Intellectual Property Law Commons^™

The "Broadest Reasonable Interpretation" And Applying Issue Preclusion To Administrative Patent Claim Construction, Jonathan I. Tietz

Michigan Law Review

Inventions are tangible. Yet patents comprise words, and words are imprecise. Thus, disputes over patents involve a process known as “claim construction,” which formally clarifies the meaning of a patent claim’s words and, therefore, the scope of the underlying property right. Adversarial claim construction commonly occurs in various Article III and Article I settings, such as district courts or the Patent Trial and Appeal Board (PTAB). When these proceedings ignore each other’s claim constructions, a patent’s scope can become inconsistent and unpredictable. The doctrine of issue preclusion could help with this problem. The Supreme Court recently reemphasized in B & …

The Supreme Assimilation Of Patent Law, Peter Lee

Michigan Law Review

Although tensions between universality and exceptionalism apply throughout law, they are particularly pronounced in patent law, a field that deals with highly technical subject matter. This Article explores these tensions by investigating an underappreciated descriptive theory of Supreme Court patent jurisprudence. Significantly extending previous scholarship, it argues that the Court’s recent decisions reflect a project of eliminating “patent exceptionalism” and assimilating patent doctrine to general legal principles (or, more precisely, to what the Court frames as general legal principles). Among other motivations, this trend responds to rather exceptional patent doctrine emanating from the Federal Circuit in areas as varied as …

Practice Makes Perfect? An Empirical Study Of Claim Construction Reversal Rates In Patent Cases, David L. Schwartz

Michigan Law Review

This Article examines whether U.S. district court judges improve their skills at patent claim construction with experience, including the experience of having their own cases reviewed by the Court of Appeals for the Federal Circuit. In theory, higher courts teach doctrine to lower courts via judicial decisions, and lower courts learn from these decisions. This Article tests the teaching-and-learning premise on the issue of claim construction in the realities of patent litigation. While others have shown that the Federal Circuit reverses a large percentage of lower court claim constructions, no one has analyzed whether judges with more claim construction appeal …

Trolling For Trolls: The Pitfalls Of The Emerging Market Competition Requirement For Permanent Injunctions In Patent Cases Post-Ebay, Benjamin H. Diessel

Michigan Law Review

In eBay v. MercExchange, a unanimous Supreme Court announced that a new four-factor test should be employed by district courts in determining whether to award an injunction or damages to an aggrieved party whose intellectual property has been infringed. In the context of permanent injunctions in patent cases, district courts have distorted the four-factor test resulting in a "market competition requirement." Under the new market competition requirement, success at obtaining an injunction is contingent upon a party demonstrating that it is a market competitor After consistent application in the first twenty-five district court cases post-eBay, the market competition requirement …

Exclusion Confusion? A Defense Of The Federal Circuit's Specific Exclusion Jurisprudence, Peter Curtis Magic

Michigan Law Review

Specific exclusion has become a controversial limitation on the doctrine of equivalents, which is itself an essential and controversial area of patent law. The doctrine of equivalents allows a patentee to successfully claim infringement against devices that are outside of the literal reach of the language used by the patentee in her patent to describe what she claims as her invention. The Supreme Court has prescribed some of the outer limits of the doctrine of equivalents and articulated the underlying policy concerns that inform its analysis-noting that courts should balance protection of the patentee's intellectual property with the public's reasonable …

Pathological Patenting: The Pto As Cause Or Cure, Rochelle Dreyfuss

Michigan Law Review

The Patent Act was last revised in 1952. The hydrogen bomb was exploded that year, vividly demonstrating the power of the nucleus; in the ensuing postwar period, the Next Big Thing was clearly the molecule. Novel compounds were synthesized in the hopes of finding new medicines; solid-state devices exploited the special characteristics of germanium and other semiconductors; as investments in polymer chemistry soared, advice to the college graduate soon boiled down to "one word ... just one word[:] ... Plastics." Over the next half-century, things changed dramatically. "Better living through chemistry" has begun to sound dated (if not sinister). Genomics …

Locating Inevitable Disclosure's Place In Trade Secret Analysis, Jennifer L. Saulino

Michigan Law Review

For ten years, William Redmond, Jr., worked for PepsiCo, the maker of the sports drink All-Sport. Redmond's status as General Manager gave him access to trade secrets. PepsiCo protected those trade secrets by contract, and, as is typical, PepsiCo required Redmond to sign a confidentiality agreement covering all "confidential information relating to the business of [PepsiCo]." This confidentiality agreement, like most of its kind, protected the company from the danger that an employee who knew secret information would change jobs and disclose that information. In late 1994, Redmond accepted a position with Quaker's Gatorade division, a major competitor of PepsiCo's …

Swallowing The Apple Whole: Improper Patent Use By Local Rule, Ellisen S. Turner

Michigan Law Review

During patent infringement litigation, the Federal Rules of Civil Procedure ("FRCP") and the federal district court's local rules govern the parties' pretrial discovery and motion practice. The U.S. District Court for the Northern District of California has adopted the most comprehensive local rules to date covering pretrial procedures in the patent litigation context. The Northern District of California Patent Local Rules ("Local Rules") may come to have a significant impact throughout the federal courts, as it appears that other jurisdictions and commentators are looking to the Local Rules for guidance. For instance, the American Bar Association Section of Intellectual Property …

The Availability Of Jury Trials In Copyright Infringement Cases: Limiting The Scope Of The Seventh Amendment, Andrew W. Stumpff

Michigan Law Review

This Note argues that statutory copyright damages are properly regarded as equitable and hence that no right to a jury trial exists in cases brought to recover such damages. More generally, the Note maintains that the seventh amendment's distinction between equitable and legal causes of action has produced irrational consequences, and proposes that "legal" issues be defined narrowly so as to limit the scope of the seventh amendment. Part I analyzes the debate over statutory copyright damages, concluding that historical and statutory construction arguments require these damages to be construed as legal. Part II examines some of the problems that …

Patent Office Performance In Perspective, George E. Frost

Michigan Law Review

" the only patent that is valid is one which this Court has not been able to get its hands on."

Justice Jackson's note of despair reflects all too accurately the treatment patents have seemingly received in the hands of the courts since the "new trend" of recent years. It has become the legal fashion to characterize letters patent as something the Patent Office issues and the courts strike down. Statistical support for this conclusion can be readily assembled.

Abstracts, Katherine Kempfer

Michigan Law Review

The abstracts consist merely of summaries of the facts and holdings of recent cases and are distinguished from the notes by the absence of discussion.

Judgments - Declaratory Judgments - Availability To Alleged Infringers In Patent Cases, Michigan Law Review

Michigan Law Review

In addition to an injunction and an accounting, the prayer of the plaintiff requested a declaratory judgment to determine the plaintiff's rights in relation to a patent of the defendant. The petition alleged the plaintiff was importing and offering for sale a chemical called "Estradoil," and that the defendant had notified the plaintiff's customers that the chemical infringed the defendant's patent. A year prior to the action, the defendant had published a notice in a trade journal stating that a certain patent had been issued to it which covered the chemical known as "Estradoil," and that any use of the …

Federal Courts - Appeal And Error - Does A Statute Which Authorizes An Interlocutory Appeal Require Such Appeal?, Michigan Law Review

Michigan Law Review

A bill seeking an injunction and an accounting was filed in a United States district court for alleged infringement by defendant of plaintiff's rights in the words of a song. Defendant's appeal from a decree enjoining further use of the song and directing an accounting for profits was denied, because the appeal had been taken more than thirty days after its entry and so the circuit court of appeals was without jurisdiction. The case proceeded to an accounting in the district court, and a final decree was entered from which defendant appealed again to the circuit court. Held, the …

Patents - Option Of The Court To Permit Contempt Proceedings Or To Require A New Suit

Michigan Law Review

A final injunction was issued by the federal district court of Massachusetts against A, a Michigan corporation. The terms of the injunction were that A should not make, use, or sell lasts, or any colorable imitation thereof, embodying the invention covered by certain enumerated claims belonging to the present complainant. In a subsequent term of court the complainant alleged a violation of the injunction and brought contempt proceedings against A in the district court. The alleged infringement consisted in the manufacture and sale of a device which was slightly changed in form from that which the defendant had made prior …

Recent Important Decisions, Michigan Law Review

Michigan Law Review

Adverse Possession--Hostile Character--Possession Under Executory Contract for Sale; Bills and Notes--Bona Fide Purchase--Effect of Taking After Maturity; Bills and Notes--Bona Fide Purchase--Payment of Forged Check--Recovery of Payment; Bills and Notes--Invalidity of Note--Recovery Upon Original Consideration; Constitutional law--Due Process of Law--Situs of Ship for Purposes of Taxation; contracts--Sufficiency of Typewritten Signature; Copyright--Moving Pictures as Dramatization of Book; Corporations--Stockholder's Meetings--Effect of Withdrawal of Stockholders; Courts--The New Commerce Court--Jurisdiction--First Decision; Covenants Running with the Land--Building Restrictions; Damages--Excessiveness--Personal Injuries--Remittitur; Dead Bodies--Burial Determination of Place; Easements--Merger--Use by Owner of Servient Estate--Adverse Possession; Homicide--Burden of Proof When Insanity is a Defense; Intoxicating Liquors--Illegal Sale--"Dispensing"; Judgment--Collateral Attack--Defective …

Recent Important Decisions, Michigal Law Review

Michigan Law Review

Appeal and Error--Attorney's Interest in Case on Appeal--Contingent Fee; Bankruptcy--discharge--subsequent Action for Fraud; Bills and Notes--Usury No Defense Against a bona Fide Holder--Construction of Negotiable Instruments Statute; Boundaries--Street, Terminus A Quo; Carriers--Hepbern Act--State and Federal Courts--Phrase "Caused by It"; Chattel Mortgages--Payment without Notice of Assignment--Construction of a Mortgage Provision; Constitutional Law--Equal Protection of Laws--Statute Requiring Screens on Cars Operated by Corporations; Constitutional Law--Equal Protection of the Laws--Class Legislation; Contracts--No Recovery Under an Entire Illegal Contract; Contracts--Validity of Contract in Contemplation of Divorce; Courts--Federal Courts--authority of Decision of State Courts--"Telegraph"; Covenants--Breach of that Against Incumbrances; Elections--Ballots--Indication of Choice by Voter; Evidence--Facts …

The Proposed Court Of Patent Appeals, Otto Raymond Barnett

Michigan Law Review

Experience has demonstrated that nowhere was the foresight and wisdom of the framers of the Federal Constitution more clearly shown than when they embodied in that instrument the provision that to encourage progress in science and the useful arts, Congress should have authority to secure to writers and inventors for limited times, exclusive rights to their productions. When the Federal Constitution was drafted, the manufacturing industries of this country were insignificant. Since then the industrial progress of the United States has been one of the marvels of the world's history and this progress and the supremacy of American manufacturers have …

Note And Comment, Henry M. Bates, Robert M. See, Horace Lafayette Wilgus, Clyde A. Dewitt

Michigan Law Review

Courts--Jurisdiction of Circuit Court--Enjoining Writ of Error; Criminal Law--Arraignment--Waiver; Damages--Personal Injuries--Expense of Nursing; Deeds--Boundaries--Navigable Waters; Deeds--Variance Between Granting Clause and Habendum--Construction; Eminent Domain--Use of Urban Street Car Lines by Interurban Cars; Evidence--Admissibility of Statement of One Partner to a Commercial Agency as to Asset and Liabilities; Evidence--Admission of a Carbon Copy of a Contract as a Duplicate Original; Federal Courts--jurisdiction--Action Against State Officers; Foreign Corporations--Liability to be Sued; Homicide--Self-Defense--Provoking Difficulty; Insurance--Certificate Silent as to Suicide; Joint Stock Associations--have they at Common law Powers and Privileges of a Corporation not Possessed by Individuals or Partnerships?; Municipal corporations--Protecting Against Fraud by Ordinance--Sale …

Note And Comment, Michigan Law Review

Michigan Law Review

Is Commerce Between a State and a Territory Interstate Comerce?; Right of Court to Instruct upon the Failure of Defendant to Testify in a Criminal Action; The Last of the Kentucky Bank Cases, and the Relations Between the State and Federal Courts; The Last of the Kentucky Bank Cases--Federal Tax Judgementss in STate Courts; Power of the Court to Order a Physical Examination in Personal Injury Cases; The Porto Rican is not an Allien; Mimicry as Infringement of Musical Composition;