Law Commons^™

Renewing Faith In Antitrust: Unveiling The Hidden Network Behind Pharmaceutical Product Hopping, Victoria Field

Fordham Journal of Corporate & Financial Law

Patents grant time-limited market exclusivity to drug manufacturers, meaning that other companies are prohibited from copying and selling the patented pharmaceutical. This allows manufacturers to lawfully charge monopoly prices. Generic competition starts at the expiration of the patent. To maintain coveted monopoly power, manufacturers often release an alternative formulation of the drug with a fresh patent that enjoys continued market exclusivity. Manufacturers who can convert their consumer base to the new formulation can continue charging peak prices. This process, called “product hopping,” has been the target of significant antitrust inquiry, with mixed results.

A product hop may be the result …

Defensive Patent Litigation Strategy For Chinese Companies: A Review Of The Extraterritorial Reach Of The United States Patent Laws, Lisa D. Zang

Fordham Intellectual Property, Media and Entertainment Law Journal

China has experienced an extraordinary transformation from a poor, developing nation into a global economic power. With China becoming one of the U.S.’s largest trading partners, however, Chinese companies have become increasingly enmeshed in U.S. patent litigations. Although the U.S. patent laws are intended only to govern conduct within the nation’s borders, the line between domestic and foreign economic activities has become increasingly blurred. Modern sales transactions often span multiple countries, and in such situations, it may not be clear whether the U.S. patent laws apply. For Chinese companies facing exposure to U.S. patent litigations, it is critical to understand …

A Patent Reformist Supreme Court And Its Unearthed Precedent, Samuel F. Ernst

Fordham Intellectual Property, Media and Entertainment Law Journal

How is it that the Supreme Court, a generalist court, is leading a project of innovation reform in our times while the court of appeals established to encourage innovation is having its precedent stricken down time and again? This decade the Supreme Court has issued far more patent law decisions than in any decade since the passage of the Patent Act of 1952. In doing so, the Supreme Court has overruled the Federal Circuit in roughly threequarters of the patent cases in which the Supreme Court has issued opinions. In most of these cases, the Supreme Court has established rules …

Sovereign Immunity For Rent: How The Commodification Of Tribal Sovereign Immunity Reflects The Failures Of The U.S. Patent System, Katrina G. Geddes

Fordham Intellectual Property, Media and Entertainment Law Journal

Last year, a Fortune 500 pharmaceutical company attempted to rent the sovereign immunity of an American Indian tribe in order to shield its patents on a dry-eye drug from invalidation by generic competitors in inter partes review. Pharmaceutical firms are notorious for pursuing unconventional methods to extend the duration of their patents and, in this sense, the maneuver is unsurprising. The exploitation, however, of an historically disenfranchised community with limited economic opportunities is particularly unsettling. This Article will provide, firstly, a factual summary of the legal background of this case; secondly, a review of the February 2018 decision of the …

A Bridge Between Copyright And Patent Law: Towards A Modern-Day Reapplication Of The Semiconductor Chip Protection Act, Timothy T. Hsieh

Fordham Intellectual Property, Media and Entertainment Law Journal

This Paper analyzes the history of the Semiconductor Chip Protection Act (SCPA), 17 U.S.C. §§ 901–914, and asks why the statute is so seldom used in intellectual property litigation. Afterwards, this Paper makes the argument that the SCPA should be used more in intellectual property litigation, perhaps in tandem with patent litigation, and can be a viable form of protection for semiconductor micro-fabrication companies or integrated circuit design companies engaged in pioneering innovations within the cutting-edge field of semiconductor technology.

The Ieee-Sa Revised Patent Policy And Its Definition Of “Reasonable” Rates: A Transatlantic Antitrust Divide?, Nicolas Petit

Fordham Intellectual Property, Media and Entertainment Law Journal

The Institute of Electrical and Electronics Engineers Standards Association’s (“IEEE-SA”) updated patent policy and a business review letter issued by the United States Department of Justice (“DOJ”) have caused much discussion in the United States. The purpose of this Article is to assess whether a similarly lenient antitrust approach to Standard Setting Organizations’ (“SSOs”) rate-setting policies would prevail under the European Union’s (“EU”) competition rules. Recent EU competition case law has promoted a very hard line in the area of coordinated conduct. Cases such as Dole Food Company, Inc. v. European Commission, T-Mobile Netherlands BV v. Raad van bestuur van …

The Big Patent Short: Hedge Fund Challenges To Pharmaceutical Patents And The Need For Financial Regulation, Ariel D. Multak

Fordham Journal of Corporate & Financial Law

The enactment of the America Invents Act (AIA) in 2011 ushered in a new system for post-grant patent review. In the interest of enhancing the efficiency of the patent regime by invalidating “bad” patents, certain requirements were relaxed. For example, the AIA created an examination process called inter partes review, which allows a party without legal standing to challenge the validity of a patent in front of the Patent Trial and Appeal Board. In the pharmaceutical patent context, it was expected that inter partes review would be utilized mostly by generic drug makers seeking to invalidate patents without incurring the …

Patently Insane For Patents: A Judge-By-Judge Analysis Of The Federal Circuit’S Post-Alice Patentable Subject Matter Eligibility Of Abstract Ideas Jurisprudence, Matthew B. Hershkowitz

Fordham Intellectual Property, Media and Entertainment Law Journal

The Information Age exposed the U.S. patent system to patentable subject matter that it had never considered before. In particular, software tested the courts’ understanding of patentable subject matter under section 101 of title 35 of the U.S. Code. The Supreme Court grappled with this issue in its Alice Corp. v. CLS Bank International decision, which greatly affected the patentability of software. However, the Supreme Court did not define the precise contours of patentable subject matter in Alice, and as a result, the Federal Circuit has wrestled with its meaning ever since. This Note discusses the approaches Federal Circuit judges …

What’S So Special About Patent Law?, Michael Goodman

Fordham Intellectual Property, Media and Entertainment Law Journal

The widespread belief that patent law is special has shaped the development of patent law into one of the most specialized areas of the law today. The belief in patent law’s exceptionalism manifests itself as two related presumptions with respect to the judiciary: first, that generalist judges who do not have patent law expertise cannot effectively decide patent cases, and second, that judges can develop necessary expertise through repeated experience with patent cases. Congress showed that it acquiesced to both views when it created the Federal Circuit and the Patent Pilot Program. In recent years, however, the Supreme Court has …

Obviousness As Fact: The Issue Of Obviousness In Patent Law Should Be A Question Of Fact Reviewed With Appropriate Deference, Ted L. Field

Fordham Intellectual Property, Media and Entertainment Law Journal

One of the most common defenses that an accused infringer raises in a patent infringement lawsuit is that the patent claims at issue are invalid for obviousness. The question of obviousness is based on several factual determinations, and the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit should sensibly review these determinations with deference to the jury’s or trial court’s findings. But these courts instead treat the ultimate determination of obviousness as a question of law to be reviewed de novo. This Article challenges the correctness of this standard of review and argues that courts …

The Riddle Of The Mysterious Patent Dance Wrapped In An Enigma: Is The Patent Dance Of The Bpcia Optional Or Mandatory?, Dov Hirsch

Fordham Intellectual Property, Media and Entertainment Law Journal

Recently, the nature of one of the aspects of the Biosimilar, Price, Competition, and Innovation Act of 2009 (“BPCIA”) has been called into question: Is the “patent dance,” the structured patent dispute resolution process of the BPCIA, mandatory or optional? A mandatory patent dance requires a biosimilar applicant to comply with all its requirements, while an optional patent dance allows the biosimilar applicant to opt out of the entire dance if it so chooses. This question is important because it has the potential to affect that delicate balance of the BPCIA. This Note focuses on some of the consequential implications …

Do Abstract Ideas Have The Need, The Need For Speed?: An Examination Of Abstract Ideas After Alice, Maria R. Sinatra

Fordham Law Review

Imagine you invented a way to perform mathematical calculations all over the world simultaneously. Now, imagine that you cannot patent your invention because it was compared to, and found to contain, the same idea as an abacus. This scenario was the outcome of Alice Corp. v. CLS Bank International.

In coming to its decision in Alice, the U.S. Supreme Court adopted a two-part test that it had previously utilized to analyze the patentability of laws of nature to determine whether the patent at issue met the subject matter patentability standards of § 101 of the Patent Act. Determining …

Defining Patent Quality, Christi J. Guerrini

Fordham Law Review

Depending on whom you ask, the state of U.S. patent quality is either dismal or decent, in decline or on the upswing, in need of intervention or best left alone. Absent from the ongoing debate about the quality of U.S. patents, however, is much thoughtful discussion about what constitutes a patent’ “quality” in the first place. What features of a patent make it “good” in quality, what features make it “bad” in quality, and whose opinion matters? Surprisingly, scholars and policymakers have shown little interest in these questions. Yet their answers are critical to the direction of the patent agenda …

Asserting Patents To Combat Infringement Via 3d Printing: It’S No “Use”, Daniel Harris Brean

Fordham Intellectual Property, Media and Entertainment Law Journal

Three-dimensional ("3D") printing technology, which enables physical objects to be "printed" as easily as words can be printed on a page, is rapidly moving from industrial settings into consumers' homes. The advent of consumer grade 3D printers fundamentally alters the traditional allocation of manufacturing infrastructure and sales activity. No longer do manufacturers need to make, sell, and ship physical products in their physical states. Rather, consumers may download digital representations of products over the Internet for printing in the comfort their own homes. For products sold in this fashion that are patented, this presents difficult hurdles to enforcement against infringers. …

A Great Invisible Crashing: The Rise And Fall Of Patent Eligibility Through Mayo V. Prometheus, Scott Pierce

Fordham Intellectual Property, Media and Entertainment Law Journal

Title 35 of the United States Code at Section 101 states that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” Despite the apparent simplicity of the statute and its predecessors, the boundaries of patent eligibility dictated by the term “process” and the term “art” that it replaced, along with the terms “machine,” “manufacture” and “composition of matter,” have become increasingly uncertain over the course of the last two-hundred years. Recently, the lack …

Sampling, Looping, And Mashing . . . Oh My!: How Hip Hop Music Is Scratching More Than The Surface Of Copyright Law, Tonya M. Evans

Fordham Intellectual Property, Media and Entertainment Law Journal

This article examines the deleterious impact of copyright law on music creation. It highlights hip hop music as an example of a genre significantly and negatively impacted by 1) the per se infringement rule applied in some instances to cases involving unauthorized sampling of sound recordings; and 2) traditional (and arguably erroneous) assumptions in copyright law and policy of independent creation and Romantic authorship. For decades hip hop producers have relied on the innovative use of existing recordings (most of which are protected by copyright), to create completely new works. Specifically, cuttin’ and scratchin’, digital sampling, looping and (most recently) …

Patent Settlements, Risk, And Competition, Mark R. Patterson

Faculty Scholarship

PowerPoint presentation delivered at the session, Patent Settlements: The Issues Beyond the "Reverse Payment" Cases at the ABA 59th Annual Antitrust Spring Meeting, March 30, 2011.

Written Description: Protecting The Quid Pro Quo Since 1793, Jacob Adam Schroeder

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

Panel I: The Patent Landscape With Bilski On The Map, Jeanne Fromer, James W. Dabney, Clarisa Long, Brian P. Murphy

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

Panel Ii: The Global Contours Of Ip Protection For Trade Dress, Industrial Design, Applied Art, And Product Configuration, Orit Fischman Afori, Wendy J. Gordon, Mark Janis, Jonathan Moskin

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

Bilski’S “Machine-Or-Transformation” Test: Uncertain Prognosis For Diagnostic Methods And Personalized Medicine Patents, Brian P. Murphy, Daniel P. Murphy

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

The Role Of The Non-Functionality Requirement In Design Law, Orit Fischman Afori

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

The 2009 H1n1 Swine Flu Pandemic: Reconciling Goals Of Patents And Public Health Initiatives, Michelle Kaplan

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

Prospective Compensation In Lieu Of A Final Injunction In Patent And Copyright Cases, H. Tomas Gomez-Arostegui

Fordham Law Review

In a 2006 decision, eBay Inc. v. MercExchange, L.L.C., the U.S. Supreme Court held that traditional equitable factors apply to injunctions in patent and copyright cases, and therefore the mere fact that a defendant has infringed a patent or a copyright does not necessarily mean a final injunction must issue. In the three years since, lower courts have denied final injunctions more frequently than before and are now struggling with what relief, if any, to give prevailing plaintiffs in lieu of an injunction. Some courts permit plaintiffs to sue again later. But most award prospective relief to plaintiffs¾sometimes a lump-sum …

Lightening The Load: Whether The Burden Of Proof For Overcoming A Patent's Presumption Of Validity Should Be Lowered, Kristen Dietly

Fordham Law Review

Patents fuel innovation and are becoming an ever-more important form of protection in this technological age. Society also has a vested interest in only valid patents being issued and enforced. Patents are presumed valid once they are issued and also currently enjoy the application of a heavy burden of proof—clear and convincing evidence—to overcome that presumption when their validity is questioned at trial. This burden has started to be questioned as the U.S. Patent and Trademark Office becomes more taxed by the increasing influx of patent applications. Current precedent conflicts with past precedent and with general principles of administrative law. …

Fixing A Hole: Will Generic Biologics Find A Niche Within The Hatch-Waxman Act?, Elysa B. Goldberg

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

Commercial Free And Open Source Software: Knowledge Production, Hybrid Appropriability, And Patents, Greg R. Vetter

Fordham Law Review

No abstract provided.

Jurisdictional Issues In The Adjudication Of Patent Law Malpractice Cases In Light Of Recent Federal Circuit Decisions, Michael Ena

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

Panel I: The Business Method Patent And The Patent Reform Act Of 2007: Can The Law Keep Pace With Technology?, John Richards, Jeanne Fromer, Walter Hanchuk, Scott D. Locke

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

Business Method Patents: The Challenge Of Coping With An Ever Changing Standard Of Patentability, Scott D. Locke, William D. Schmidt

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.