Intellectual Property Law Commons^™

All That Is Solid Melts Into Air: The Subject-Matter Eligibility Inquiry In The Age Of Cloud Computing, Scott T. Luan

Santa Clara High Technology Law Journal

This article critiques and refines the subject-matter eligibility inquiry in patent law by examining the process of creativity in the context of software-implemented inventions. As a substantive critique of § 101 jurisprudence, this article, informed by copyright law, proposes a working hypothesis for a general structure of the subject-matter eligibility inquiry in which a critical determination is the appropriate level of abstraction for claim construction. As a discursive critique of the limits and limitations of judicial language, this article argues that courts have incorrectly presumed that contemporary legal thought is equipped, conceptually and linguistically, to understand the full significance of …

Reconsidering The Standard For Enhanced Damages In Patent Cases In View Of Recent Guidance From The Supreme Court, Howard Wisnia, Thomas Jackman

Santa Clara High Technology Law Journal

This article examines whether the jurisprudence of the enhanced damages provision found in 35 U.S.C. § 284 should be modified in light of recent Supreme Court decisions that have altered the jurisprudence of the attorney’s fees provision found in 35 U.S.C. § 285. The authors conclude that a revision is needed to the standard for determining whether to award enhanced damages under § 284 and that juries as opposed to judges should determine whether to grant such an award as well as the amount of the award.

Limited Consumer Privacy Protections Against The Layers Of Big Data, Andrew W. Bagley, Justin S. Brown

Santa Clara High Technology Law Journal

Consumers give away their data voluntarily and involuntary through their everyday online interactions. Many of these interactions are governed by “click-wrap” agreements in which consumers agree to data use terms with their Internet service provider (ISP), content provider, or an entire computing ecosystem through various layers of the Internet. This phenomenon effectively means that consumers lose control of their data to an endless web of third party big-data brokers unaccountable to the user. All the while, the increasingly dynamic and valuable nature of datasets makes it difficult to predict how data collected today will be used in the future. To …

Facing Real-Time Identification In Mobile Apps & Wearable Computers, Yana Welinder

Santa Clara High Technology Law Journal

The use of face recognition technology in mobile apps and wearable computers challenges individuals’ ability to remain anonymous in public places. These apps can also link individuals’ offline activities to their online profiles, generating a digital paper trail of their every move. The ability to go off the radar allows for quiet reflection and daring experimentation—processes that are essential to a productive and democratic society. Given what we stand to lose, we ought to be cautious with groundbreaking technological progress. It does not mean that we have to move any slower, but we should think about potential consequences of the …

Reining In Remedies In Patent Litigation: Three (Increasingly Immodest) Proposals, Thomas F. Cotter

Santa Clara High Technology Law Journal

This essay, which builds on my recent work on the law and economics of comparative patent remedies, presents three proposals relating to the enforcement of domestic patent rights. The first, which may be close to being adopted in the United States, is for the courts and the International Trade Commission (ITC) to adopt a general presumption, grounded in patent law and policy, that patent owners who have committed to license their standard essential patents (SEPs) on fair, reasonable, and nondiscriminatory terms are not entitled to permanent injunctions or exclusion orders, but rather only to a damages in the form of …

Who Is The Witness To An Internet Crime: The Confrontation Clause, Digital Forensics, And Child Pornography, Merritt Baer

Santa Clara High Technology Law Journal

The Sixth Amendment’s Confrontation Clause guarantees the accused the right to confront witnesses against him. In this article I examine child pornography prosecution, in which we must apply this constitutional standard to digital forensic evidence. I ask, “Who is the witness to an Internet crime?”

The Confrontation Clause proscribes the admission of hearsay. In Ohio v. Roberts, the Supreme Court stated that the primary concern was reliability and that hearsay might be admissible if the reliability concerns were assuaged. Twenty-four years later, in Crawford v. Washington, the Supreme Court repositioned the Confrontation Clause of the Sixth Amendment as a procedural …

Here, There And Everywhere: Mobility Data In The Eu (Help Needed: Where Is Privacy?), Raffaele Zallone

Santa Clara High Technology Law Journal

European law on data privacy has not clearly developed the concept of mobility data. The evolution of technology has forced the EU to cope with this reality, but so far its legislation lacks a specific focus on this aspect of technology.

A body composed of representatives from the various data protection authorities, the so-called article 29 Working Party (the name stems from section 29 of the European Data Privacy Directive, that calls for the formation and the task of this body) has coped with various aspects of mobile technology, but the documents and analysis it has produced are general and …

A Framework For Designing Co-Regulation Models Well-Adapted To Technology-Facilitated Sharing Economies, Bryant Cannon, Hanna Chung

Santa Clara High Technology Law Journal

Sharing economies, with their vast diversity of goods and services offered and rapidly evolving business models, have proven inconducive to traditional-regulatory approaches. Yet a complete laissez-faire approach or complete ban is not advisable. On the one hand, it is in the public interest to allow these new economies to continue to innovate, as they create value from unused assets, facilitate useful market transactions, and sometimes even lead to the creation of new goods and services to improve quality of life. On the other hand, some characteristics inherent in the design of sharing economies lead to negative externalities, disrupt city planning …

Civil Cyberconflict: Microsoft, Cybercrime, And Botnets, Janine S. Hiller

Santa Clara High Technology Law Journal

Cyber “warfare” and hackback by private companies is a hot discussion topic for its potential to fight cybercrime and promote cybersecurity. In the shadow of this provocative discussion, Microsoft has led a concerted, sustained fight against cybercriminals by using traditional legal theories and court actions to dismantle criminal networks known as botnets. This article brings focus to the role of the private sector in cybersecurity in light of the aggressive civil actions by Microsoft to address a thorny and seemingly intractable global problem. A botnet is a network of computers infected with unauthorized code that is controlled from a distance …

Accountability In The Patent Market: A Duty To Monitor Patent Risk From The Boardroom, Ian David Mcclure

Santa Clara High Technology Law Journal

Patent risk is on the rise; and not just because there is more patent litigation now than ever before. The value of strategic patent management is no longer an unknown or ignored ingredient to corporate success. Nor is proactive and pragmatic patent risk assessment. Shareholders and investors have now caught on that patent management and patent risk affect the value of their equity. This realization has initiated a circuitous life cycle in which more patents are being transacted, divested and strategically managed, resulting in more patent risk for operating companies to monitor. Yet, this last piece—the proactive monitoring of patent …

Long On Rhetoric, Short On Results: Agile Methods And Cyber Acquisitions In The Department Of Defense, Daniel E. Schoeni Usaf

Santa Clara High Technology Law Journal

Cyber warfare has arrived. The Department of Defense (DoD) is under attack, and our security is at stake. Yet in a field defined by its rapid growth, the DoD arms itself at the same pace that that it buys major weapons systems, an acquisition cycle of 7–10 years. It thus buys obsolete cyber-defense tools. The “arsenal of democracy” has already provided us the tools for overcoming this impediment in the form of agile software-development methods. Yet the DoD has been reluctant to set aside decades of experience and utilize different methods for software than it does for other acquisitions. But …

Keeping Up With The Game: The Use Of The Nash Bargaining Solution In Patent Infringement Cases, Lance Wyatt

Santa Clara High Technology Law Journal

Determining damages is an integral stage in the patent litigation process. Since 1970, reasonable royalty damages have been calculated using the factors set forth in the seminal decision Georgia-Pacific Corp. v. United States Plywood Corp. However, these factors are prone to manipulation and abuse by damages experts. To address this abuse, damages experts have utilized a solution to a two-person bargaining situation, the Nash Bargaining Solution (NBS), as a method to calculate reasonable royalty damages in patent infringement cases. Since the introduction of NBS in patent infringement cases, courts have been reluctant to admit the use of the NBS to …

Ids Practice After Therasense And The Aia: Decoupling The Link Between Information Disclosure And Inequitable Conduct, Arpita Bhattacharyya, Michael R. Mcgurk

Santa Clara High Technology Law Journal

The duty to disclose material information to the United States Patent and Trademark Office under 37 C.F.R. § 1.56 (Rule 56) is a critical requirement when prosecuting a patent application in the United States. The failure to disclose information can result in a later ruling of inequitable conduct rendering the patent unenforceable. The Federal Circuit’s en banc decision in Therasense heightened the “materiality” and “intent” standards for finding inequitable conduct. However, there has been much uncertainty in the patent community regarding the future of the duty of disclosure under Rule 56. The majority in Therasense theorized that curing the “plague” …

Can Bruce Willis Leave His Itunes Collection To His Children?: Inheritability Of Digital Media In The Face Of Eulas, Claudine Wong

Santa Clara High Technology Law Journal

In early September, 2012, multiple news agencies reported that actor Bruce Willis was going to sue Apple for the right to pass his iTunes collection to his children upon his death. While the story ultimately proved to be false, it begs the question: Can Mr. Willis actually pass his iTunes songs, legally purchased but subject to a license agreement, to his daughters? We are increasingly acquiring digital music and e-books, copyrighted digital content with legally well-understood physical equivalents. As users pass away, their families are left to wonder if or how they can gain access to the deceased person’s digital …

The Information Privacy Law Of Web Applications And Cloud Computing, Sebastian Zimmeck

Santa Clara High Technology Law Journal

This article surveys and evaluates the privacy law of web applications and cloud computing. Cloud services, and web applications in particular, are subject to many different privacy law requirements. While these requirements are often perceived as illfitting, they can be interpreted to provide a structurally sound and coherent privacy regime. The applicable body of law can be separated into two tiers: the primary privacy law and the secondary privacy law. The primary privacy law is created by the providers and users of cloud services through privacy contracts, especially, privacy policies. The secondary privacy law, contained, for example, in statutes and …

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

Santa Clara High Technology Law Journal

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 …

Copyright Subject Matter And A "Light" For Designers' Rights, Matteo Mancinella

Santa Clara High Technology Law Journal

Copyright protection in the fashion industry is currently the focus of intense debate in the United States, particularly centered on the utility of special legislation to protect designs from knock-offs. This article focuses on the importance of copyright protection for fashion designers, and the obstacles to copyright currently faced by fashion designers.

What is the legal rationale for not providing copyright protection for fashion design? Why are designers’ creations not granted copyright protection? Unlike authors and musicians, fashion designers can only enjoy protection afforded by trademark for logos. Clothing is considered a “useful article”—not eligible for copyright protection—unless it is …

Open Source Software Compliance: The Devil Is Not So Black As He Is Painted, Maxim V. Tsotsorin

Santa Clara High Technology Law Journal

Many commercial enterprises effectively utilize open source code when developing various software products—virtually every software developer uses open source in his or her work. But along with economic benefits and production efficiency come significant legal risks, exacerbated by the wide availability of OSS components. While some licenses are permissive and demand very little, others require any work based on, or even containing only parts of an open source code, to be distributed only as OSS.

Most commercial enterprises and software developers recognize potential business and legal risks and implement some sort of compliance mechanism as a best practice. But what …

Capitol Records V. Redigi, United States District Court For The Southern District Of New York

Historical and Topical Legal Documents

No abstract provided.

Does The Us Patent System Need A Patent Small Claims Proceeding?, Colleen Chien, Michael J. Guo

Faculty Publications

Patent litigation is expensive. The primary motivation for the creation of a patent small claims proceeding is to make enforcement more affordable. However, in the twenty or so years since the American Intellectual Property Law Association (AIPLA) first endorsed the idea of a small claims patent court through Resolution 401‐4, the patent litigation landscape has drastically changed. Although patent litigation costs are still high, the equities have shifted. The marketplace for patents has developed, providing more options than previously existed to monetize and assert patents. However, the cost of patent defense has not gone down, and small companies cannot afford …

Will Fda Data Exclusivity Make Biologic Patents Passé?, Vincent J. Roth

Santa Clara High Technology Law Journal

Much controversy has ensued over the current twelve-year data exclusivity period afforded to biosimilars, pursuant to the Biologics Price Competition and Innovation Act of 2009 (BPCI).

Many commentators speculate whether data exclusivity will overtake patents as the preferred method of intellectual property protection for new biologic drugs. A comparison of data exclusivity with the patent system, however, reveals few similarities and many differences. Moreover, legislative gaps and absent industry mechanisms leave a void that is a barrier to entry in the biosimilars market, referred to here as “regulatory impracticality.”

A survey was conducted with senior management at biopharma companies regarding …

State Taxation Of Cloud Computing, Stephen J. Lusch

Santa Clara High Technology Law Journal

As the digital environment in which we live continues to change at speeds that were unfathomable two decades ago, archaic state tax systems have struggled to keep pace. Cloud computing is the latest innovation to introduce considerable complexity into the state and local tax system. Cloud computing is prevalent in many aspects of the user experience with companies such as Apple, Amazon, and Google now providing their traditional services via a cloud component. With three primary service models and countless transactional forms, cloud computing is difficult to fit into most current tax systems. Though some jurisdictions have begun to issue …

Downloading, Distributing, And Damages In The Digital Domain: The Need For Copyright Remedy Reform, Joe Donnini

Santa Clara High Technology Law Journal

Should copyright remedy laws be changed to address the proliferation of sharing of online content? On one hand, harsh penalties may improve compensation and infringement deterrence; on the other hand, harsh penalties may harm the interests of free expression and the enrichment of society through sharing. This article focuses on identifying the ideal level of enforcement and proposes a new remedy scheme to appropriately address social media sharing versus commercial misappropriation.

In order to do that, Part I of this article explores the purposes of compensation and deterrence that are behind the copyright statutory remedy scheme. Thereafter, Part II sheds …

Ten Years Of Inter Partes Patent Reexamination Appeals: An Empirical View, Eric J. Rogers

Santa Clara High Technology Law Journal

An empirical analysis of the first ten years of decisions by the Board Patent Appeals and Interferences regarding inter partes patent reexamination appeals was conducted. The analysis of 101 cases focused on answering three broad questions: (1) How accurate are the specialist patent examiners of the Central Reexamination Unit of the U.S. Patent and Trademark Office? (2) Do patent owners or third party requestors fare better in appeals of decisions in inter partes reexamination proceedings? (3) Which types of appeals are more likely to be successful? The examiners’ determinations were upheld more than three fourths of the time; third party …

Software Patents & Functional Claiming, Colleen Chien, Aashish Karkhanis

Faculty Publications

On Feb 12, 2013, the PTO held a roundtable about software patents at Stanford. Software patents have received a lot of attention and we don't believe it is undue: software patents are behind a disproportionate share of patent litigations -- more specifically, over half (55%) of all patent defendants and 82% of PAE ("patent troll") defendants are there because of a software patent, applying the Graham-Vishnubhakat definition to data provided by RPX Corporation. In this presentation, we more rigorously apply 35 USC 112(f) in accordance with the proposal Mark Lemley outlines in his WIRED oped "Let's Go Back to Claiming …

Masck V. Sports Illustrated, United States District Court For The Eastern District Of Michigan

Historical and Topical Legal Documents

No abstract provided.

Has Delaware Become The "New" Eastern District Of Texas? The Unforeseen Consequences Of The Aia, Fabio E. Marino, Teri H.P. Nguyen

Santa Clara High Technology Law Journal

To stem the rising tide of patent suits brought by non-practicing entities (NPEs), Congress enacted the anti-joinder provisions of the Leahy-Smith America Invents Act (AIA) while, at nearly the same time, the Federal Circuit issued a series of decisions making it easier for defendants to transfer multi-defendant cases filed by NPEs away from the Eastern District of Texas. The unexpected result of these initiatives, however, has been that NPEs have selected the District of Delaware as their new “forum of choice,” making it the most popular forum for patent litigation in the country and displacing the Eastern District of Texas.

Copyright's Hand Abstractions Test For Patent's Section 101 Subject-Matter Eligibility, Mark R. Carter

Santa Clara High Technology Law Journal

Since the Federal Circuit’s 2007 In re Bilski decision and the Supreme Court’s 2008 Bilski v. Kappos decision, patent law’s subject-matter eligibility standard under 35 U.S.C. §101 has been uncertain. This paper posits patent law’s patent-ineligible abstract ideas are science concepts and science laws, composed of science concepts, as defined by science philosophers. Somewhat analogous to copyright law, it also presents a downward patent-eligibility Hand abstractions test from an alleged abstract idea, natural law, or natural phenomenon to independent claims as a coherent, systematic, and practical approach to judging utility-patent eligibility. Patent claims manifest an innate vertical abstractions ladder, so …

Why International Inventors Might Want To Consider Filing Their First Patent Application At The United States Patent Office & The Convergence Of Patent Harmonization And E-Commerce, Michael H. Anderson, Daniel Cislo, Jaime Saavedra, Kimberly Cameron

Santa Clara High Technology Law Journal

On March 16, 2013, the United States implemented the Leahy-Smith America Invents Act (AIA). Enactment of the AIA substantially enhances the value of U.S. provisional and non-provisional patent applications (PPAs and NPAs) to foreign applicants. Here, the authors endeavor to outline the procedural and strategic considerations facing foreign applicants for PPAs by offering a brief survey of protective foreign patent application law, followed by an analysis of the modern benefits of PPA filing in the post-AIA world. The analysis here suggests that the traditional benefits to foreign filers of PPAs encompassing term extension, cost-efficiency and secrecy have been amplified by …

In Privity With The Public Domain: The Standing Doctrine, The Public Interest, And Intellectual Property, Russell W. Jacobs

Santa Clara High Technology Law Journal

This Article explores two recent Supreme Court cases—Association of Molecular Pathology v. Myriad Genetics, Inc. and Golan v. Holder—and other intellectual property litigation in the context of the standing doctrine and the public interest.

These cases present significant public policy questions, but the adversarial nature of the courts makes them ill-equipped to consider the multiple public interests and multiple stakeholder perspectives. As a result, adjudication of these cases in the courts results in propertization of the intellectual property interests, the exclusion of non-parties from the formation of policy, and the exhaustion of any further policy debate after the court decision. …