A. Cain

Faculty Publications

This paper reviews Hartog’s 2012 book, Someday All this will be Yours: A History of Inheritance and Old Age. Relying on case documents from trial courts in New Jersey in the early twentieth century, Hartog tells the rich stories behind these cases. The cases involve claims by family members, usually sons or daughters, who were promised inheritances in exchange for taking care of an aged parent. Sometimes those promises are enforced and sometimes not. The stories behind the cases, and Hartog’s observations about them. should be of interest to teachers and scholars of wills, trusts, and estates.

Can Competencies Drive Change In The Legal Profession?, Terri Mottershead, Sandee Magliozzi

Faculty Publications

No abstract provided.

Psychological Essentialism And Opposition To Human Embryonic Stem Cell Research, Kerry L. Macintosh

Faculty Publications

No abstract provided.

Immigration Federalism: A Reappraisal, Pratheepan Gulasekaram, Karthick Ramakrishnan

Faculty Publications

This Article identifies how the current spate of state and local regulation is changing the way elected officials, scholars, courts, and the public think about the constitutional dimensions of immigration law and governmental responsibility for immigration enforcement. Reinvigorating the theoretical possibilities left open by the Supreme Court in its 1875 Chy Lung v. Freeman decision, state and local offi- cials characterize their laws as unavoidable responses to the policy problems they face when they are squeezed between the challenges of unauthorized migration and the federal government’s failure to fix a broken system. In the October 2012 term, in Arizona v. …