Law Commons^™

The Doctrine Of Equivalents And Interchangeability In The United States, Taiwan And China, Tien-Pang Chang, Li-Dar Wang, Shang-Jyh Liu

Richard Li-dar Wang

The United States, Taiwan and China have similar systems for determining patent infringement under the doctrine of equivalents. The courts in these countries apply the test of interchangeability in finding infringement under the doctrine of equivalents. However, the courts in the United States, Taiwan and China evaluate interchangeability in different ways. In the United States, the interchangeability is one important factor for determining equivalent infringement in addition to the function, way and result factors in the triple identity test. Nevertheless, the court does not necessarily have to consider interchangeability and can’t rely only on the interchangeability factor to find equivalent …

Mark Mckenna Quoted In Forbes Article On Apple Samsung Patent Trial, Mark Mckenna

Mark P. McKenna

Mark McKenna was quoted in the Forbes article Apple Gets $290.5 Million In Damages From Samsung In Patent Penalty Review — But It’s Not Over Yet by Connie Guglielmo

Mark Mckenna Quoted In Usa Today Article Apple Gets $290m In Samsung Patent Dispute, Mark Mckenna

Mark P. McKenna

Mark McKenna was quoted in the USA Today article Apple gets $290 million in Samsung patent dispute by Scott Martin. "Today's damage award was much larger than Samsung had argued for, but still significantly less than the $400 million vacated by Judge Koh after the first trial," said Mark McKenna, a law professor at the University of Notre Dame.

What's The Frequency, Kenneth? Channeling Doctrines In Trademark Law, Mark Mckenna

Mark P. McKenna

This paper was published as a chapter in Intellectual Property and Information Wealth (Peter Yu, ed., Praeger 2007). The chapter describes several doctrines that courts have developed to limit the scope of trademark protection where there is a risk of interference with the patent or copyright schemes. It also suggests that courts have in some cases overemphasized the subject matter of protection and underemphasized parties' ability to use trademark law to capture the types of economic benefits for which patent and copyright protection are presumed necessary.

Refusals To Deal With Competitors By Owners Of Patents And Copyrights: Reflections On The Image Technical And Xerox Decisions, Joseph P. Bauer

Joseph P. Bauer

Under the patent and copyright laws, the owner of a patent for an invention or of a copyright for a work has the right to sell, license or transfer it, to exploit it individually and exclusively, or even to decide to withhold it from the public. By contrast, under the antitrust laws, a unilateral refusal to deal may constitute an element of a violation of Section 2 of the Sherman Act, and the courts may then impose a duty on the violator to deal with others, including possibly with its actual or would-be competitors. The central question addressed by this …

Tpp – Australian Section-By-Section Analysis Of The Enforcement Provisions Of The August Leaked Draft, Kimberlee G. Weatherall

Kimberlee G Weatherall

This paper analyses the leaked 30 August 2013 text of the TPP IP Chapter from an Australian perspective, focusing on the enforcement provisions only. The goal is to assess the compatibility of provisions in the current draft with Australian law and Australia’s international obligations: including TRIPS and the Australia-US Free Trade Agreement (AUSFTA).

Reading the IP provisions of the TPP IP chapter leak dated August 2013 is a maddening, dispiriting process. The provisions are written like legislation, not treaty, suggesting a complete lack of good faith and trust on the part of the negotiating countries. There are subtle tweaks of …

Reports Of Its Death Are Greatly Exaggerated: Ebay, Bosch, And The Presumption Of Irreparable Harm In Hatch-Waxman Litgation, Kenneth C. Louis

Kenneth C. Louis

No abstract provided.

Profits As Commercial Success, Andrew Blair-Stanek

Andrew Blair-Stanek

Courts often use the extent of a patented invention’s commercial success as crucial nontechnical proof of the patent’s validity. Relying on misguided economic reasoning, most courts use revenue as the primary yardstick for commercial success. This Note argues that courts instead should use profits as the proper measure of an invention’s commercial success. Current jurisprudence’s use of revenue reflects the flawed premise that firms maximize revenues rather than maximizing profits. As a result, courts will often find commercial success when the financial data suggest otherwise and vice versa. This Note finds the accounting and economic issues involved to be insubstantial, …

Patenting Thoughts, J. Ryan Lawlis

J. Ryan Lawlis

This paper argues that patents drawn towards computer-implemented inventions must overcome the overlooked fourth categorical bar on patent eligibility under 35 USC 101, the bar on mental processes. This paper arrives at this conclusion by way of an analysis of the questions for en banc rehearing presented by the Court of Appeals for the Federal Circuit in CLS Bank Intern. v. Alice Corp. Pty. Ltd., 484 Fed.Appx. 559 (Fed. Cir. 2012), asking what test should be used to analyze computer-implemented patent eligibility.

This paper first defines the historical context of subject matter eligibility for patent, beginning with the founding …

Owning Enlightenment: Proprietary Spirituality In The 'New Age' Marketplace, Walter Effross

Walter Effross

This article analyzes recent attempts made by the Arica Institute, the Church of Scientology, and Star's Edge - reaching, in each case, the relevant Circuit Court of Appeals - to apply intellectual property law to prevent the unauthorized dissemination of their spiritual teachings and techniques. As the article details, such concerns have been raised in connection with a wide range of traditional and modern practices, including Zen, Kabbalah, Yoga, Sufism, Christian Science, est, Reiki, the Gurdjieff Work, A Course in Miracles, and Transcendental Meditation. The article draws on a variety of primary sources, including trial transcripts, appellate pleadings, Web sites, …

Patent Protection Of Pharmacologically Active Metabolites: Theoretical And Technological Analysis On The Jurisprudence Of Four Regions, Richard Li-Dar Wang, Pei-Chen Huang

Richard Li-dar Wang

Active metabolite patents have been instrumental for brandname pharmaceutical companies to maintain their exclusivity even after the drug patents expire. This strategy obstructs market entry of generic medicine and reduces affordable drugs. The authors review jurisprudence from the United States, Europe, India, and Taiwan in search for practical solutions to confront this problem. Given the unique pharmacological value that active metabolites may possess, patent protection for those purified or synthesized in vitro should be preserved, but for those produced by metabolism should be declined. Except India, most countries under investigation comport with this dichotomy. Their jurisprudence may be subsumed into …

Fixing Frand: A Pseudo-Pool Approach To Standards-Based Patent Licensing, Jorge Contreras

Jorge L Contreras

Technical interoperability standards are critical elements of mobile telephones, laptop computers, digital files, and thousands of other products in the modern networked economy. Most such standards are developed in so-called voluntary standards-development organizations (SDOs) that require participants to license patents essential to the standard on terms that are “fair, reasonable and non-discriminatory” (FRAND). FRAND commitments are thought to avoid the problem of patent hold-up: the imposition of excessive royalty demands after a standard has been widely adopted in the market. While, at first blush, FRAND commitments seem to assure product vendors that patents will not obstruct the manufacture and sale …

Communities Of Innovation, Michael Mattioli

Michael Mattioli

This Article examines and evaluates the theory that patent holders privately self-correct the government’s excessive apportionment of patent rights by means of various cooperative efforts including patent pools, research consortia, and similar licensing collectives. According to some experts, these efforts are proof that market participants have the wisdom and the will to collectively disarm their patent arsenals in order to advance long-term innovation. But until now, this theory of market self-correction has not been evaluated through empirical study. Drawing on interviews and original research, this Article provides an ethnographic view of collective patent licensing episodes. Amidst these stories of success …

What Should Be Patentable? A Proposal For Determining The Existence Of Statutory Subject Matter Under 35 U.S.C. Sec. 101, Andrew Beckerman Rodau

Andrew Beckerman Rodau

The question of what type of inventions should be protectable under patent law is a controversial issue that has received significant attention. Recent Supreme Court decisions reject a bright line test in favor of a more-opened ended approach to determining patent eligibility. Unfortunately, this provides limited guidance to lower courts and consequently the issue remains unsettled. Most inventions fit within the statutory requirements defining patent-eligible inventions. This article will examine the scope of patent-eligible subject matter defined by patent law section 101. It will look at judicial interpretation of the statute including exceptions judicially engrafted onto the statute by the …

Policy Tailors And The Rookie Regulator, Sarah Tran

Sarah Tran

Commentators have long lamented the lack of policy tailoring in the patent system. But unlike other administrative agencies, who regularly tailor regulatory policies to the needs of specific industries, the U.S. Patent and Trademark Office (“PTO”) was widely believed to lack the authority and institutional competence for such policymaking. This Article provides the first comprehensive analysis of recent legislative reforms to the PTO’s policymaking authority. It shows the reforms empower the PTO to have a larger say in patent policy than ever before. The big question is thus: to what extent is it good policy for a rookie regulator to …

Intellectual Property And Public Health – A White Paper, Ryan G. Vacca, Jim Chen, Jay Dratler Jr., Tom Folsom, Timothy Hall, Yaniv Heled, Frank Pasquale, Elizabeth Reilly, Jeff Samuels, Kathy Strandburg, Kara Swanson, Andrew Torrance, Katharine Van Tassel

Ryan G. Vacca

On October 26, 2012, the University of Akron School of Law’s Center for Intellectual Property and Technology hosted its Sixth Annual IP Scholars Forum. In attendance were thirteen legal scholars with expertise and an interest in IP and public health who met to discuss problems and potential solutions at the intersection of these fields. This report summarizes this discussion by describing the problems raised, areas of agreement and disagreement between the participants, suggestions and solutions made by participants and the subsequent evaluations of these suggestions and solutions.

Led by the moderator, participants at the Forum focused generally on three broad …

Government Choices In Innovation Funding (With Reference To Climate Change), Joshua D. Sarnoff

Joshua D Sarnoff

Intellectual Property And Public Health – A White Paper, Ryan G. Vacca, Jim Chen, Jay Dratler Jr., Tom Folsom, Timothy Hall, Yaniv Heled, Frank Pasquale, Elizabeth Reilly, Jeff Samuels, Kathy Strandburg, Kara Swanson, Andrew Torrance, Katharine Van Tassel

Frank A. Pasquale

On October 26, 2012, the University of Akron School of Law’s Center for Intellectual Property and Technology hosted its Sixth Annual IP Scholars Forum. In attendance were thirteen legal scholars with expertise and an interest in IP and public health who met to discuss problems and potential solutions at the intersection of these fields. This report summarizes this discussion by describing the problems raised, areas of agreement and disagreement between the participants, suggestions and solutions made by participants and the subsequent evaluations of these suggestions and solutions.

Led by the moderator, participants at the Forum focused generally on three broad …

Why Copyright Law Lacks Taste And Scents, Leon R. Calleja

Leon R Calleja

This paper explores the resistance in U.S. copyright law to extend copyright protection to scents and tastes, and advances the position that copyright law’s originality and expression requirements limit copyrightable subject matter to expressions that engage both author and audience in a way that requires reflection upon the work—or at least, the capacity for reflection—in a necessarily intersubjective and communicative fashion, what I call a “public dimension.” That the sensations of taste and smell are inescapably immediate and private suggest that they lack the kind of public dimension that visual and audio works exhibit. Indeed, this creates an ineffability characterized …

Intellectual Property And Public Health – A White Paper, Ryan G. Vacca, Jim Chen, Jay Dratler Jr., Tom Folsom, Timothy Hall, Yaniv Heled, Frank Pasquale, Elizabeth Reilly, Jeff Samuels, Kathy Strandburg, Kara Swanson, Andrew Torrance, Katharine Van Tassel

Katharine Van Tassel

On October 26, 2012, the University of Akron School of Law’s Center for Intellectual Property and Technology hosted its Sixth Annual IP Scholars Forum. In attendance were thirteen legal scholars with expertise and an interest in IP and public health who met to discuss problems and potential solutions at the intersection of these fields. This report summarizes this discussion by describing the problems raised, areas of agreement and disagreement between the participants, suggestions and solutions made by participants and the subsequent evaluations of these suggestions and solutions.

Led by the moderator, participants at the Forum focused generally on three broad …

Asserting Patents To Combat Infringement Via 3d Printing: It's No "Use", Daniel Harris Brean

Daniel Harris Brean

Intellectual Property And Public Health – A White Paper, Ryan G. Vacca, Jim Chen, Jay Dratler Jr., Tom Folsom, Timothy Hall, Yaniv Heled, Frank Pasquale, Elizabeth Reilly, Jeff Samuels, Kathy Strandburg, Kara Swanson, Andrew Torrance, Katharine Van Tassel

Yaniv Heled

On October 26, 2012, the University of Akron School of Law’s Center for Intellectual Property and Technology hosted its Sixth Annual IP Scholars Forum. In attendance were thirteen legal scholars with expertise and an interest in IP and public health who met to discuss problems and potential solutions at the intersection of these fields. This report summarizes this discussion by describing the problems raised, areas of agreement and disagreement between the participants, suggestions and solutions made by participants and the subsequent evaluations of these suggestions and solutions.

Led by the moderator, participants at the Forum focused generally on three broad …