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2018

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Full-Text Articles in Law

Meeting The Challenges To America's Economic Future: Charting The Course In U.S. Intellectual Property & Innovation Policy, With An Introduction By Megan M. La Belle, International Ip Commercialization Council Dec 2018

Meeting The Challenges To America's Economic Future: Charting The Course In U.S. Intellectual Property & Innovation Policy, With An Introduction By Megan M. La Belle, International Ip Commercialization Council

Catholic University Law Review

No abstract provided.


The Porous Court-Agency Border In Patent Law, Saurabh Vishnubhakat Nov 2018

The Porous Court-Agency Border In Patent Law, Saurabh Vishnubhakat

Saurabh Vishnubhakat

The progression toward reevaluating patent validity in the administrative, rather than judicial, setting became overtly substitutionary in the America Invents Act. No longer content to encourage court litigants to rely on Patent Office expertise for faster, cheaper, and more accurate validity decisions, Congress in the AIA took steps to force a choice. The result is an emergent border between court and agency power in the U.S. patent system. By design, the border is not absolute. Concurrent activity in both settings over the same dispute remains possible. What is troubling is the systematic weakening of this border by Patent Office ...


When Can The Patent Office Intervene In Its Own Cases?, Saurabh Vishnubhakat Nov 2018

When Can The Patent Office Intervene In Its Own Cases?, Saurabh Vishnubhakat

Saurabh Vishnubhakat

The rise of administrative patent validity review since the America Invents Act has rested on an enormous expansion of Patent Office authority. A relatively little-known aspect of that authority is the agency's statutory ability to intervene in Federal Circuit appeals from adversarial proceedings in its own Patent Trial and Appeal Board. The Patent Office has exercised this intervenor authority frequently and with specific apparent policy objectives, including where one of the adverse parties did not participate in the appeal. Moreover, until recently, there has been no constitutional inquiry into the Article III standing that the Patent Office must establish ...


Will Delaware Be Different? An Empirical Study Of Tc Heartland And The Shift To Defendant Choice Of Venue, Ofer Eldar, Neel U. Sukhatme Nov 2018

Will Delaware Be Different? An Empirical Study Of Tc Heartland And The Shift To Defendant Choice Of Venue, Ofer Eldar, Neel U. Sukhatme

Georgetown Law Faculty Publications and Other Works

Why do some venues evolve into litigation havens while others do not? Venues might compete for litigation for various reasons, like enhancing their judges’ prestige and increasing revenues for the local bar. This competition is framed by the party that chooses the venue. Whether plaintiffs or defendants primarily choose venue is crucial because, we argue, the two scenarios are not symmetrical.

The Supreme Court’s recent decision in TC Heartland LLC v. Kraft Foods LLC illustrates this dynamic. There, the Court effectively shifted venue choice in many patent infringement cases from plaintiffs to corporate defendants. We use TC Heartland to ...


A Prescription For Biopharmaceutical Patents: A Cure For Inter Partes Review Ailments, Alex A. Jurisch Sep 2018

A Prescription For Biopharmaceutical Patents: A Cure For Inter Partes Review Ailments, Alex A. Jurisch

Seattle University Law Review

The patent system in the United States was forever changed with the introduction of the Leahy-Smith America Invents Act (AIA) in September of 2011. The AIA brought sweeping changes to American patent law in order to align the U.S. with much of the rest of the world by changing the invention priority from a “first to invent” to a “first to file” system. The first section of this note will provide a brief overview of the substance of inter partes reviews and some of the most critical negatives that have become apparent since 2013. The second section of this ...


The Effect Of Frand Commitments On Patent Remedies, Jorge L. Contreras, Thomas F. Cotter, Sang Jo Jong, Brian J. Love, Nicolas Petit, Peter George Picht, Norman Siebrasse, Rafał Sikorski, Masabumi Suzuki, Jacques De Werra Sep 2018

The Effect Of Frand Commitments On Patent Remedies, Jorge L. Contreras, Thomas F. Cotter, Sang Jo Jong, Brian J. Love, Nicolas Petit, Peter George Picht, Norman Siebrasse, Rafał Sikorski, Masabumi Suzuki, Jacques De Werra

Utah Law Faculty Scholarship

This chapter addresses a special category of cases in which an asserted patent is, or has been declared to be, essential to the implementation of a collaboratively-developed voluntary consensus standard, and the holder of that patent has agreed to license it to implementers of the standard on terms that are fair, reasonable and non-discriminatory (FRAND). In this chapter, we explore how the existence of such a FRAND commitment may affect a patent holder’s entitlement to monetary damages and injunctive relief. In addition to issues of patent law, remedies law and contract law, we consider the effect of competition law ...


Global Rate Setting: A Solution For Standard-Essential Patents?, Jorge L. Contreras Sep 2018

Global Rate Setting: A Solution For Standard-Essential Patents?, Jorge L. Contreras

Utah Law Faculty Scholarship

The commitment to license patents that are essential to technical interoperability standards on terms that are fair, reasonable and non-discriminatory (FRAND) is a fundamental mechanism that enables standards to be developed collaboratively by groups of competitors. Yet disagreements over FRAND royalty rates continue to bedevil participants in global technology markets. Allegations of opportunistic hold-up and hold-out continue to arise, spurring competition authorities to investigate and intervene in private standard-setting. And litigation regarding compliance with FRAND commitments has led an increasing number of courts around the world to adjudicate FRAND royalty rates, often on a global basis, but using very different ...


Update On Antitrust And Pay-For-Delay: Evaluating “No Authorized Generic” And “Exclusive License” Provisions In Hatch-Waxman Settlements, Saami Zain Aug 2018

Update On Antitrust And Pay-For-Delay: Evaluating “No Authorized Generic” And “Exclusive License” Provisions In Hatch-Waxman Settlements, Saami Zain

San Diego Law Review

In Federal Trade Commission v. Actavis, the United States Supreme Court held that a patent litigation settlement where a branded drug company pays a generic drug company to end the litigation and delay launching its generic may violate the antitrust laws. Although the decision ended years of controversy over whether such settlements were subject to antitrust scrutiny, many issues remain unresolved concerning the lawfulness of these settlements. In particular, courts have struggled in assessing the legality of patent settlements between branded and generic drug manufacturers involving non-cash compensation or benefits. This article discusses one type of non-cash compensation that is ...


The Anticommons At Twenty: Concerns For Research Continue, Jorge L. Contreras Jul 2018

The Anticommons At Twenty: Concerns For Research Continue, Jorge L. Contreras

Center for Law and Biomedical Sciences (LABS)

Twenty years after Heller and Eisenberg predicted the emergence of an anticommons in biomedical research, this article assesses the currency of the anticommons theory. While a patent-fueled research anticommons does not appear to have emerged in the ways that Heller and Eisenberg envisioned, there are new ways in which the fragmentation of rights -- whether through trade secrecy, narrow licensing or data propertization -- continues to threaten research and commercial development. The anticommons theory thus remains as relevant today as it was when it was first proposed.


When Biopharma Meets Software: Bioinformatics At The Patent Office, Saurabh Vishnubhakat, Arti K. Rai Jul 2018

When Biopharma Meets Software: Bioinformatics At The Patent Office, Saurabh Vishnubhakat, Arti K. Rai

Saurabh Vishnubhakat

Scholars have spilled much ink questioning patent quality. Complaints encompass concern about incoming applications, examination by the U.S. Patent and Trademark Office (“USPTO”), and the USPTO’s ultimate output. The literature and some empirical data also suggest, however, that applications, examination, and output may differ considerably based on technology. Most notably, although definitions of patent quality are contested, quality in the biopharmaceutical industry is often considered substantially higher than that in information and communications technology (ICT) industries.

This Article presents the first empirical examination of what happens when the two fields are combined. Specifically, it analyzes the creation and ...


The Youngest Patent Validity Proceeding: Evaluating Post-Grant Review, Saurabh Vishnubhakat Jul 2018

The Youngest Patent Validity Proceeding: Evaluating Post-Grant Review, Saurabh Vishnubhakat

Saurabh Vishnubhakat

Of the three major ex post patent validity challenge mechanisms that the 2011 Leahy-Smith America Invents Act put into place, the third is beginning to show signs of use. Post-grant review is an administrative proceeding of remarkable breadth as compared both to inter partes review and to the transition program for covered business method patents. Thus far, however, patent challengers have made very limited use of post-grant reviews: in the nearly three years since the procedure became available, the United States Patent and Trademark Office has received only about two dozen petitions for post-grant review. By contrast, the number of ...


The Uspto Patent Pro Bono Program, Jennifer M. Mcdowell, Saurabh Vishnubhakat Jul 2018

The Uspto Patent Pro Bono Program, Jennifer M. Mcdowell, Saurabh Vishnubhakat

Saurabh Vishnubhakat

In recent years, the United States Patent and Trademark Office has systematically been engaging the legal community with inventor assistance beyond the agency’s usual business of examining applications for patents and trademarks. The purpose of the USPTO’s effort has been to support innovators who are constrained by a lack of resources to pay for patent counsel necessary to protect the full scope of their inventions. This Article describes the brief history, flexible structure, and ongoing growth of that effort, embodied in the USPTO Patent Pro Bono Program. The Patent Pro Bono Program is a national network coordinated by ...


The Field Of Invention, Saurabh Vishnubhakat Jul 2018

The Field Of Invention, Saurabh Vishnubhakat

Saurabh Vishnubhakat

Federal courts can ill afford to ignore, assume, or improvise a pervasively important administrative power that the Patent Office exercises regularly and effectively: technology classification. This agency-court asymmetry has persisted for decades but has now become unmanageably problematic for two related reasons. First, Supreme Court guidance, patent reform legislation, and academic commentary have all broadly rejected long-standing patent exceptionalism in administrative law, while making the Patent Office a major substitute for federal courts in resolving patent disputes. Still, patent doctrine has been slow to correct, particularly in judicial deference to agency action. Second, criticisms of the patent system are highly ...


The Porous Court-Agency Border In Patent Law, Saurabh Vishnubhakat Jul 2018

The Porous Court-Agency Border In Patent Law, Saurabh Vishnubhakat

Saurabh Vishnubhakat

The progression toward reevaluating patent validity in the administrative, rather than judicial, setting became overtly substitutionary in the America Invents Act. No longer content to encourage court litigants to rely on Patent Office expertise for faster, cheaper, and more accurate validity decisions, Congress in the AIA took steps to force a choice. The result is an emergent border between court and agency power in the U.S. patent system. By design, the border is not absolute. Concurrent activity in both settings over the same dispute remains possible. What is troubling is the systematic weakening of this border by Patent Office ...


Strategic Decision Making In Dual Ptab And District Court Proceedings, Saurabh Vishnubhakat, Arti K. Rai, Jay P. Kesan Jul 2018

Strategic Decision Making In Dual Ptab And District Court Proceedings, Saurabh Vishnubhakat, Arti K. Rai, Jay P. Kesan

Saurabh Vishnubhakat

The post-grant review proceedings set up at the U.S. Patent and Trademark Office’s Patent and Trial Appeal Board by the America Invents Act of 2011 have transformed the relationship between Article III patent litigation and the administrative state. Not surprisingly, such dramatic change has itself yielded additional litigation possibilities: Cuozzo Speed Technologies v. Lee, a case addressing divergence between the manner in which the PTAB and Article III courts construe patent claims, will soon be decided at the U.S. Supreme Court.

Of the three major new PTAB proceedings, two have proven to be popular as well as ...


The Antitrusting Of Patentability, Saurabh Vishnubhakat Jul 2018

The Antitrusting Of Patentability, Saurabh Vishnubhakat

Saurabh Vishnubhakat

Deciding a patent’s validity is costly, and so is deciding it incorrectly. Judges and juries must expend significant resources in order to reach a patent validity determination that is properly informed by the relevant facts. At the same time, patent validity determinations reached quickly and cheaply may conserve resources today while creating future costs. Wrongly preserving an invalid patent can distort the competitive market and enable abuses, such as nuisance litigation. Meanwhile, wrongly striking down a valid patent can undermine incentives for continued investment and commercialization in knowledge assets. Courts facing patent validity issues have begun to strike this ...


An Intentional Tort Theory Of Patents, Saurabh Vishnubhakat Jul 2018

An Intentional Tort Theory Of Patents, Saurabh Vishnubhakat

Saurabh Vishnubhakat

This Article challenges the dogma of U.S. patent law that direct infringement is a strict liability tort. Impermissibly practicing a patented invention does create liability even if the infringer did not intend to infringe or know about the patent. The consensus is that this is a form of strict liability. The flaw in the consensus is that it proves too little, for the same is true of intentional torts: intent to commit the tort is unnecessary, and ignorance of the legal right is no excuse. What is relevant is intent to perform the action that the law deems tortious ...


Comment To The Sec In Support Of The Enhanced Disclosure Of Patent And Technology License Information, Colleen Chien, Jorge L. Contreras, Carol Corrado, Stuart Graham, Deepak Hegde, Arti K. Rai, Saurabh Vishnubhakat Jul 2018

Comment To The Sec In Support Of The Enhanced Disclosure Of Patent And Technology License Information, Colleen Chien, Jorge L. Contreras, Carol Corrado, Stuart Graham, Deepak Hegde, Arti K. Rai, Saurabh Vishnubhakat

Saurabh Vishnubhakat

Intangible assets like IP constitute a large share of the value of firms, and the US economy generally. Accurate information on the intellectual property (IP) holdings and transactions of publicly-traded firms facilitates price discovery in the market and reduces transaction costs. While public understanding of the innovation economy has been expanded by a large stream of empirical research using patent data, and more recently trademark information this research is only as good as the accuracy and completeness of the data it builds upon. In contrast with information about patents and trademarks, good information about IP licensing is much less publicly ...


Cognitive Economy And The Trespass Fallacy: A Response To Professor Mossoff, Saurabh Vishnubhakat Jul 2018

Cognitive Economy And The Trespass Fallacy: A Response To Professor Mossoff, Saurabh Vishnubhakat

Saurabh Vishnubhakat

In his recent essay The Trespass Fallacy in Patent Law, Professor Adam Mossoff argues cogently that the metaphor of trespass has become a misused basis for patent indeterminacy critiques that it cannot conceptually or empirically support. While sharing his caution that metaphors are not to be trifled with, this reply suggests that trespass has both a smaller role and a larger potential benefit in the debate on patent indeterminacy, and advances an opposite solution.


The Porous Court-Agency Border In Patent Law, Saurabh Vishnubhakat Jul 2018

The Porous Court-Agency Border In Patent Law, Saurabh Vishnubhakat

Akron Law Review

The progression toward reevaluating patent validity in the administrative, rather than judicial, setting became overtly substitutionary in the America Invents Act. No longer content to encourage court litigants to rely on Patent Office expertise for faster, cheaper, and more accurate validity decisions, Congress in the AIA took steps to force a choice. The result is an emergent border between court and agency power in the U.S. patent system. By design, the border is not absolute. Concurrent activity in both settings over the same dispute remains possible. What is troubling is the systematic weakening of this border by Patent Office ...


The Porous Court-Agency Border In Patent Law, Saurabh Vishnubhakat Jul 2018

The Porous Court-Agency Border In Patent Law, Saurabh Vishnubhakat

Faculty Scholarship

The progression toward reevaluating patent validity in the administrative, rather than judicial, setting became overtly substitutionary in the America Invents Act. No longer content to encourage court litigants to rely on Patent Office expertise for faster, cheaper, and more accurate validity decisions, Congress in the AIA took steps to force a choice. The result is an emergent border between court and agency power in the U.S. patent system. By design, the border is not absolute. Concurrent activity in both settings over the same dispute remains possible. What is troubling is the systematic weakening of this border by Patent Office ...


Three New Metrics For Patent Examiner Activity: Office Actions Per Grant Ratio (Ogr), Office Actions Per Disposal Ratio (Odr), And Grant To Examiner Ratio (Ger), Shine Tu Jul 2018

Three New Metrics For Patent Examiner Activity: Office Actions Per Grant Ratio (Ogr), Office Actions Per Disposal Ratio (Odr), And Grant To Examiner Ratio (Ger), Shine Tu

Law Faculty Scholarship

The current metric for examiner prosecution activity is allowance rate, which is calculated by dividing the total number of allowances by the sum of the allowances and abandonments (allowance rate = total allowance/(total allowances total abandonments)). Importantly, however, allowance rates do not consider an examiner’s pending docket. Specifically, allowance rates do not fully capture if the examiner is simply writing office actions thereby prolonging prosecution or allowing cases. This study rectifies this failure by creating and analyzing a dataset that captures every active examiner’s current docket. Calculating the Office Action per Grant Ratio (OGR = Total # of Office Actions ...


Much Ado About Holdup, Jorge L. Contreras Jun 2018

Much Ado About Holdup, Jorge L. Contreras

Utah Law Faculty Scholarship

The policy debate surrounding patent hold-up in markets for standardized products is now well into its second decade with no end in sight. Fundamental questions including the definition of hold-up, whether it exists in the marketplace, and what impact it has on innovation, continue to bedevil scholars, policy makers and industry. Yet it is not clear that this debate needs to continue. Patent hold-up is a pattern of market behavior, not a legally-cognizable wrong. Whether it is commonplace or rare is largely irrelevant to liability in any given case. To the extent that hold-up behavior constitutes an abuse of market ...


When Can The Patent Office Intervene In Its Own Cases?, Saurabh Vishnubhakat Jun 2018

When Can The Patent Office Intervene In Its Own Cases?, Saurabh Vishnubhakat

Faculty Scholarship

The rise of administrative patent validity review since the America Invents Act has rested on an enormous expansion of Patent Office authority. A relatively little-known aspect of that authority is the agency's statutory ability to intervene in Federal Circuit appeals from adversarial proceedings in its own Patent Trial and Appeal Board. The Patent Office has exercised this intervenor authority frequently and with specific apparent policy objectives, including where one of the adverse parties did not participate in the appeal. Moreover, until recently, there has been no constitutional inquiry into the Article III standing that the Patent Office must establish ...


Considerations Regarding A Canadian Patent Collective, Jorge L. Contreras May 2018

Considerations Regarding A Canadian Patent Collective, Jorge L. Contreras

Utah Law Faculty Scholarship

In its 2018 budget, the Government of Canada pledged CDN$85.3 million over five years to support an ambitious new intellectual property (IP) strategy, including CDN$30 million for the formation of a Canadian “Patent Collective.” This paper explores the possible structure and goals of such a collective, as well as potential risks and challenges of each. It concludes that appreciable technology development by Canadian firms is not likely to be achieved through the proposed patent collective, but that such a collective could assist Canadian firms by facilitating their participation in existing international defensive patent networks. The paper recommends ...


Definite Indefiniteness Of "Molecular Weight" As A Claim Term For Polymer-Related Patents, Ping-Hsun Chen Mar 2018

Definite Indefiniteness Of "Molecular Weight" As A Claim Term For Polymer-Related Patents, Ping-Hsun Chen

The Journal of Business, Entrepreneurship & the Law

The molecular weight of a polymer is not just a number for a single molecule. In fact, molecular weight measurement is based on a large volume of molecules of the same polymer. Due to the non-uniformity of molecular weights, there are several methods to measure an “average molecular weight” of a polymer. Unfortunately, the Federal Circuit in Teva Pharms. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335 (Fed. Cir. 2015), held that the term “molecular weight” in several polymer claims was indefinite, because the term could mean either peak average molecular weight, number average molecular weight, or weight average ...


The Proper Appellate Standard Of Review For Ptab Factual Findings Made Incidental To Claim Construction, A. David Brzozowski Ii Mar 2018

The Proper Appellate Standard Of Review For Ptab Factual Findings Made Incidental To Claim Construction, A. David Brzozowski Ii

Catholic University Law Review

The America Invents Act (AIA) represents the most significant change to U.S. patent law since the 1952 Patent Act. Since its passage, the AIA has drawn wide support from the intellectual property community, primarily due to the new post-grant opposition proceedings the Act created.

However, certain aspects of the new system created by the AIA are controversial. Specifically, judges and practitioners alike debate which standard of review courts should apply to the factual findings made by the Patent Trial and Appeals Board (PTAB) during these opposition proceedings. While the Federal Circuit has reviewed all factual findings made at the ...


Allocating Patent Litigation Risk Across The Supply Chain, Michael J. Meurer Mar 2018

Allocating Patent Litigation Risk Across The Supply Chain, Michael J. Meurer

Faculty Scholarship

The paradigmatic defendant in a patent lawsuit is a vertically integrated manufacturer. But much economic activity is conducted collaboratively by a supply chain of vertically disintegrated firms, and sometimes multiple firms are implicated in infringing activities, by making, selling, or using patented technology, or by contributing to or inducing another firm’s infringement. Often patent owners have the option of suing some or all of the members of a supply chain who contribute to the design, creation and marketing of a new technology.

Businesses increasingly contemplate the risk of patent infringement when they negotiate contractual relations to form a supply ...


The Psychology Of Patent Protection, Stephanie Plamondon Bair Feb 2018

The Psychology Of Patent Protection, Stephanie Plamondon Bair

Stephanie Bair

This Article offers the first comprehensive assessment of the major justifications for our patent system using a behavioral psychology framework. Applying insights from the behavioral literature that I argue more accurately account for the realities of human action than previous analytical tools, I critically evaluate each of the major justifications for patents — incentive theory, disclosure theory, prospect theory, commercialization theory, patent racing theory, and non-utilitarian theories. I ask whether our current patent system is an effective regime for meeting the stated goals of these accounts. When the answer to this question is no, I again turn to the behavioral literature ...


Adjustments, Extensions, Disclaimers, And Continuations: When Do Patent Term Adjustments Make Sense?, Stephanie Plamondon Bair Feb 2018

Adjustments, Extensions, Disclaimers, And Continuations: When Do Patent Term Adjustments Make Sense?, Stephanie Plamondon Bair

Stephanie Bair

The United States patent system represents a measured trade-off between two competing policy considerations: providing sufficient incentives to encourage the innovation and development of new and socially useful inventions; and ensuring that such inventions are readily available to the public at an affordable price. Although the default patent term is now twenty years from filing, various features of, and changes to, the patent system over the years have allowed patent owners to extend the duration of their patent monopolies, sometimes for several years. Such extensions, though seemingly insignificant when compared to the full patent term, have an enormous impact on ...