Law Commons^™

The Case Against Federalizing Trade Secrecy, Christopher B. Seaman

Christopher B. Seaman

Trade secrecy is unique among the major intellectual property (IP) doctrines because it is governed primarily by state law. Recently, however, a number of influential actors — including legislators, academics, and organizations representing IP attorneys and owners — have proposed creating a private civil cause of action for trade secret misappropriation under federal law. Proponents assert that federalizing trade secrecy would provide numerous benefits, including substantive uniformity, the availability of a federal forum for misappropriation litigation, and the creation of a unified national regime governing IP rights. This Article engages in the first systematic critique of the claim that federalizing …

From De Novo Review To Informal Deference: An Historical, Empirical, And Normative Analysis Of The Standard Of Appellate Review For Patent Claim Construction, Jonas Anderson, Peter Menell

Peter Menell

Patent scope plays a central role in the operation of the patent system, making patent claim construction a critical aspect of just about every patent litigation. With the resurgence of patent jury trials in the 1980s, the allocation of responsibility for interpreting patent claims between trial judge and jury emerged as a salient issue. While the Supreme Court’s Markman decision usefully removed claim construction from the black box of jury deliberations notwithstanding its "mongrel" mixed fact/law character, the Federal Circuit’s adherence to the view that claim construction is a pure question of law subject to de novo appellate review produced …

It’S The End Of The Biological Patent World As We Know It, And Consumer Watchdog Feels Fine: How Consumer Watchdog Is Attempting To Kill The Future Of Horticultural Research, George R. Holton

George R Holton

No abstract provided.

Not So Obvious After All: Patent Law's Nonobviousness Requirement, Ksr, And The Fear Of Hindsight Bias, Glynn S. Lunney Jr, Christian T. Johnson

Glynn Lunney

Before the creation of the Federal Circuit in 1982, nonobviousness served as the primary gatekeeper for patents. When patent holders sued for infringement and lost, more than sixty percent of the time, they lost on the grounds that their patent was obvious. With the advent of the Federal Circuit, nonobviousness became a much less difficult hurdle to surmount. From 1982 until 2005, when patent holders sued for infringement and lost, obviousness was the reason in less than fifteen percent of the cases. While obviousness remained formally a requirement of patent protection, there can be little doubt that the Federal Circuit …

National Treatment, National Interest And The Public Domain, Margaret Ann Wilkinson

Margaret Ann Wilkinson

The concept of the "public domain" is a powerful rhetorical element in he policy debates involving intellectual property. But is it a stable and useful concept for analyzing information issues? Can the notion of the public domain and the concept of the information commons be separated? Is the notion of the public domain merely another way of expressing the public interest? This paper canvassed the literature, seeking a theoretically consistent definition for public domain that was equally applicable across the copyright, trademark and patent spheres. The analysis demonstrated that there is no such construct. The paper also reviews the findings …

A Practitioner's Guide To Patent Challenges At The U.S. Patent & Trademark Office: Chapter 4, Safet Metjahic

Safet Metjahic

Anyone other than the owner of a patent may file a petition to institute an IPR of the patent in the USPTO. This Chapter provides a summary of the legal framework surrounding IPR practice and, more particularly, the framework for preparing and filing an IPR at the USPTO.

Layered Patent System, Michael Risch

Michael Risch

Bowman V. Monsanto: A Bellwether For The Emerging Issue Of Patentable Self-Replicating Technologies And Inadvertent Infringement, Christopher M. Holman

Christopher M Holman

The inherent tendency of patented seeds to self-replicate has led to fears that farmers might face liability for inadvertent patent infringement. To address the perceived problem, some have proposed severely limiting the availability of effective patent protection for self-replicating technologies, for example by denying patent rights to “second generation” self-replicating products, or even by broadly declaring such technologies ineligible for patent protection. The fact is, lawsuits against inadvertently infringing farmers remain of largely hypothetical concern. However, changes in the market could soon render such lawsuits a reality. In addressing the resulting policy concerns, the courts and/or Congress have at their …

Inventorship, Double Patenting, And The America Invents Act, N. Scott Pierce

N. Scott Pierce

The Leahy-Smith America Invents Act of 2011 (AIA) defines an “inventor” as “the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” Prior art that consists of a “disclosure . . . made by the inventor or joint inventor” or “subject matter [that] had, before such disclosure, been publicly disclosed by the inventor or a joint inventor,” when disclosure is “made 1 year or less before the effective filing date of a claimed invention,” is excepted from the novelty requirement. However, there is nothing in the AIA or its legislative …

Do Patent Licensing Demands Mean Innovation?, Robin C. Feldman, Mark A. Lemley

Robin C Feldman

Patentable Subject Matter As A Policy Lever, Amy L. Landers

Amy L. Landers

Patents are intended to be used as instruments to further policy. One potent policy driver to accomplish such goals is through the legal construction and application of the term “invention." Internationally, various legal authorities have recognized that this definition can be crafted in ways that are targeted to have real-world consequences. In the U.S., the open-ended framework of the Patent Act's section 101 invites judicial interpretation to effectuate the law's purposes. Ideally, these determinations should rest on articulated, transparent reasoning so that, under a common law system, those policies can serve as touchstones to ensure that the relevant precedents are …

The Anti-Patent: A Proposal For Startup Immunity, Amy L. Landers

Amy L. Landers

The controversy surrounding the current implementation of the patent system is well known. Some question whether the system has become entirely dysfunctional and disincentives innovation, particularly as the law operates within some industries. Moreover, early stage companies, particularly those just beginning to gain success, are particularly vulnerable targets for lawsuits. Notably, these same companies can be rich sources of important technological innovation.

Because the U.S. has always had a patent system, it is impossible to understand the intended and unintended consequences of eliminating this form of intellectual property protection even in a limited manner. As economist Fritz Machlup stated in …

Patenting Physibles: A Fresh Perspective For Claiming 3d-Printable Products, Daniel Harris Brean

Daniel Harris Brean

Ending Unreasonable Royalties: Why Nominal Damages Are Adequate To Compensate Patent Assertion Entities For Infringement, Daniel Harris Brean

Daniel Harris Brean

Empirical Studies Of Claim Construction, Jonas Anderson

J. Jonas Anderson

From Kafka To Kafta: Intellectual Property, And The Korea-Australia Free Trade Agreement, Matthew Rimmer

Matthew Rimmer

The Korea-Australia Free Trade Agreement 2014 (KAFTA) is a Kafkaesque agreement – with its secret texts, speculative claims, and shadowy tribunals. Australia and South Korea have signed a new free trade agreement - the Korea-Australia Free Trade Agreement2014 (KAFTA). Is it a fair trade fairytale? Or is it a dirty deal done dirt cheap? Or somewhere in between? It is hard to tell, given the initial secrecy of the negotiations, and the complexity of the texts of the agreement. There has been much debate in the Australian Parliament over the transparency of the trade agreement; the scope of market access …

Legal And Scientific Flaws In The Myriad Genetics Litigation, Eric Grote

Eric Grote

In Association for Molecular Pathology v. Myriad Genetics, the Supreme Court held that Myriad’s isolated BRCA DNA patent claims were invalid because an isolated DNA with the same sequence as a natural DNA is a product of nature. The decision has two fundamental flaws. First, due to a faulty claim construction by the trial court, the Supreme Court was never informed that isolated DNA is a synthetic molecule that is not actually isolated from nature, or that isolated DNA lacks functional information encoded by chemical modifications present in natural human DNA. Second, the Court ignored a long line of …

International Cooperation And The Patent-Antitrust Intersection, Stephen Yelderman

Stephen Yelderman

Commentators have long recognized the need to coordinate questions at the patent-antitrust intersection with other policy levers available under patent law. In the international context, however, control over patent policy has been fractured and entrusted to diverse decisionmakers. Many details of patent law are tightly coordinated by international agreement, while others related to antitrust are left to national discretion. This Article evaluates the consequences of this fracture, and notes ways in which the prevailing treaty regimes (the Paris Convention and the TRIPS Agreement) distort incentives for national policymaking. National discretion at the patent-antitrust intersection can be expected to result in …

Short-Circuiting Contract Law: The Federal Circuit's Contract Law Jurisprudence And Intellectual Property Federalism, Shubha Ghosh

Shubha Ghosh

The Federal Circuit was established in 1982 as an appellate court with limited jurisdiction over patent claims. However, the Federal Circuit has used this limited jurisdiction to expand its reach into contract law, developing a federal common law of contract. Given the growing importance of patent litigation in the past three decades, this creation of an independent body of contract law creates uncertainty in transactions involving patents. This troublesome development received attention in Stanford v Roche, a 2011 Supreme Court decision upholding the Federal Circuit's invalidation of a patent assignment to Stanford University. This Article documents the development of …

Submission On The Ip Chapter Of The Korea-Australia Free Trade Agreement, Kimberlee G. Weatherall

Kimberlee G Weatherall

The Infringement Continuum, Bernard H. Chao

Bernard H Chao

For many years, patent law has struggled with the issue of permissible claim scope. A patent’s specification and its claims often suffer from a surprising disconnect. The specification generally describes an invention in terms of one or more specific implementations; suggesting a relatively narrow invention. But claims are drafted far more broadly. They frequently encompass unforeseen variations and even cover after arising technology.

Although there are numerous existing doctrines that try to prevent claims from straying too far from their specification, these doctrines offer binary outcomes ill-suited for patent law. Under these doctrines, as a claim encompasses subject matter further …

Food For Thought: Genetically Modified Seeds As De Facto Standard Essential Patents, Benjamin M. Cole, Brent J. Horton, Ryan G. Vacca

Ryan G. Vacca

For several years, courts have been improperly calculating damages in cases involving the unlicensed use of genetically-modified (GM) seed technology. In particular, when courts determine patent damages based on the hypothetical negotiation method, they err in exaggerating these damages to a point where no rational negotiator would agree. In response, we propose a limited affirmative defense of an implied license due to the patent’s status as a de facto standard essential patent. To be classified as a de facto standard essential patent, the farmer must prove three elements that reflect the peculiarities of GM seeds used in farming: (1) dominance, …

Patent Demands & Startup Companies: The View From The Venture Capital Community, Robin C. Feldman

Robin C Feldman

Discretionary Injunctive Relief For Patent Infringement: Partial Remuneration After Ebay And Its Implications For The Developing World, Richard Li-Dar Wang

Richard Li-dar Wang

Will The “Nexus” Requirement Of Apple V. Samsung Preclude Injunctive Relief In The Majority Of Patent Cases?: Echoes Of The Entire Market Value Rule, Daniel Harris Brean

Daniel Harris Brean

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 …