Intellectual Property Law Commons^™

Choosing The Consequences Of Tam And Brunetti, Alfred C. Yen

Chicago-Kent Journal of Intellectual Property

In Matal v. Tam and Iancu v. Brunetti, the Supreme Court did something it has never done before – namely apply strict First Amendment scrutiny to trademark law. This is a big deal. Many have argued, to relatively little effect, that intellectual property laws, like trademarks, raise serious free speech problems. It is therefore significant news for the Court to declare portions of the Lanham Act unconstitutional not once, but twice.

Ranking Parallel Petitions Before The Ptab: A Survey, Monica Grewal, Heather Petruzzi, Wenli Gu Phd

Chicago-Kent Journal of Intellectual Property

To understand the trends in recent ranking practice, this article an-alyzes a subset of ranked parallel petitions that received an institution decision before or on February 20, 2020. Using a search filter in Docket Navigator to locate multiple petitions challenging the same pa-tent, the authors identified 39 occurrences of ranked parallel petitions that challenge the same claims of the same patents, as well as 2 occur-rences of ranked parallel petitions that challenge different claims of the same patent.

Unfettered Discretion: A Closer Look At The Board's Discretion To Deny Institution, Joel D. Sayres, Reid E. Dodge

Chicago-Kent Journal of Intellectual Property

To ensure that the doorway to IPRs was not limitless, Congress de-lineated a specific threshold before a trial could be instituted. That threshold is set forth in 35 U.S.C. § 314(a), which provides that IPR may not be instituted unless the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” However, the Board has increas-ingly identified circumstances in which it will not institute IPR, even where a petitioner satisfies this statutory threshold. Indeed, the Board has seemingly adopted the view that it has …

Expert Discovery Protections: Comparing District Courts With The Ptab, Blaine M. Hackman, Vi T. Tran, Katherine A. Helm

Chicago-Kent Journal of Intellectual Property

Expert witness testimony can be critical in patent litigation in all forums. In Patent Trial and Appeal Board (“PTAB”) proceedings, particularly inter partes review (“IPR”) and post-grant review (“PGR”), expert testimony through declarations and depositions plays a central role in both challenging and defending patents. In district courts, live expert testimony is key to proving infringement and invalidity. Accordingly, the legal protections governing the disclosure of expert testimony in discovery in both forums are carefully proscribed, but with notable distinctions.

Post-Ait Review Of Real Party In Interest Decisions, Stephanie M. Brooker, Robert Breetz, Matthew Johnson, Thomas Ritchie

Chicago-Kent Journal of Intellectual Property

Throughout the Patent Trial and Appeal Board’s (“PTAB”) history, patent owners have tried to leverage a petitioner’s alleged failure to name all real parties-in-interest (“RPIs”) as a way to achieve denial of an inter partes review (“IPR”) petition or trial termination. The effectiveness of those efforts has ebbed and flowed. Initially, some PTAB panels viewed naming of RPIs as a jurisdictional requirement, concluding that RPI-naming errors were not fixable after the 35 U.S.C. § 315(b) one-year bar. Petitioners could lose their petition filing date based on RPI missteps, resulting in then untimely petitions. Later decisions backed away from that hardline …

Renegade Riders And The Marks They Love: Can The Government Tear That Patch Right Off Your Leather Jacket?, Angela M. Nieves

Chicago-Kent Journal of Intellectual Property

A collective membership mark is a type of non-commercial trademark used to identify and associate with something or someone. In February 2019, a California district court ruled that the government could not forcibly seize from the Mongols Motorcycle Club their prized collective membership marks, seemingly halting a ten-year legal tug of war. The court held that forfeiture of these marks was not only unconstitutional, it was illogical.

This Comment explains how and why expressive marks like the Mongols’ should not be automatically deemed off limits to the government. It proposes a trademark-specific doctrine to help courts draw a constitutional line …

The Eleventh Auer: The Effect Of Kisor V. Wilkie On Rulemaking And Adjudication At The United States Patent And Trademark Office, Andrew Schneider, Jonathan Stroud

Chicago-Kent Journal of Intellectual Property

Courts have long deferred to an agency’s interpretation of an ambiguous rule or statute, in light of the agency’s relevant technical expertise. But some judges prefer that Article III courts review everything; and deferring often involves relying on an agency’s interpretation of a genuinely ambiguous statute—the oft-discussed Chevron deference doctrine. This Article analyzes the more nuanced Auer deference, where a court defers to an agency’s later interpretation of its own ambiguous rule or regulation. Recently, the Supreme Court took and decided Kisor v. Wilkie, which dramatically modified the Auer doctrine. While Kisor appealed a claim for veteran’s benefits that implicated …

Tripping Over The Eu Trade Secret Directive: "Reasonable Steps" To Get Back On Track, Bianca Fox

Chicago-Kent Journal of Intellectual Property

Trade secrets are a crucial tool for global firms today, including those that do business within the European Union (“EU”). The 2016 European Union Trade Secret Directive (“Directive”) attempted to establish uniform trade secret protection across all twenty-eight EU Member States but created problems in its wake. In particular, the Directive put no restrictions on whether Member States could specify certain “reasonable steps” that businesses must take in order to be afforded trade secret protection. This Article argues that Member States should be required to follow the trade secret definition laid out in Article 2 of the Directive and not …

German Law On Patent Injunctions: Legal Framework And Recent Developments, Peter Picht Phd

Chicago-Kent Journal of Intellectual Property

No abstract provided.

Into The Woods: A Biologic Patent Thicket Analysis, Jeffrey Wu, Claire Wan-Chiung Cheng

Chicago-Kent Journal of Intellectual Property

Some drug companies, brand biologic companies, in particular, have been accused of covering only a single drug with more than eighty patents. These drug patents accumulate to what critics claim as one of the major culprits of high drug prices— “patent thickets.” However, current literature mostly focuses on the substantial patent counts and less on the characteristics and the causes of these patent thickets; but to effectively understand and tackle this issue, more thorough discussions are necessary. This article aims to provide further insight into this issue by analyzing and comparing the U.S. patents that cover top-selling biologics and small-molecule …

Perfecting U.S. Patentable Subject Matter - Merging The European Approach And The American Principles, Ilija Ilijovski

Chicago-Kent Journal of Intellectual Property

This article illuminates the recent developments in the field of the subject matter eligibility of the inventions and offers a resolution to the crucial issues in the field. The solution for resolving of the crucial issues combines the current U.S. approach of affirmative defining of the scope of the subject matter of the patents and the approach of the European Patent Convention, of both affirmative and negative defining of the patentable subject matter. In particular, the article provides a draft legislation as a more sustainable and precise solution that emerged from the comparison between the experience of the participants in …

Discretionary Denials Of Ipr Institution, Jasper Tran, Matthew Chung, David Maiorana, Matthew Johnson

Chicago-Kent Journal of Intellectual Property

No abstract provided.

Litigating Invalidity After Ipr Resolution, Libbie Dimarco, Nathan Speed

Chicago-Kent Journal of Intellectual Property

It is becoming increasingly apparent that inter partes review (“IPR”) petitioner estoppel after the Patent Trial and Appeal Board (“PTAB”) issues a final written decision can have broad consequences on a petitioner’s invalidity defenses in civil actions. This article will examine the practical impact of IPR estoppel and discuss strategic considerations for IPR parties involved in parallel district court or International Trade Commission (“ITC”) actions. This article will address four main questions : (1) when and how a petitioner can use paper prior art in a § 102 or 103 defense after an unsuccessful IPR; (2) how IPR estoppel may …

The Disappointments Of Networks, Henry Fraser Phd

Chicago-Kent Journal of Intellectual Property

The past 25 years have seen a ‘turn to culture’ in copyright scholarship. This cultural turn has produced an expansive account of copyright’s disadvantages with respect to qualitative cultural and political goals such as: promoting democracy, individual self-authorship, expressive diversity, and more inclusive power distribution in shaping culture and discourse. The prevailing view among proponents of the cultural turn is that copyright stands in the way of the democratisation of creative and discursive spheres online. This article challenges that view. I contend that online, ‘free’ content economies—characterised by peer production, decentralised selection, and peer to peer content sharing—have not lived …

The Confusion Of Trademark Territoriality, Joseph Michael Levy

Chicago-Kent Journal of Intellectual Property

No abstract provided.

The Death Of Moral Freedom: How The Trademark Dilution Act Has Allowed Federal Courts To Punish Subjectively-Defined Immoral Secondary Use Of Trademarks, David E. Missirian

Chicago-Kent Journal of Intellectual Property

No abstract provided.

Patent Showdown At The N.D. C[Orr]Al, Peter S. Menell

Chicago-Kent Journal of Intellectual Property

No abstract provided.

Parity Analysis: Topological Considerations For Patent Valuation And Portfolio Management, James Skelley

Chicago-Kent Journal of Intellectual Property

No abstract provided.

Judge-Made Solutions To Patent Litigation, Sapna Kumar

Chicago-Kent Journal of Intellectual Property

No abstract provided.

Tc Heartland, A Legally Wrong Painkiller For The Forum Shopping Problem, Xincheng Ma

Chicago-Kent Journal of Intellectual Property

No abstract provided.

Assessment Of Disclosure In European Prodrug Patent Claims, Mari Minn Phd, Llm

Chicago-Kent Journal of Intellectual Property

No abstract provided.

Table Of Contents, Editors

Chicago-Kent Journal of Intellectual Property

No abstract provided.

Focusing Patent Litigation, Bernard Chao

Chicago-Kent Journal of Intellectual Property

No abstract provided.

The Mixed Case For A Ptab Off-Ramp, Saurabh Vishnubhakat

Chicago-Kent Journal of Intellectual Property

No abstract provided.

State Immunity And The Patent Trial And Appeal Board, Tejas N. Narechania

Chicago-Kent Journal of Intellectual Property

No abstract provided.

Copyright & Roster

Chicago-Kent Journal of Intellectual Property

No abstract provided.

Sovereign Immunity: A “Get Out Of Jail Free” Card For State Patent Owners At The Ptab, Anthony Zucchero, Warren Thomas

Chicago-Kent Journal of Intellectual Property

No abstract provided.

Navigating Uncertainty — Addressing Purely Functional Claim Limitations In A Post-Williamson World With Ongoing Ptab Climate Change, Kenneth Darby, Rick Bisenius

Chicago-Kent Journal of Intellectual Property

No abstract provided.

Table Of Contents

Chicago-Kent Journal of Intellectual Property

No abstract provided.

Indefiniteness In Inter Partes Review: The Existing Quagmire And A Path Forward, Christopher S. Geyer, Daniel C. Tucker, Jency J. Mathew

Chicago-Kent Journal of Intellectual Property

No abstract provided.