Intellectual Property Law Commons^™

When Tigers Bare Teeth: A Qualitative Study Of University Patent Enforcement, Jacob H. Rooksby

Law Faculty Publications

The pursuit of patents is a key avenue of economic development and revenue generation for American research universities, and one with significant policy implications for higher education. In a time of shifting funding models for higher education, the $1.8 billion dollars American universities generated in revenues in 2011 from licensing their patents makes patenting an attractive candidate for further university attention and resource investment. Spurred in part by the Bayh-Dole Act of 1980, research universities across the country have created vast institutional  apparatuses—typically centered in technology transfer offices (“TTOs”)—to help move ideas invented in the laboratory and classroom into commercial …

Google Books: Game, Set, But Not Match, James Gibson

Law Faculty Publications

It’s back: Google Books, our favorite topic in this Intellectual Property Viewpoints series. Google Books is the project through which Google has brought its search capability to the text of more than 20 millions books (with the number still growing). To do so, Google must scan the book and convert the scan to readable text. And there’s the problem: Scanning is copying, and copying raises the question of whether the massive project is a massive violation of the copyrights in all those books. Thus the Authors Guild v. Google class action brought by authors and publishers against Google in a …

Patent Applications And The Performance Of The U.S. Patent And Trademark Office, Christopher A. Cotropia

Law Faculty Publications

This Article reports data and analyses to facilitate answering these questions. The reported data was obtained from two sources. The first is the Workload Tables from the USPTO annual reports, called the "USPTO Performance and Accountability Reports," provided to the President, Congress, and public.' The second is data received from the USPTO in response to Freedom of Information Act ("FOIA") requests.3 From these two data sources, information such as the number of applications filed per year, the type of applications being filed and prosecuted, the pendency of these applications, and their disposition, including the number of them issued as patents, …

Innovation And Litigation: Tensions Between Universities And Patents And How To Fix Them, Jacob H. Rooksby

Law Faculty Publications

Universities that own patents have a problem. While nearly all are keen to enhance their revenue generated from patents, few are eager or prepared to enforce them in court, alone or with their exclusive licensees, should a third party deploy a product or process covered by a university-owned patent. Yet strict prudential standing requirements imposed by the United States Court of Appeals for the Federal Circuit (“CAFC”) effectively require university participation as plaintiffs in enforcement lawsuits over their exclusively licensed patents, regardless of a university’s effective ability or enthusiasm to participate in a given action. Supported by forty years of …

How Hard-Fought Is Copyright Litigation?, James Gibson

Law Faculty Publications

As I mentioned in my last essay, my colleague Chris Cotropia and I have recently completed a data collection project in which we examined pleadings from approximately 1,000 copyright cases filed in federal court over a four-year period. We are still evaluating the data, but our preliminary findings indicate that copyright litigation differs from other federal civil litigation; it takes longer and appears to be contested more – yet ends up in much the same place.

A little background first. During the period we studied (2005-2008), the cases fell into three broad categories. The first comprised those cases in which …

Finally, An Answer On Copyright, First Sale, And The Gray Market, James Gibson

Law Faculty Publications

In two past entries in this series, here and here, I discussed whether copyrighted goods manufactured abroad may be resold in the United States without having to get a new license from the copyright owner. When the goods are pirated – manufactured illegally – the answer is clearly no; that’s a classic black-market sale. But when the goods were manufactured abroad with the copyright owner’s consent, well, that’s different. In that case, the resale is what we call a gray-market sale. And there, the answer is less clear.

Or at least it was. But at long last, and after one …

The Top Three Copyright Cases Of 2012, James Gibson

Law Faculty Publications

In my last entry in this series, I examined three important patent law cases from 2012 – one at the Supreme Court level, one at the appellate level, and one at the trial court level. I’ll now do the same thing with regard to copyright cases.

My Supreme Court choice is Golan v. Holder, in which the Court upheld a statute that restored U.S. copyright protection to certain foreign works, thus removing them from the public domain. Such works had lost their protection – or had never acquired it in the first place – because of their failure to comply …

Information May Want To Be Free, But Information Products Do Not: Protecting & Facilitating Transactions In Information Products (Reprint), Kristen Osenga

Law Faculty Publications

Information products-products that are used to organize, provide context, and distribute information-have gone largely unprotected by intellectual property regimes. As a result, producers of information products, such as databases and software, have resorted to alternative mechanisms to protect their investments. These mechanisms have resulted in both over-protection and under-protection ofthe information products. Further, the uncertainty in the boundaries of coverage, coupled with the resort to self-help mechanisms, may well inhibit, rather than facilitate, information flow. What is needed is a sui generis protection scheme for information products that clearly defines the boundaries and protection requirements for these works and that …

What Is The "Invention"?, Christopher A. Cotropia

Law Faculty Publications

Patent law is in flux, with recent disputes and changes in doctrine fueled by increased attention from the Supreme Court and en banc activity by the Federal Circuit. The natural reaction is to analyze each doctrinal area involved on its own. Upon a closer look, however, many patent cases concern a single, fundamental dispute. Conflicts in opinions on such issues as claim interpretation methodology and the written description requirement are really disagreements over which "invention" the courts should be considering. There are two concepts of invention currently in play in patent decisions. The first is an "external invention" definition, in …

Trademark Tension, Part Ii, James Gibson

Law Faculty Publications

In the previous entry in this series, I discussed the narrow foundations of trademark law and its more recent expansion – in particular, how new approaches to trademark liability have departed from the law’s traditional focus on disputes about the source of competing goods. I continue that theme now by considering a tension that emerges from this expansion. Although trademark liability has expanded beyond source-identification, other aspects of trademark law have not, and these more traditional aspects can rise up and trap the unwary mark owner, or at least turn its expanded rights into expanded costs.

To understand the tension …

The Shape Of Things To Come: What We Can Learn From Patent Claim Length, Kristen Jakobsen Osenga

Law Faculty Publications

Technology is always changing. Patent law is also constantly evolving, as the courts and Congress continue to make significant changes to this area of law. But what about patents themselves? Some studies have looked at how patent specifications have changed over time, but no one has looked specifically at the most important aspect of a patent, its claims. Given the changes in technology and law, one would anticipate patent claims to have evolved.

Despite the expectations, this paper concludes that patent claim shape is largely unaffected by time, technology, crowded fields, or prosecution time. This paper suggests a possible reason …

What Do America's First Patents Have To Do With Today's?, Kristen Jakobsen Osenga

Law Faculty Publications

In an invited response to an article by Prof. Michael Risch, Prof. Osenga reexamines some of the conclusions drawn by his study of early American Patents and what they suggested about inventors' perceptions of patentability.

Ethics: Conflicts Of Interest Issues In Patent Litigation, Christopher A. Cotropia

Law Faculty Publications

To understand what conflicts to avoid, this Article looks at recent decisions in patent litigation cases where conflict of interest issues have been decided. The discussion is divided up as follows. In Part I, choice of law regarding conflicts issues is discussed. In Part II, the common issues surrounding attorney and/or firm disqualifications for conflicts of interest are explored. Part III looks at conflicts of interest involving current clients. Part IV examines conflicts of interest concerning former clients. In Part V, a different type of conflict of interest—the lawyer as a witness situation—is discussed. Part VI moves to conflicts of …

Copyright's Gray Market, Redux, James Gibson

Law Faculty Publications

In an earlier entry in this series, I discussed an important issue in copyright law – whether the first sale doctrine applies to goods manufactured abroad. The Supreme Court was set to decide the issue in Costco v. Omega, but the Court split 4-4 and so left the matter unresolved.

Now the issue is back before the Supreme Court, in a case for which certiorari was granted this month: Kirtsaeng v. John Wiley & Sons. Supap Kirtsaeng is a native of Thailand who moved to the United States to attend college. To subsidize his tuition, he began importing textbooks that …

Trademark Tension, Part I, James Gibson

Law Faculty Publications

In this Intellectual Property Viewpoints series, we tend to focus on copyright and patent law – the “big two” IP regimes that govern innovation in the arts and sciences. But there is a third IP regime, a cousin to copyright and patent, which is important to almost any enterprise, even if its business has nothing to do with innovation. That’s trademark law.

Over the last several decades, trademark law has grown from its modest roots and experienced an expansion that rivals that of its more high-profile cousins. In this essay and the next, I will discuss this phenomenon, and in …

Get The Balance Right!: Squaring Access With Patent Protection, Kristen Jakobsen Osenga

Law Faculty Publications

Professor Osenga discusses the tensions between the interests of patent holders and patients worldwide in need of pharmaceutical treatments. Explaining the combination of exclusive patent and compulsory license approaches that govern access to intellectual property by statute and treaty, she urges that a carefully conceived balancing of these approaches will best serve both interests.

Apple V. Samsung: A Primer, James Gibson

Law Faculty Publications

The jury verdict in the Apple v. Samsung case is in, and it is a whopper: $1.05 billion in damages, to be paid by Samsung to Apple for violating various intellectual property rights in the iPhone and iPad. In all likelihood, the court will follow that up with an order banning several Samsung products from the U.S. marketplace. So what is this case all about?

What Are Apple’s Claims?

Apple had several different theories of infringement here, and the jury bought almost all of them, at least with regard to certain Samsung devices. Here are the theories that won Apple …

Google Books: Finally, An Actual Fair Use Ruling!, James Gibson

Law Faculty Publications

One of our favorite topics in this Intellectual Property Issues series – perhaps the favorite – is Google Books, the massive project through which Google hopes to bring its search capability to the text of all books in the English language. To make a book’s text searchable, however, Google must scan the book. And scanning is copying. And copying usually means copyright infringement. Certainly the many authors and publishers who have sued Google take this view.

There are two ways to avoid infringement when copying a copyrighted book: get a license or prove that the copying constitutes fair use. Many …

Copyright And Federal Supremacy, James Gibson

Law Faculty Publications

The extent of federal power over our lives has been much in the news recently, what with the Supreme Court holding days of hearings on whether the Affordable Care Act is an unconstitutional exercise of Congress’s power under the Commerce Clause. Like the ACA, copyright regulation is federal, but it derives its constitutional authority from a different part of the Constitution, known as the Patent and Copyright Clause, which gives Congress the power “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” …

The Top Three Patent Cases Of 2012, James Gibson

Law Faculty Publications

New Year’s Day prompts us to reflect on what the last 12 months have brought, so I’ve taken the opportunity to think back on 2012’s intellectual property developments. It’s been a busy year, with patent reform, new technologies, multilateral treaties, and more. To make my task more manageable, I’m going to focus on three important patent law cases – one at the Supreme Court level, one at the appellate level, and one at the trial court level. I’ll conclude with an extra-special bonus: the Case To Watch for patent law in 2013. Then, in my next entry in this series, …

Will You Go To Jail For Copyright Infringement?, James Gibson

Law Faculty Publications

We’ve all seen it. Stick a movie in the DVD player, and up pops a scary message from law enforcement: if you infringe copyright, the feds will come after you. Indeed, this threat is so ubiquitous that it has worked its way into popular perception; as any copyright expert knows from cocktail party conversations, laypeople seem to view copyright infringement as mostly a criminal matter.

It’s certainly possible to go to jail for violating copyright law, as long as the violation is willful and involves specific kinds or amounts of infringement. And the good news for copyright owners is that …

Strength Of The International Trade Commission As A Patent Venue, Christopher A. Cotropia

Law Faculty Publications

The data suggests that the ITC is here to stay and almost all patent enforcement actions will take place, at least in part, in the ITC. The landscape of patent enforcement has permanently changed, and the ITC is a solid part of it. This Article reaches these conclusions by first, in Part I, describing the unique features of the ITC that make it a favored venue of patentees. Part II describes the Federal Circuit's decision in Kyocera and the various postulates as to its impact. Part III describes the study, the specific data obtained, and the results. Part IV analyzes …

A Penguin's Defense Of The Doctrine Of Equivalents, Kristen Jakobsen Osenga

Law Faculty Publications

There is no dearth of commentary about the doctrine of equivalents in patent law. Many articles proclaim the doctrine's death, often noting its passage with unbridled delight. Some articles provide empirical evidence to support the assertion that the doctrine of equivalents is dead. Others simply yearn for the doctrine to fade from use, pointing out that no court has "articulated a convincing rationale" for the doctrine's continued use. But maybe these scholars have it wrong. It may be true that the instances of doctrine of equivalents analysis in patent cases are on the decline and successful outcomes based on the …

Contracting Away Copyright Privileges, James Gibson

Law Faculty Publications

In copyright class, professors usually spend most of their time explaining the “public law” aspects of copyright – the exclusive rights that the law gives copyright holders (e.g., reproduction and public performance) and the privileges that the law gives to those who use copyrighted goods (e.g., fair use and first sale). But as they and their students know, many everyday encounters with copyrighted goods are governed not by this public law, but by the “private law” that sellers and buyers create through contracts.

Software provides the best example. If you somehow managed to legally purchase and install a computer program …

Gray-Market Goods And Copyright's Gray Area, James Gibson

Law Faculty Publications

Copyright law generally gives authors no control over the aftermarket for their goods. Suppose I write a book, and I sell you a copy of it. You are free to resell the book, or lend it to a friend, or give it away. That’s because as long as your copy is “lawfully made under this title” (that is, made with my authorization under U.S. law), then copyright has nothing to say about its further distribution – who owns it, who sells it to whom, etc.

This notion is known as the first sale doctrine. It is so named because at …

The Dmca And Repeat Infringers, James Gibson

Law Faculty Publications

The recent agreement between big media companies and big Internet service providers (ISPs) concerning online copyright infringement has the law and technology world abuzz. ISPs like Comcast, Verizon, and Time Warner Cable have agreed to implement a system under which subscribers who repeatedly and illegally download copyrighted content will have their Internet access impeded and maybe even terminated.

This is big news, and it will probably receive more attention in this IP Viewpoints series. But the purpose of this column is to put this agreement in context, because much of what the companies have agreed to do appears to be …

Notice And Takedown, Here And Abroad, James Gibson

Law Faculty Publications

The Digital Millennium Copyright Act has been around for more than a dozen years now. Some of its provisions were just weird, such as the one that established sui generis protection for boat hull designs. Others have had a skeptical reception in the courts, like the anti-circumvention provisions that forbid certain forms of hacking through technological protections for copyrighted works.

But one DMCA provision that has proved popular in both the copyright community and the courts is the notice-and-takedown procedure codified at 17 U.S.C. § 512(c). When a copyright owner finds that some Internet user has illegally posted its copyrighted …

Cooperative Patent Prosecution: Viewing Patents Through A Pragmatics Len, Kristen Jakobsen Osenga

Law Faculty Publications

This Article constructs a linguistics-based framework to consider patent claim construction and demonstrates that the often-told story that claim construction is broken is, in fact, wrong. Rather, it is the underlying conversations that comprise the patent acquisition process that are to blame. In Part I of this Article, I use linguistics to describe the characteristics of everyday conversation, as well as how it is interpreted. In Part II, I explain what patent conversations look like and how they are similar to and different from everyday conversation. In Part III, I apply the theories of interpreting everyday conversation to patent conversation. …

Book Review: Beyond Intellectual Property: Matching Information Protection To Innovation, Kristen Osenga

Law Faculty Publications

William Kingston frames this book around a clearly stated premise: the focus of information protection regimes has shifted from benefiting the public to benefiting private individuals with interests in the game—and this shift is not good. Early on, protection of information was shaped by actors with no personal stake but rather a desire to encourage invention and innovation for the public good. These actors were primarily limited by constitutional provisions and bureaucratic inefficiencies. As time went on,and as information became a more important commodity, information protection schemes were fashioned, or perhaps twisted, by the parties that would derive the most …

The Ptos Fast Track Takes Us In The Wrong Direction, Kristen Jakobsen Osenga

Law Faculty Publications

On June 3, 2010, the Patent Office issued a press release touting an initiative to reduce patent pendency by allowing patent applicants to pick the speed at which their applications are examined. Patent pendency has been an increasing problem in the Patent Office, jumping to 34.6 months last year from 26.7 months in 2003. The proposal has two main prongs: first, provide three paths to patent examination, and second, rely more heavily on foreign patent office efforts. While the press release provides some preliminary details about the proposal, further information is expected to be published in the Federal Register on …