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Articles 1 - 16 of 16

Full-Text Articles in Law

Resale Price Maintenance: Consignment Agreements, Copyrighted Or Patented Products And The First Sale Doctrine, Herbert J. Hovenkamp Dec 2010

Resale Price Maintenance: Consignment Agreements, Copyrighted Or Patented Products And The First Sale Doctrine, Herbert J. Hovenkamp

Faculty Scholarship at Penn Law

The rule of reason adopted for resale price maintenance in the Supreme Court’s Leegin decision, which upset the century old Dr. Miles rule of per se illegality, requires some reconsideration of a number of issues about antitrust treatment of RPM. Under the old per se rule, bona fide “consignment” agreements were not covered by Section 1 of the Sherman Act at all because there was said to be no qualifying “agreement” between the supplier and the dealer. Rather the dealer was simply said to be acting as an agent of the seller. However, insofar as RPM produces competitive dangers ...


Explaining The Demise Of The Doctrine Of Equivalents, David L. Schwartz Oct 2010

Explaining The Demise Of The Doctrine Of Equivalents, David L. Schwartz

All Faculty Scholarship

This article provides a novel theoretical model and extensive empirical evidence to explain the decline of a historically important patent law doctrine known as the “doctrine of equivalents.” In recent years, distinguished academics have studied the doctrine of equivalents. While these scholars noted that the doctrine of equivalents had decreased in its successful use and provided some grounds for the decline, none clearly explained why. As such, the cause and precise mechanism behind the so-called “demise” of the doctrine of equivalents have largely remained a mystery.

This article explains that the demise occurred because of two complementary forces discussed for ...


Supplemental Examinations To Consider, Reconsider, Or Correct Patent-Related Information: A Tangled Web Indeed, Lisa Dolak Jul 2010

Supplemental Examinations To Consider, Reconsider, Or Correct Patent-Related Information: A Tangled Web Indeed, Lisa Dolak

College of Law - Faculty Scholarship

A pending legislative proposal would authorize the U.S. Patent and Trademark Office (USPTO) to undertake a “supplemental examination” of an issued patent to “consider, reconsider, or correct information believed to be relevant to the patent.” It would further bar the federal courts from holding a patent unenforceable “on the basis of conduct relating to information” considered during supplemental examination.

The obvious intent of the proposal is to constrain the federal courts’ power to entertain inequitable conduct-based challenges. Its emergence is unsurprising, given the mounting dissatisfaction with the courts’ application of the inequitable conduct doctrine. However, because the bill proposes ...


Lawyers Acting Badly, Or Not? Misconduct In Ip Litigation: Recent Examples And The Questions They Raise, Lisa Dolak Jun 2010

Lawyers Acting Badly, Or Not? Misconduct In Ip Litigation: Recent Examples And The Questions They Raise, Lisa Dolak

College of Law - Faculty Scholarship

Misconduct in civil litigation is not a new phenomenon. Nor is it confined to particular types of cases. Because of their characteristic intensity. however, intellectual property cases may be more likely to inspire bad behavior than other types of cases. The associated pressures seem, on occasion, to lead litigants and trial lawyers to succumb to the temptation to step outside the bounds of vigorous advocacy.

Trial and appellate judges in a number of recent IP cases have wrestled with the issue of whether certain litigation tactics crossed the line between advocacy and abuse. For example, trial judges have recently rebuked ...


First Amendment Based Copyright Misuse, David S. Olson Mar 2010

First Amendment Based Copyright Misuse, David S. Olson

Boston College Law School Faculty Papers

We are at a crossroads with respect to the under-developed equitable defense of copyright misuse. The defense may go the way of its sibling, antitrust-based patent misuse, which seems to be in a state of inevitable decline. Or – if judges accept the proposal of this Article – courts could reinvigorate the copyright misuse defense to better protect First Amendment speech that is guaranteed by statute, but that is often chilled by copyright holders misusing their copyrights to control other’s speech. The Copyright Act serves First Amendment interests by encouraging authors to create works. But copyright law can also discourage the ...


Federal Circuit Patent Precedent: An Empirical Study Of Institutional Authority And Ip Ideology, David Pekarek-Krohn, Emerson H. Tiller Jan 2010

Federal Circuit Patent Precedent: An Empirical Study Of Institutional Authority And Ip Ideology, David Pekarek-Krohn, Emerson H. Tiller

Faculty Working Papers

In this paper, we aim to better understand the institutional authority of the Federal Circuit as a source of law as well as the influence of pro-patent and anti-patent ideological forces at play between the Supreme Court, Federal Circuit, and the district courts. Our specific focus is on the district courts and how they cite Federal Circuit precedent relative to Supreme Court precedent to support their decisions, whether they be pro-patent or anti-patent. Using a variety of citation approaches and statistical tests, we find that federal district courts treat the Federal Circuit as more authoritative (compared to the Supreme Court ...


An Empirical Study Of The Role Of The Written Description Requirement In Patent Prosecution, Dennis D. Crouch Jan 2010

An Empirical Study Of The Role Of The Written Description Requirement In Patent Prosecution, Dennis D. Crouch

Faculty Publications

An en banc Federal Circuit is now considering whether Section 112 of the Patent Act as properly interpreted includes a written description requirement that is separate and distinct from the enablement requirement. Although the USPTO has no direct role in the infringement dispute, the government submitted an amicus curie brief arguing that a separate written description requirement is “necessary to permit the USPTO to perform its basic examination function.” However, when pressed during oral arguments the government could not point to any direct evidence supporting its contention.

This essay presents the results of a retrospective empirical study of the role ...


Reconsidering The Georgia-Pacific Standard For Reasonable Royalty Patent Damages, Christopher B. Seaman Jan 2010

Reconsidering The Georgia-Pacific Standard For Reasonable Royalty Patent Damages, Christopher B. Seaman

Scholarly Articles

Determining damages for infringement is one of the most important and controversial issues in contemporary patent litigation. The current fifteen-factor Georgia-Pacific standard for determining a reasonable royalty has become increasingly difficult for juries to apply in patent disputes involving complex, high-technology products, resulting in unpredictable damage awards that tend to overcompensate patentees.

This Article proposes an alternative standard to Georgia-Pacific when an acceptable noninfringing substitute exists for the patented technology. Specifically, in a hypothetical bargain for a patent license, both economic and negotiation theory explain that a rational patent licensor would agree to pay only the costs it would incur ...


Licensing And Patent Protection, Arijit Mukherjee, Aniruddha Bagchi Jan 2010

Licensing And Patent Protection, Arijit Mukherjee, Aniruddha Bagchi

Faculty Publications

We show the impact of technology licensing on optimal patent policy. Strong patent protection that eliminates imitation may not be the equilibrium outcome in the presence of licensing. Depending on the cost of innovation, licensing may either increase or reduce the strength of the patent protection.


Determining Uniformity Within The Federal Circuit By Measuring Dissent And En Banc Review, Christopher A. Cotropia Jan 2010

Determining Uniformity Within The Federal Circuit By Measuring Dissent And En Banc Review, Christopher A. Cotropia

Law Faculty Publications

This Article adds to the empirical literature examining how the Federal Circuit treats patent-law issues internally by comparing the decision making of the Federal Circuit with that of other courts of appeals. It does so by measuring two statistics from overall written opinions: the percentage of dissents and the percentage of en bane reviews. The data is taken from the Third, Fifth, Ninth, Tenth, District of Columbia, and Federal Circuits between 1998 and 2009. The data in the study show that the Federal Circuit has the second-highest percentage of dissents among the circuits studied (behind only the Ninth Circuit) and ...


Comparative Tales Of Origins And Access: Intellectual Property And The Rhetoric Of Social Change, Jessica Silbey Jan 2010

Comparative Tales Of Origins And Access: Intellectual Property And The Rhetoric Of Social Change, Jessica Silbey

Faculty Scholarship

This Article argues that the open-source and anti-expansionist rhetoric of current intellectual-property debates is a revolution of surface rhetoric but not of deep structure. What this Article terms “the Access Movements” are, by now, well-known communities devoted to providing more access to intellectual-property-protected goods, communities such as the Open Source Initiative and Access to Knowledge. This Article engages Movement actors in their critique of the balance struck by recent law (statutes and cases) and asks whether new laws that further restrict access to intellectual property “promote the progress of science and the useful arts.” Relying on cases, statutes and recent ...


The Legal Ecology Of Resistance: The Role Of Antibiotic Resistance In Pharmaceutical Innovation, Kevin Outterson Jan 2010

The Legal Ecology Of Resistance: The Role Of Antibiotic Resistance In Pharmaceutical Innovation, Kevin Outterson

Faculty Scholarship

Antibiotic effectiveness is a common pool resource that can be prematurely depleted through resistance. Some experts warn that we may face a global ecological collapse in antibiotic effectiveness. Conventional wisdom argues for more intellectual property rights to speed the creation of new antibiotics. Recent theoretical literature suggests that conservation-based approaches may yield superior results. This Article describes a novel typology for organizing these emerging theories, and provides an early empirical test of these models, using proprietary data on the sales of vancomycin, an important hospital antibiotic for the last three decades.

The results challenge the assumptions in several models, and ...


Patent Misuse And Innovation, Marshall Leaffer Jan 2010

Patent Misuse And Innovation, Marshall Leaffer

Articles by Maurer Faculty

No abstract provided.


Global Pharmaceutical Markets, Kevin Outterson Jan 2010

Global Pharmaceutical Markets, Kevin Outterson

Faculty Scholarship

The high price of patented drugs lies at the heart of a major global public health crisis: the global poor are often denied access to lifesaving drugs due to high cost. Do global drug companies owe ethical or legal duties to make their drug patents available for the world’s low- and medium-income populations? We suggest that they do, through an exploration of the exceptions surrounding the “duty of rescue” - more precisely, the doctrine in US tort law that does not impose a duty to rescue absent special circumstances such as having contributed to the risk and enjoying special relationships ...


Patent Claiming In The United States: Central, Peripheral, Or Mongrel, Martin J. Adelman Jan 2010

Patent Claiming In The United States: Central, Peripheral, Or Mongrel, Martin J. Adelman

GW Law Faculty Publications & Other Works

This paper explains why the use of prosecution history estoppel to limit the doctrine of equivalents only when an estoppel exists is unsound. The standards for overcoming an estoppel should be used in every case and not just where there is an estoppel.


A New Look At Patent Quality: Relating Patent Prosecution To Validity, Ronald J. Mann, Marian Underweiser Jan 2010

A New Look At Patent Quality: Relating Patent Prosecution To Validity, Ronald J. Mann, Marian Underweiser

Faculty Scholarship

The paper uses two hand-collected datasets to implement a novel research design for analyzing the precursors to patent quality. Operationalizing patent "quality" as legal validity, the paper analyzes the relation between Federal Circuit decisions on patent validity and three sets of data about the patents: quantitative features of the patents themselves, textual analysis of the patent documents, and data collected from the prosecution histories of the patents. The paper finds large and statistically significant relations between ex post validity and both textual features of the patents and ex ante aspects of the prosecution history (especially prior art submissions and the ...