Law Commons^™

America Invents The Supplemental Examination, But Retains The Duty Of Candor: Questions And Implications, Lisa A. Dolak

Akron Intellectual Property Journal

This paper considers these duty-of-candor-related issues-issues that the USPTO, the courts, patent owners, and patent challengers may face in the wake of the enactment of the AIA's provisions relating to supplemental examination, But first, by way of background, Part II presents an overview of the legislation relating to supplemental examination and explores how supplemental examination might operate, in light of its apparent goals. Part III considers questions relating to the overlay of supplemental examination on the existing U.S. patent application and enforcement regime, with particular focus on its interplay with the applicant's duty of candor. As that section illustrates, the …

Patent Attorney Malpractice: Case-Within-A-Case-Within-A-Case, A. Samuel Oddi

Akron Intellectual Property Journal

This article will first provide a brief history of the jurisdictional controversy between federal courts and between federal courts and state courts. Then, the question will be examined of how the subject matter jurisdictional question has been resolved with respect to patent attorney malpractice cases to the extent it has been to date in the federal and state courts. The manner in which the case-within-a-case doctrine or methodology has been used in deciding the jurisdictional question will also be investigated. In addition, the relevance of the use of the judgment or non-judgment model to determine patent attorney malpractice will be …

Checks, Balance And Judicial Wizardry: Constitutional Delegation And Congressional Legislation, Robert I. Reis

Akron Intellectual Property Journal

Recent Supreme Court activity regarding "intellectual property" may lead some to believe the increase in cases has some further meaning beyond the decisions themselves. The interests they represent and the source of power to enact legislation in the field raise distinct issues that may inform of current judicial interest and concern. These don't necessarily delineate the constitutional role of the Court relative to the delegation under Article I, Section Eight, Clause 8 of the United States Constitution. A gathering of cases using conventional search resources and techniques yielded 666 patent cases and 73 copyright cases. This essay is not intended …

Intersection Between The Patent System And Antitrust Laws: Patents Speeding, Antitrust Yielding, Innovation Bleeding!, Stijepko Tokic

Akron Intellectual Property Journal

In this article, I explain the interaction between the two laws and describe the ways in which these two extremely important areas of government regulation are and are not in tension. I argue that the conflict between the two laws is overstated, but the proper balance is far from being found. The reason for that is a notion that the current state of the patent system is more of a hindrance than a spur to innovation and competition due to overprotection and broadening of patent rights, lowering of standards to grant patents, chronic inefficiency of the Patent and Trademark Office …

An Introduction To U.S. Export Control: Regulations For Patent Practitioners, Michael K. Carrier

Akron Intellectual Property Journal

This article presents basic information on the U.S. export control laws most relevant to U.S. patent practice, including the preparation and filing of patent applications related to commercial items, and the intended audience of this article is the U.S. patent practitioner who does not routinely deal with export-controlled subject matter. If the patent practitioner intends to: export technical information from the U.S. for the purpose of having a patent application prepared; hire or work with foreign nationals (who may or may not actually be in the U.S.) in conducting technical research or patentability and invalidity searches; or help prepare patent …

How (Not) To Discourage The Unscrupulous Copyist, Peter Ludwig

Akron Intellectual Property Journal

This article explores how the U.S. and Japanese courts implement the doctrine of equivalents when determining patent infringement. The doctrine of equivalents is a balance of, on one hand, the public's interest to know the metes and bounds of the patent, and on the other hand, the private interest of the patentee to be granted a sufficient scope for the granted patent. After comparing and contrasting the implementation of the doctrine in Japan and the United States, I propose a new method that places the burden on the patent practitioner, before infringement proceedings begin, to determine the proper scope of …

Construing Patent Claims In Light Of The Specification Versus Importing Claim Limitations From The Specification: Is There Any Difference?, Rob Harmer

Akron Intellectual Property Journal

This Comment proceeds in three parts. Part II discusses the purpose of claim construction and the components of a patent application most relevant to construing patent claims. This Part also discusses the standard of appellate review for claim construction, the sources of evidence used in construing patent claims, and the two conflicting claim construction canons. Part III highlights the conflict between the canons of avoiding importing claim limitations from the specification and construing patent claims in light of the specification. Again, when construing patent claims in light of intrinsic evidence, courts often inherently import limitations from the same intrinsic evidence. …

Fashion Design Protection: The Eternal Plight Of The "Soft Sculpture", Kimberly A. Harchuck

Akron Intellectual Property Journal

This writing begs to answer the ninety-year-old question of whether or not fashion designs should be protected by law. In answering this question, Section II explores design protection in the United States and the actions taken for almost a full century in determining the legal protection of fashion. Section III discusses the many facets of fashion design, as information technology and art. Section IV reviews the evolution of copying, its benefits and detriments, and the theories proposing protection against copies. Section V addresses current U.S. intellectual property laws affecting fashion as well as the protections of individual European countries and …

Permissible Product Hopping: Why A Per Se Legal Rule Barring Antitrust Liability Is Necessary To Protect Future Innovation In The Pharmaceutical Industry, Michelle L. Ethier

Akron Intellectual Property Journal

Pharmaceutical product hopping is a relatively new phenomenon in which a brand-name pharmaceutical company tactically reformulates a drug and patents the reformulation in an attempt to avoid competition by a generic competitor. When viewed in the context of the HatchWaxman framework, product hopping can effectively eliminate generic competitors from the market, thereby implicating § 2 of the Sherman Act. In addressing antitrust liability, this Note advocates a per se legal approach to product hopping so long as the hop is supported by a valid patent. Although some have argued that deference to the United States Patent and Trademark Office and …

Examining Distinctive Jurisprudence In The Federal Circuit: Consequences Of A Specialized Court, Alan B. Parker

Akron Intellectual Property Journal

After reviewing jurisprudence that is consistent with the predicted behavior of specialized courts, this paper will discuss some recent Supreme Court cases which address some of the Circuit's distinctive jurisprudence. In addition to examining evidence of characteristics consistent with specialization-caused effects, this paper will highlight several examples suggesting that the perception is growing at the Supreme Court that the Circuit is behaving as a specialized court developing distinctive jargon and rules, and unduly tending to its constituency. That perception may or may not be justified, but there are signs that the CAFC is responding to the perception in its early …

Interlocutory Claim Construction Appeals: A Better Legislative Solution, Harold C. Wegner

Akron Intellectual Property Journal

This paper commences with a consideration of current reform legislation that is a reaction to Cybor Corp. v. FAS Techs., Inc. and a high claim construction reversal rate. The problem may be traced to the notorious Federal Circuit opinion in Cybor. A surprisingly widely supported proposal for interlocutory claim construction appeals that had been pushed in the 110th Congress has been reformulated in a new version now pending in the Senate.

Ebay Rx, Tracy A. Thomas

Akron Intellectual Property Journal

From a remedial perspective, the decision of the U.S. Supreme Court in eBay Inc. v. MercExchange, L.L.C. reopened the age-old question of what it means to award equitable relief. In eBay, the Court rejected a permanent injunction issued by the U.S. Court of Appeals for the Federal Circuit to protect a business-method patent that defendant eBay had infringed on its successful auction website. This essay diagnoses the remedial problem in eBay as the improper use of presumptions for equitable relief that effectively prioritizes selected legal rights. It offers a prescriptive cure for the problem in the traditional balancing of the …

Rights And Remedies Post Ebay V. Mercexchange - Deep Waters Stirred, Robert I. Reis

Akron Intellectual Property Journal

eBay confirms the adage that good things often come in small packages. The court concisely focused on the inherent requirements of discretionary equitable relief in the use of injunctive remedies. The opinion informed that categorical presumptions based on presumed incidents of property rights did not satisfy the requirements of appropriate discretionary consideration. The four prongs of the requisite test "restated" for issuance of an injunction imposed the burden of proof on the plaintiff and all four factors which follow be deliberated by the court: (1) a finding of irreparable injury, (2) a finding of inadequate remedy at law for compensation, …

The Effects Of Ebay: Discretion, Statutory Damages, And Private Attorneys-General, Liam O'Melinn

Akron Intellectual Property Journal

If it were not already an apt time to consider the effects of the Supreme Court's eBay v. MercExchange decision, several recent developments serve as reminders of the importance of the issues addressed in the case: In Capitol v. Thomas the recording industry has succeeded in securing a $222,000 judgment in statutory damages for copyright infringement, a software patent infringement suit was filed in October 2007 by IP Innovation and Licensing against Novell and Redhat-seemingly the first suit to target Linux-and the PTO has rejected most of the claims in Amazon's 1-Click patent.

The eBay decision appears to assert that …

Constructed And Enhanced Equities Under Ebay: Whose Right Is It Anyway?, Richard S. Gruner

Akron Intellectual Property Journal

This article treats the injunction issuance standards announced in eBay Inc. v. MercExchange, LLC, as the starting point for patent enforcement planning by sophisticated clients and their patent and corporate attorneys. The eBay standards imply a set of circumstances in which a patent holder will be well-positioned to obtain a patent enforcement injunction, circumstances that patent holders may be able to reach through well-crafted strategic moves. This article explores the actions that a pure licensee patent holder can take to improve its position and establish "constructed equities" that will enhance its chances of obtaining a patent enforcement injunction.

Truth In Intellectual Property Revisited: Embracing Ebay At The Edge, Thomas C. Folsom

Akron Intellectual Property Journal

In addition to whatever else it might do to serve the public interest, intellectual property diminishes the commons. To that extent, any particular intellectual property claim intersects the public interest and affects more than just the immediate parties. Not only does intellectual property diminish the commons, but also each of its disciplines contains an almost casually incoherent metaphysic. There is incoherence, if not at the core, at least at the critical edges of intellectual property law that is systemic and fundamental. Notwithstanding over 200 years of practice in the United States, the goal of establishing a sufficiently principled, practical and …

Opening The Door To Efficient Infringement: Ebay, Inc. V. Mercexchange, L.L.C., Sheri J. Engelken

Akron Intellectual Property Journal

Before the Supreme Court's decision in eBay, Inc. v. MercExchange, L.L.C., the Federal Circuit's "general rule" held sway: after a finding of patent infringement, trial courts were expected to issue permanent injunctions to halt any continuing infringement "absent exceptional circumstances." That general rule was intended to protect a patentee's right to exclude others from making, using, selling, or offering to sell the invention during the monopoly period enjoyed by the patentee. The Supreme Court in eBay rejected the Federal Circuit's general rule, placing the determination of whether and on what terms, if any, to grant a permanent injunction in …

Ebay's Practical Effect: Two Differing Visions, Jay Dratler Jr.

Akron Intellectual Property Journal

This short paper examines the likely effect of the Court's three opinions on the actual practice of intellectual property cases in their remedial phase. The first part briefly discusses the unanimous opinion and its likely economic effect in increasing the already daunting complexity-and therefore the already considerable cost-of intellectual property litigation. The second part examines the first concurring opinion and the effect of its implicit suggestion that nothing much has really changed. The third part examines the possible practical effect of the second concurring opinion. The conclusion then offers a few general observations on where remedial practice in patent cases …

Ebay And The Blackberry: A Media Coverage Case Study, Lisa A. Dolak, Blaine T. Bettinger

Akron Intellectual Property Journal

This paper centers on media coverage relating to eBay and related patent system developments. In particular, it provides a quantitative comparison between media coverage of eBay and that relating to another recent patent case: the litigation between NTP, Inc. and Research in Motion, Ltd. involving the popular BlackBerry® handheld wireless communications device, and examines the extent and nature of the NTP-related coverage in light of the co-pendency of the two cases and the issues they share in common. In so doing, it facilitates consideration of the experience of news coverage consumers - including, presumably, Supreme Court Justices - while eBay …

Are The Secrecy Order Compensation Provisions Of The Patent Act Constitutional Under The Fifth Amendment?, Adam J. Citrin

Akron Intellectual Property Journal

The secrecy order provisions of the Patent Act' raise a number of issues under the U.S. Constitution. The primary focus of this note is on the Fifth Amendment issues raised by the Invention Secrecy Act.

Patent Litigation In Japan, David W. Hill, Shinichi Murata

Akron Intellectual Property Journal

This article will explore how patent litigation in Japan has changed and will also compare and contrast aspects of patent litigation in the U.S. and Japan.

In Part II, we show recent statistical data on Japanese patent infringement litigation. Parts III and IV briefly review the Japanese judicial system and legal professionals in the area of intellectual property. Part V addresses patent-infringement actions in Japan and the recent amendments of the Code of Civil Procedure and the Patent Law. Next, Parts VI and VII discuss infringement analysis and possible defenses in patent-infringement litigation. Part VIII reviews how to calculate the …

A Pharmaceutical Park Place: Why The Supreme Court Should Modify The Scope Of The Patent Test For Reverse Payment Deals, David Ernest Balajthy

Journal of Intellectual Property Law

No abstract provided.

Patents Absent Adversaries, Sarah R. Wasserman Rajec

Brooklyn Law Review

The adversarial system is lauded for determining the truth of claims, safeguarding procedural rights, and supporting the efficient direction of resources toward the most relevant and contested issues in a dispute. If a case proceeded to judgment with participation from only one party, it would raise concerns of justice, efficiency, accuracy, and the public interest. And yet, in a tribunal of steadily growing importance for intellectual property disputes—the International Trade Commission (ITC or Commission)—certain cases proceed without the benefit of participation from adverse parties. Following the default of named parties, administrative law judges determine the scope and validity of patent …

In Pursuit Of Patent Quality (And Reflection Of Reification), Kenneth L. Port, Lucas M. Hjelle, Molly Littman

Marquette Intellectual Property Law Review

None

Myriad: A Look Into The Future Of Genetic Patentable Subject Matter, Nathan Edward Cromer

Marquette Intellectual Property Law Review

None

The Case For Incentivizing Healthy Food By Using Patents, Enrico Bonadio

Marquette Intellectual Property Law Review

None

A Fake Right Of Priority Under The Cross-Strait Agreement On Intellectual Property Right Protection And Cooperation, Ping-Hsun Chen

Marquette Intellectual Property Law Review

None

Patent Eligibility And Physicality In The Early History Of Patent Law And Practice, Ben Mceniery

University of Arkansas at Little Rock Law Review

No abstract provided.

Intellectual Property Law Hybridization, Clark D. Asay

University of Colorado Law Review

Traditionally, patent and copyright laws have been viewed as separate bodies of law with distinct utilitarian goals. Conventional wisdom holds that patent law aims to incentivize the production of inventive ideas, while copyright focuses on protecting the original expression of ideas, but not the underlying ideas themselves. This customary divide between copyright and patent laws finds some support in the distinction between "authors" and "inventors," as well as that between "writings" and "discoveries," in the U.S. Constitution's Intellectual Property Clause. And Congress, courts, and scholars have largely perpetuated the divide in separately enacting, interpreting, and analyzing copyright and patent laws …