Law Commons^™

What Is The "Invention"?, Christopher A. Cotropia

Law Faculty Publications

Patent law is in flux, with recent disputes and changes in doctrine fueled by increased attention from the Supreme Court and en banc activity by the Federal Circuit. The natural reaction is to analyze each doctrinal area involved on its own. Upon a closer look, however, many patent cases concern a single, fundamental dispute. Conflicts in opinions on such issues as claim interpretation methodology and the written description requirement are really disagreements over which "invention" the courts should be considering. There are two concepts of invention currently in play in patent decisions. The first is an "external invention" definition, in …

Copyright And Federal Supremacy, James Gibson

Law Faculty Publications

The extent of federal power over our lives has been much in the news recently, what with the Supreme Court holding days of hearings on whether the Affordable Care Act is an unconstitutional exercise of Congress’s power under the Commerce Clause. Like the ACA, copyright regulation is federal, but it derives its constitutional authority from a different part of the Constitution, known as the Patent and Copyright Clause, which gives Congress the power “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” …

Trademark Tension, Part Ii, James Gibson

Law Faculty Publications

In the previous entry in this series, I discussed the narrow foundations of trademark law and its more recent expansion – in particular, how new approaches to trademark liability have departed from the law’s traditional focus on disputes about the source of competing goods. I continue that theme now by considering a tension that emerges from this expansion. Although trademark liability has expanded beyond source-identification, other aspects of trademark law have not, and these more traditional aspects can rise up and trap the unwary mark owner, or at least turn its expanded rights into expanded costs.

To understand the tension …

What Do America's First Patents Have To Do With Today's?, Kristen Jakobsen Osenga

Law Faculty Publications

In an invited response to an article by Prof. Michael Risch, Prof. Osenga reexamines some of the conclusions drawn by his study of early American Patents and what they suggested about inventors' perceptions of patentability.

The Top Three Patent Cases Of 2012, James Gibson

Law Faculty Publications

New Year’s Day prompts us to reflect on what the last 12 months have brought, so I’ve taken the opportunity to think back on 2012’s intellectual property developments. It’s been a busy year, with patent reform, new technologies, multilateral treaties, and more. To make my task more manageable, I’m going to focus on three important patent law cases – one at the Supreme Court level, one at the appellate level, and one at the trial court level. I’ll conclude with an extra-special bonus: the Case To Watch for patent law in 2013. Then, in my next entry in this series, …

Ethics: Conflicts Of Interest Issues In Patent Litigation, Christopher A. Cotropia

Law Faculty Publications

To understand what conflicts to avoid, this Article looks at recent decisions in patent litigation cases where conflict of interest issues have been decided. The discussion is divided up as follows. In Part I, choice of law regarding conflicts issues is discussed. In Part II, the common issues surrounding attorney and/or firm disqualifications for conflicts of interest are explored. Part III looks at conflicts of interest involving current clients. Part IV examines conflicts of interest concerning former clients. In Part V, a different type of conflict of interest—the lawyer as a witness situation—is discussed. Part VI moves to conflicts of …

Google Books: Finally, An Actual Fair Use Ruling!, James Gibson

Law Faculty Publications

One of our favorite topics in this Intellectual Property Issues series – perhaps the favorite – is Google Books, the massive project through which Google hopes to bring its search capability to the text of all books in the English language. To make a book’s text searchable, however, Google must scan the book. And scanning is copying. And copying usually means copyright infringement. Certainly the many authors and publishers who have sued Google take this view.

There are two ways to avoid infringement when copying a copyrighted book: get a license or prove that the copying constitutes fair use. Many …

Apple V. Samsung: A Primer, James Gibson

Law Faculty Publications

The jury verdict in the Apple v. Samsung case is in, and it is a whopper: $1.05 billion in damages, to be paid by Samsung to Apple for violating various intellectual property rights in the iPhone and iPad. In all likelihood, the court will follow that up with an order banning several Samsung products from the U.S. marketplace. So what is this case all about?

What Are Apple’s Claims?

Apple had several different theories of infringement here, and the jury bought almost all of them, at least with regard to certain Samsung devices. Here are the theories that won Apple …

Copyright's Gray Market, Redux, James Gibson

Law Faculty Publications

In an earlier entry in this series, I discussed an important issue in copyright law – whether the first sale doctrine applies to goods manufactured abroad. The Supreme Court was set to decide the issue in Costco v. Omega, but the Court split 4-4 and so left the matter unresolved.

Now the issue is back before the Supreme Court, in a case for which certiorari was granted this month: Kirtsaeng v. John Wiley & Sons. Supap Kirtsaeng is a native of Thailand who moved to the United States to attend college. To subsidize his tuition, he began importing textbooks that …

Get The Balance Right!: Squaring Access With Patent Protection, Kristen Jakobsen Osenga

Law Faculty Publications

Professor Osenga discusses the tensions between the interests of patent holders and patients worldwide in need of pharmaceutical treatments. Explaining the combination of exclusive patent and compulsory license approaches that govern access to intellectual property by statute and treaty, she urges that a carefully conceived balancing of these approaches will best serve both interests.

The Shape Of Things To Come: What We Can Learn From Patent Claim Length, Kristen Jakobsen Osenga

Law Faculty Publications

Technology is always changing. Patent law is also constantly evolving, as the courts and Congress continue to make significant changes to this area of law. But what about patents themselves? Some studies have looked at how patent specifications have changed over time, but no one has looked specifically at the most important aspect of a patent, its claims. Given the changes in technology and law, one would anticipate patent claims to have evolved.

Despite the expectations, this paper concludes that patent claim shape is largely unaffected by time, technology, crowded fields, or prosecution time. This paper suggests a possible reason …

Trademark Tension, Part I, James Gibson

Law Faculty Publications

In this Intellectual Property Viewpoints series, we tend to focus on copyright and patent law – the “big two” IP regimes that govern innovation in the arts and sciences. But there is a third IP regime, a cousin to copyright and patent, which is important to almost any enterprise, even if its business has nothing to do with innovation. That’s trademark law.

Over the last several decades, trademark law has grown from its modest roots and experienced an expansion that rivals that of its more high-profile cousins. In this essay and the next, I will discuss this phenomenon, and in …