Intellectual Property Law Commons^™

A Panel Discussion On Obviousness In Patent Litigation: Ksr International V. Teleflex, 6 J. Marshall Rev. Intell. Prop. L. 595 (2007), William T. Mcgrath, Edward D. Manzo, James F. Holderman, Matthew F. Kennelly, Meredith Martin Addy, Patrick G. Burns, Bradford P. Lyerla, George P. Mcandrews, David L. Schwartz, Constantine L. Trela Jr.

UIC Review of Intellectual Property Law

In KSR International Co. v. Teleflex Inc., the Supreme Court considered what test applies to determine whether an invention is “obvious.” The Court ruled that the teaching-suggestion- motivation (“TSM”) test, developed over the years by the Federal Circuit to defend against hindsight reconstruction, is only one method a court or patent examiner may use when addressing obviousness. The Court’s holding overturned Federal Circuit precedent, which required a finding of non-obviousness unless a teaching, suggestion, or motivation to combine was established. The panel discussion brings together leadings jurists; former law clerks of the Supreme Court, the Federal Circuit, and other courts; …

Leveling The Patent Playing Field, 6 J. Marshall Rev. Intell. Prop. L. 636 (2007), Peter N. Detkin

UIC Review of Intellectual Property Law

While large companies continue to thrive on pervasive technological advancements, small inventors have been limited by their inability to exploit their patents. Patent portfolio licensing created a pioneering way to increase the utility of patents; however, in practice this business model has typically favored powerful players in the technology industry. A new market has emerged based on innovative business models which favor small inventors. This market seeks to aggregate and distribute patents to companies that infringe on intellectual property or that want to draw on it as a source. By matching patent owners with patent users, this market may enable …

Avoiding The "Fifth Beatle" Syndrome: Practical Solutions To Minimizing Joint Inventorship Exposure, 6 J. Marshall Rev. Intell. Prop. L. 645 (2007), Andrew B. Dzeguze

UIC Review of Intellectual Property Law

Inventorship disputes appear to be proliferating. This is not surprising in light of the 1993 relaxation of the standards for joint inventorship. Although the vast majority of claims fail, the handful of cases indicating successful inventorship claims can be quite lucrative, which makes it reasonable to expect the upward trend in number of cases to continue. Moreover, the lack of clarity on certain key aspects of inventorship law is apt to encourage further claims. This article begins, as a cautionary tale of sorts: an analysis of the unclear aspects of inventorship law. This includes the as yet unresolved variations in …

Patent Reform, Injunctions, And Equitable Principles: A Triangle Of Changes For The Future, 6 J. Marshall Rev. Intell. Prop. L. 671 (2007), Matthew J. May

UIC Review of Intellectual Property Law

In eBay v. MercExchange, the Supreme Court held the Federal Circuit could no longer utilize their long-standing “general rule” that an injunction should follow the finding of patent infringement. The Supreme Court held that courts should utilize a set of rules known as the four-factor test, which utilizes traditional principals of equity. Concurrently, Congress has been debating patent reform with one of the topics being the use of injunctive relief as a remedy for patent infringement. These two changes could potentially have a significant effect on the technological and economic landscape of patents in the future. It now may be …

What The Pct Can Learn From Two African Systems, 6 J. Marshall Rev. Intell. Prop. L. 693 (2007), Zion H. Park

UIC Review of Intellectual Property Law

The purpose and goal of patent law is to help society by encouraging innovation. While the Patent Cooperation Treaty (“PCT”) has made international patent procurement easier and more accessible, the current system is still plagued with redundancies and inefficiencies. These flaws are barriers to patent offices and individual patentees, hindering innovation and the growth of developing nations. Ultimately, these problems are hindrance to society, contradicting the goal of patent law. This comment compares the PCT to two similar but less prominent African regional patent systems: African Regional Industrial Property Organization (“ARIPO”) and African Industrial Property Convention (“OAPI”). ARIPO and OAPI …

Injunctions In Patent Cases After Ebay, 7 J. Marshall Rev. Intell. Prop. L. 44 (2007), Edward D. Manzo

UIC Review of Intellectual Property Law

The United States Constitution gives Congress the power to grant to inventors exclusive rights to their inventions. Accordingly, 35 U.S.C. § 154(a) states that every patent grants to the patentee exclusive rights to make and use their inventions, and 35 U.S.C. § 283 provides that a court may grant injunctions in accordance with the principles of equity. The Federal Circuit developed a general standard that a permanent injunction should issue, except in extraordinary standards, after a patent is judicially declared valid. However, in May 2006, the Supreme Court overruled that standard in eBay Inc. v. MercExchange, L.L.C., declaring that the …

Painstaking Semantics: Selecting Website Trade Dress Elements To Survive A Copyright Preemption Challenge, 7 J. Marshall Rev. Intell. Prop. L. 97 (2007), J. Scott Anderson

UIC Review of Intellectual Property Law

The intersection between trade dress law and copyright law must be understood when seeking trade dress protection for elements that may fall within the subject matter of copyright. The technological elements that create the look and feel of a website may include both trade dress elements and copyrightable works. Website owners are beginning to rely on the protections of trade dress law instead of or in addition to copyright law when the look and feel of a website is imitated by a competitor. Asserting trade dress protection for website look and feel requires careful pleading and will provoke a variety …

The Preserve Access To Affordable Generics Act: Will Congress's Response To Reverse Payment Patent Settlements Enhance Competition In The Pharmaceutical Market?, 7 J. Marshall Rev. Intell. Prop. L. 150 (2007), Reza Bagherian

UIC Review of Intellectual Property Law

In response to the Supreme Court’s failure to grant writ of certiorari to Federal Trade Commission v. Schering-Plough Corp., Congress proposed the Preserve Access to Affordable Generics Act to once again amend the Hatch-Waxman Act of 1984. Traditionally, the courts have used two antitrust standards, the rule of reason and the per se illegal rule, to determine whether a reverse payment patent settlement restrains trade. In Schering-Plough, the Eleventh Circuit articulated a third standard and held the reverse payment settlements between a pioneer drug company and two generic drug companies valid. This article proposes that traditional analysis of the rule …

Step-Plus-Function: Just What Have We Stepped Into?, 7 J. Marshall Rev. Intell. Prop. L. 117 (2007), Paul R. Kitch

UIC Review of Intellectual Property Law

While most attorneys have heard of means-plus-function, most have not heard of or given much thought to its sibling, step-plus-function. Both claims arise under the same section of the patent laws, namely 35 U.S.C. § 112, ¶ 6. While means-plus-function limitations are directed to structural limitations and most often appear in apparatus claims, step-plus-function limitations are directed to steps and most often appear in method claims. Means-plus-function limitations generally arise when the patentee chooses to recite a “means for” performing a specified or recited function rather than reciting the structure or material that performs that function. Step-plus-function limitations, on the …

Yesterday's Technology, Tomorrow: How The Government's Treatment Of Intellectual Property Prevents Soldiers From Receiving The Best Tools To Complete Their Mission, 7 J. Marshall Rev. Intell. Prop. L. 171 (2007), Daniel Larson

UIC Review of Intellectual Property Law

The Department of Defense is currently entrenched in a procurement system that does not respect the intellectual property of its contractors. This, in turn, has led to research and development firms’ increasing reluctance to contract with the Department of Defense. As a result of this reluctance, the United States has increasingly relied upon weapons systems that, in many cases, have not significantly evolved since the Vietnam War. In order to revive the United States’ flagging military technology sector Congress should look to 28 U.S.C. § 1498 and provisions of the Bayh-Dole Act in order to encourage the private sector’s creation …

The Crossroads Of Patentability & Validity: Why Resolving Congressional Intent Will Not Fix Functional Claims, 7 J. Marshall Rev. Intell. Prop. L. 218 (2007), Nathaniel V. Riley

UIC Review of Intellectual Property Law

Functional claims have caused many headaches for academics, judges and practitioners who have struggled to define precisely what constitutes “functional” claim language and to determine the proper scope afforded to broad means-plus-function claim elements. The debate between academics and judges regarding functional claim interpretation has typically focused on Congressional intent behind the statute, specifically whether 35 U.S.C. § 112, ¶ 6 was intended solely as a claim interpretation tool or only as means for narrowing functional claims during an infringement analysis. The Federal Circuit famously adopted a hybrid approach in In re Donaldson, but since then several authors have levied …

Copyright's Empire: Why The Law Matters, Alina Ng

Journal Articles

Previous intellectual property literature demands a balance between incentives to produce for the creator of a work and access to information, knowledge, and content by the users. However, law and economics jurisprudence does not provide compelling arguments to support the notion that the copyright monopoly is the most efficient way to maximize public welfare by promoting the works of authors. The social cost from expansion of private rights is nonexistent because market structures change as technologies develop, providing society with increased accessibility to creative works. Accordingly, copyright laws need to expand as technology develops in order to realize a fair …

Saving Trade Secret Disclosures On The Internet Through Sequential Preservation, Elizabeth A. Rowe

UF Law Faculty Publications

When an employee discloses an employer's trade secrets to the public over the Internet, does our current trade secret framework appropriately address the consequences of that disclosure? What ought to be the rule that governs whether the trade secret owner has lost not only the protection status for the secret, but also any remedies against use by third parties? Should the ease with which the Internet permits instant and mass disclosure of secrets be taken into consideration in assessing the fairness of a rule that calls for immediate loss of the trade secret upon disclosure? Given that trade secret law …

Introducing A Takedown For Trade Secrets On The Internet, Elizabeth A. Rowe

UF Law Faculty Publications

This Article explores, for the first time, an existing void in trade-secret law. When a trade-secret owner discovers that its trade secrets have been posted on the Internet, there is currently no legislative mechanism by which the owner can request that the information be taken down. The only remedy to effectuate removal of the material is to obtain a court order, usually either a temporary restraining order or a preliminary injunction. When a trade secret appears on the Internet, the owner often loses the ability to continue to claim it as a trade secret and to prevent others from using …

Merck Kgaa V. Integra Lifesciences I Ltd.: How Broad Can You Go? The Supreme Court Makes Room For Preclinical Research In The Drug Price Competition And Patent Term Restoration Act's Safe Harbor Provision, Lauren B. Willis

Journal of Business & Technology Law

No abstract provided.

Metabranding And Intermediation: A Response To Professor Fleischer, Laura A. Heymann

Faculty Publications

No abstract provided.

Patent Reform And Differential Impact, Matthew Sag, Kurt W. Rohde

Faculty Articles

The structure of the article is as follows. Part I provides an introduction to the problems created by bad patents and introduces the differential impact test for evaluating patent reform proposals.

Part II examines the origin of bad patents and applies two different economic models to explain their persistence. The first model focuses on a potential infringer’s incentives to challenge a bad patent; the second model focuses on a patent holder’s incentive to assert a patent. We explain bad patents as an emergent phenomenon: they are the product of the apparently low quality of patent examination and the complex, uncertain, …

Book Review, Jennifer L. Behrens

Faculty Scholarship

No abstract provided.

Transaction Costs And Patent Reform, Paul J. Heald

Scholarly Works

This article considers current proposals for patent law reform in light of a simple theory about intellectual property law: In a world without transactions costs, the assignment of property rights is not necessary to stimulate the optimal production of creative goods. Because potential users of inventions could contract for their creation, a compelling justification for granting property rights in these intangibles is the reduction of real-world transaction and information costs that hinder, or make impossible, contract formation between users and creators. Proposals for patent law reform, therefore, should be evaluated by whether a change in legal rights, or in the …

Is Lilly Written Description Paper Tiger?: Comprehensive Assessment Of The Impact Of Eli Lilly And Its Progeny In The Courts And Pto, Christopher M. Holman

Faculty Works

In University of California v. Eli Lilly, decided by the Federal Circuit in 1997, the court established for the first time a new form of patent law's written description requirement, apparently targeted specifically at biotechnology. To this day, the conventional wisdom is that the so-called Lilly written description requirement (LWD) exists as a biotechnology-specific super-enablement requirement, substantially more stringent than the enablement requirement (the conventional standard for patentability), and standing as an impediment to effective patent protection for biotechnology inventions. My objective in writing this article was to test this conventional wisdom, by conducting a comprehensive search for all LWD …

Race-Ing Patents/Patenting Race: An Emerging Political Geography Of Intellectual Property In Biotechnology, Jonathan Kahn

Faculty Scholarship

This article applies insights from critical race theory to examine an emerging phenomenon in biotechnology research and product development. The strategic use of race as a genetic category to obtain patent protection and drug approval. A dramatic rise in the use of race in biotechnology patents indicates that researchers and affiliated commercial enterprises are coming to see social categories of race as presenting opportunities for gaining, extending, or protecting monopoly market protection for an array of biotechnological products and services. Racialized patents are also providing the basis for similarly race-based clinical trial designs, drug development, capital raising and marketing strategies …

The Magnificence Of The Disaster: Reconstructing The Sony Bmg Rootkit Incident, Deirdre K. Mulligan, Aaron Perzanowski

Articles

Late in 2005, Sony BMG released millions of Compact Discs containing digital rights management technologies that threatened the security of its customers' computers and the integrity of the information infrastructure more broadly. This Article aims to identify the market, technological, and legal factors that appear to have led a presumably rational actor toward a strategy that in retrospect appears obviously and fundamentally misguided.

The Article first addresses the market-based rationales that likely influenced Sony BMG's deployment of these DRM systems and reveals that even the most charitable interpretation of Sony BMG's internal strategizing demonstrates a failure to adequately value security …

Lawful Personal Use, Jessica D. Litman

Articles

Despite having sued more than 20,000 of its customers,2 the recording industry wants the world to know that it has no complaint with personal use. Copyright lawyers of all stripes agree that copyright includes a free zone in which individuals may make personal use of copyrighted works without legal liability.3 Unlike other nations, though, the United States hasn't drawn the borders of its lawful personal use zone by statute.4 Determining the circumstances under which personal use of copyrighted works will be deemed lawful is essentially a matter of inference and analogy, and differently striped copyright lawyers will differ vehemently on …

The Supreme Court And The Federal Circuit: Visitation And Custody Of Patent Law, Rebecca S. Eisenberg

Articles

The U.S. Supreme Court’s relationship to patent law sometimes seems like that of a non-custodial parent who spends an occasional weekend with the kids. The custodial parent is, of course, the U.S. Court of Appeals for the Federal Circuit. The Federal Courts Improvement Act of 1982 consolidated intermediate appellate jurisdiction over patent law cases in this single court, which hears appeals from the U.S. Patent and Trademark Office (“PTO”), the U.S. District Courts, the U.S. Court of Federal Claims, and the U.S. In-ternational Trade Commission. Day to day it is the Federal Circuit that reviews contested decisions of the institutions …

Dealing With Casual Piracy: Limiting Distribution Of Copyrighted Content With Digital Rights Management, Bimal J. Rajkomar

Vanderbilt Journal of Entertainment & Technology Law

This article argues that it is possible to implement DRM schemes without eroding the public's trust by offering consumers a choice between technologically-restricted and unrestricted content. Part I discusses how DRM have harmed voluntary compliance with the law. Part II examines the biggest copyright governance issue confronting peer-to-peer networks: casual piracy. Part III explain show a bifurcated licensing scheme can allow content providers to benefit from DRM without incurring its usual costs. Note that some music distributors and labels have begun to adopt this licensing structure.

A Bright Line At Any Cost: The Sixth Circuit Unjustifiably Weakens The Protection For Musical Composition Copyrights In Bridgeport Music V.Dimension Films, Michael J. Galvin

Vanderbilt Journal of Entertainment & Technology Law

On June 3, 2005, the Sixth Circuit issued its final amended opinion in Bridgeport Music v. Dimension Films,' in which it held that any amount of unauthorized digital sampling from a sound recording is per se copyright infringement. The court justified this ruling on what it termed a "literal reading" of Section 114 of the Copyright Act, which covers the rights a copyright holder has in a sound recording. While such a bright-line rule may have some superficial appeal, the court's efforts at harmonizing current music industry practices with copyright laws written long before such practices were commonplace has resulted …

Patently Wrong: The U.S. Supreme Court Punts In The Case Of Labcorp V. Metabolite, John G. New

Vanderbilt Journal of Entertainment & Technology Law

In June 2006, after having granted certiorari and hearing oral arguments, the United States Supreme Court dismissed the case of Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc. as having been improvidently granted a writ of certiorari. Dissenting from this extraordinary step was Justice Breyer, joined by Justices Stevens and Souter. At issue in the case was a patent, the owners of which claimed that a physician's use of any test to infer vitamin deficiency by raised blood serum levels of the chemical homocysteine infringed the patent. This Article argues that the Supreme Court was itself improvident in dismissing …

A New World Order For Addressing Patent Rights And Public Health., Cynthia M. Ho

Faculty Publications & Other Works

No abstract provided.

Trademark Law And Status Signaling: Tattoos For The Privileged, Jeffrey L. Harrison

UF Law Faculty Publications

The motivations for buying a good or service are highly complex. At the most basic level, people buy goods because of what the goods do or because of the aesthetic elements they embody. More technically, buyers derive utility from the "functional" quality of these goods. Another motivation relates to what the goods "say" about the buyer. Here, the good is a signaling device. Signaling is not new, of course, and can indicate anything from social class to political leanings.

This Essay addresses the issue of whether it should be public policy to subsidize this type of person-to-person status signaling. This …

Disappearing Safeguards: Fisa Nonresident Alien "Loophole" Is Unconstitutional, Brenton Hund

Cardozo Journal of International and Comparative Law

The note argues that the Foreign Intelligence Surveillance Act (FISA) contains a "nonresident alien loophole" that undermines constitutional protections, particularly for U.S. persons. This loophole, expanded by amendments such as the Patriot Act and the Lone Wolf Amendment, allows the government to conduct surveillance on nonresident aliens under relaxed standards, which can incidentally target U.S. citizens without meeting FISA's stricter requirements. The analysis contends that this loophole violates the Fourth Amendment by enabling surveillance on U.S. persons without probable cause or proper warrants, eroding privacy rights in the name of national security. The note advocates for legislative reforms to close …