Intellectual Property Law Commons^™

Defusing The "Atom Bomb" Of Patent Litigation: Avoiding And Defending Against Allegations Of Inequitable Conduct After Mckeeson Et Al., Sean M. O'Connor

Articles

The doctrine of inequitable conduct in patent law has a long and vexing history. While it is sometimes mistakenly conflated with the United States Patent and Trademark Office's Rule 56, the doctrine is actually a purely equitable one established by the Supreme Court in 1945—and not revisited by it since then.

This Article re-establishes the roots and proper context of the doctrine, while tracing its confused interactions with Rule 56 over the ensuing decades. The Article reaffirms the necessary balancing act between over and under disclosure of references during patent prosecution, and the inverse sliding scale relationship of materiality and …

Ksr International Co. V. Teleflex Inc.: The Supreme Court Declines The Opportunity To Finally Set The Record Straight And Articulate One Clear Standard For Determining Obviousness In Patent Cases, Ashley Houston

Journal of Business & Technology Law

No abstract provided.

Copyrighting Stage Directions & The Constitutional Mandate To "Promote The Progress Of Science", Jessica Talati

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

Panel On Tafas V. Dudas, Patent Rules Changes And Patent Reform, Matthew Sag, Sean Seymore, Chris Singer

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

In Re Bilski: A Midpoint In The Evolution Of Business Methods, R. David Donoghue, Micael A. Grill

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

Alternative Software Protection In View Of In Re Bilski, Lauren Katzenellenbogen, Charles Duan, James Skelley

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

Innovation And Liability For Contributory Copyright Infringement, David Mcgowan

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

Table Of Contents

Marquette Intellectual Property Law Review

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The Author's Place In The Future Of Copyright, Jane C. Ginsburg

Faculty Scholarship

Vesting copyright in Authors – rather than exploiters – was an innovation in the 18th century. It made authorship the functional and moral center of the system. But all too often in fact, authors neither control nor derive substantial benefits from their work. In the copyright polemics of today, moreover, authors are curiously absent; the overheated rhetoric that currently characterizes much of the academic and popular press tends to portray copyright as a battleground between evil industry exploiters and free-speaking users. If authors have any role in this scenario, it is at most a walk-on, a cameo appearance as victims …

Using Ip To Suppress Innovation (On Purpose), James Gibson

Law Faculty Publications

In this “IP Viewpoints” post, I hope to combine two Uncontroversial Premises to reach a Counterintuitive Conclusion about the role that intellectual property can play in the regulation of innovation.

First Uncontroversial Premise: IP is a useful tool for creating incentives to innovate, but too much IP protection is counterproductive.

Giving innovators exclusive control over certain uses of their innovations allows them to commercialize their inventiveness and creativity, and thus helps ensure a return of the resources they invest in their craft. But IP protection also brings with it certain costs – and when IP rights reach a certain level …

Tiered Originality And The Dualism Of Copyright Incentives, Shyamkrishna Balganesh

Faculty Scholarship

In a a well argued and thought-provoking new article, Gideon Parchomovsky and Alex Stein attempt to give copyright’s requirement of originality real meaning, by connecting it to the system’s avowed institutional goals.1 To this end, they focus on disaggregating originality into three tiers and providing creative works within each tier with a different set of rights and liabilities. Parchomovsky and Stein are indeed
correct to lament the meaninglessness of originality under current copyright doctrine. Yet their proposal does not quite fully explore the incentive effects of differentiated originality, especially as between upstream and downstream creators. Nor does it tell us …

Subsidizing Creativity Through Network Design: Zero Pricing And Net Neutrality, Robin S. Lee, Tim Wu

Faculty Scholarship

Today, through historical practice, there exists a de facto ban on termination fees – also referred to as a “zero-price” rule (Hemphill, 2008) – which forbids an Internet service provider from charging an additional fee to a content provider who wishes to reach that ISP’s customers. The question is whether this zero-pricing structure should be preserved, or whether carriers should be allowed to charge termination fees and engage in other practices that have the effect of requiring payment to reach users. This paper begins with a defense of the de facto zero-price rule currently in existence. We point out that …

Recent Developments In Patent Law, Kristen Jakobsen Osenga

Law Faculty Publications

In the last year, the landscape of patent law was altered by court opinions from the Supreme Court and U.S. Court of Appeals for the Federal Circuit, as well as in opinions rendered by the Board of Patent Appeals and Interferences (hereafter BP AI) at the United States Patent and Trademark Office. In addition, patent reform legislation was introduced that could have shaken up patent practice even further. Although none of the reform proposals were passed, revised versions of these legislative initiatives have already been introduced in 2009. This brief write-up summarizes many (but by no means all) of the …

Foreseeability And Copyright Incentives, Shyamkrishna Balganesh

Faculty Scholarship

Copyright law’s principal justification today is the economic theory of creator incentives. Central to this theory is the recognition that while copyright’s exclusive rights framework provides creators with an economic incentive to create, it also entails large social costs, and that creators therefore need to be given just enough incentive to create in order to balance the system’s benefits against its costs. Yet, none of copyright’s current doctrines enable courts to circumscribe a creator’s entitlement by reference to limitations inherent in the very idea of incentives. While the common law too relies on providing actors with incentives to behave in …

The Politics Of Intellectual Property, Jessica D. Litman

Articles

In May 2005, Keith Aoki invited me to participate on a panel on "The Politics of Copyright Law" at the 2006 Association of American Law Schools ("A.A.L.S. ") mid-year meeting workshop on Intellectual Property in Vancouver, British Columbia. The panel, renamed "The Politics of Intellectual Property," and moderated by Keith, included talks by Justin Hughes, Mark Lemley, Jay Thomas, and me, and it was followed by three concurrent sessions on "The Politics Concerning Moral Rights," "The Politics of Global Intellectual Property, " and "The Politics of Patent Reform." I'm not sure what the organizing committee had in mind when it …

The Copyright Revision Act Of 2026, Jessica D. Litman

Articles

As someone who teaches and writes about copyright law, I end up straddling two different worlds. On the one hand, I really do need to understand and be able to teach the details of the copyright statute and the case law construing it. My students need to know the difference between a public performance right under Section 106(4) and a public performance right by digital audio transmission under Section 106(6); they need to know the difference between the statutory licenses available under Section 114 and the statutory licenses available under Section 115.' So, I need to have all of those …

Using Patents To Protect Traditional Knowledge, Jay Erstling

Faculty Scholarship

The role that intellectual property can play in the protection of traditional knowledge (TK) has been on the international agenda for more than ten years, with little to show for it. For example, the World Intellectual Property Organization (WIPO) has provided a forum for international policy debate on the subject since 1998, and the WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC) has held meetings on draft provisions for the protection of TK against misappropriation and misuse since 2001. Similarly, since 1999 the World Trade Organization (WTO) has been examining the most effective means …

Licensing Technology To The Brics: The Case For Adr, Aaron Pereira

Cardozo Journal of Conflict Resolution

This Note seeks to explore the application of mechanisms of Alternative Dispute Resolution ("ADR") to overcome problems associated with the traditional methods of international patent litigation, with a focus on the BRIC countries. It starts with an outline of patent rights including their international licensing. The Note will then move on to a discussion of the present mechanisms of international patent protection and perceived problems with the current system, the ways in which ADR can help overcome these problems and the limitations of ADR in this field. Finally, the Note will examine the enforcement of ADR awards, the application of …

The Role Of The Office Of The Administrative Law Judges Within The United States International Trade Commission, 8 J. Marshall Rev. Intell. Prop. L. 216 (2009), Carl C. Charneski

UIC Review of Intellectual Property Law

Section 337 of the Tariff Act of 1930 makes unlawful, specifically, the importation of products that infringe intellectual property rights. The U.S. International Trade Commission (“ITC”) is the forum in which all section 337 proceedings are adjudicated and, within the ITC, the Office of Administrative Law Judges handles all these proceedings. Section 337 cases can be exceedingly complex and technical, and the Administrative Law Judges (“ALJ”) are the initial triers of fact, administrators, and decision makers in every case. Thus, the amount of work that the ALJs—along with their staff—must meet to see these cases to completion can be substantial. …

The Distinctive Characteristics Of Section 337, 8 J. Marshall Rev. Intell. Prop. L. 231 (2009), Jay H. Reiziss

UIC Review of Intellectual Property Law

In an investigation by the International Trade Commission (“ITC” or “Commission”) under Section 337 of the Tariff Act of 1930 (“Section 337”) a complainant must satisfy two unique statutory criteria. First, a complainant must establish that the ITC has jurisdiction, usually by showing importation of an accused product. Second, a complainant must demonstrate that a domestic industry exists or is in the process of being established. A practitioner can be assured that the ITC’s jurisdiction is expansive and reaches foreign-based activities that affect U.S. commerce. Such actions can involve any unfair act and can be brought regardless of whether personal …

Post-Litigation Enforcement Of Remedial Orders Issued By The U.S. International Trade Commission In Section 337 Investigations, 8 J. Marshall Rev. Intell. Prop. L. 248 (2009), Merritt R. Blakeslee

UIC Review of Intellectual Property Law

There is a common misperception that enforcement of International Trade Commission (“ITC”) remedial orders is automatic and self implementing. In reality, such remedial orders are not self-implementing, are less-than-perfect enforcement tools, and their effective enforcement carries with it a number of practical difficulties. This paper explores the realities of enforcing the ITC’s remedial orders – exclusion orders, consent orders, and cease-and-desist orders – with the goal of giving both complainants and respondents a heightened appreciation of the tactics and strategies that can be effectively deployed following the conclusion of a Section 337 investigation and the issuance of one or more …

Gray Market Trademark Infringement Actions At The U.S. International Trade Commission: The Benefits Of The Forum And Analysis Of Relevant Cases, 8 J. Marshall Rev. Intell. Prop. L. 271 (2009), Joseph H. Heckendorn, Lyle B. Vander Schaaf

UIC Review of Intellectual Property Law

Trademark owners continue to enforce their trademarks against imports of gray market goods using Section 337 of the Tariff Act of 1930. In comparison to the federal court alternative, the International Trade Commission (“ITC”) offers a number of distinct advantages. In addition, ITC decisions in In re Certain Agricultural Vehicles and Components Thereof and In re Certain Hydraulic Excavators and Components Thereof have clarified what is required to enforce trademarks at the ITC. Trademark owners should heed the recent ITC decisions in deciding how to curb imports of infringing gray market goods.

The U.S. International Trade Commission's Growing Role In The Global Economy, 8 J. Marshall Rev. Intell. Prop. L. 290 (2009), Patricia Larios

UIC Review of Intellectual Property Law

The widespread offshoring of manufacturing operations has created dramatic efficiencies and meaningful cost savings for many U.S. businesses. But as an unintended consequence, the move to foreign manufacturing also has created challenges to the U.S. patent system and its ability to protect American businesses from infringing competition. U.S. District Courts are frequently an inadequate forum for litigating patent infringement suits involving an accused device manufactured abroad because of the difficulties associated with obtaining jurisdiction and proving infringement. Patent holders faced with such a situation, however, are not left without recourse. This article explores the different enforcement mechanisms available in the …

"Several Healthy Steps Away": New & Improved Products In Section 337 Investigations, 8 J. Marshall Rev. Intell. Prop. L. 309 (2009), Steven E. Adkins, John Evans

UIC Review of Intellectual Property Law

A business that imports “new and improved,” or redesigned, products into the United States should be aware of the procedures available to lessen the risk of violating standing orders of the United States International Trade Commission (“Commission”). In order to ensure that these products gain entry without violating an ITC order and accruing substantial penalties, it is imperative that the business know its options. Whether it requests a Customs ruling or uses a certification, or whether it petitions for an advisory opinion from the Commission, the business must be able to maneuver. This nuts-and-bolts guide provides examples and information on …

Patent Reform Should Not Leave Innovation Behind, 8 J. Marshall Rev. Intell. Prop. L. 328 (2009), Carl E. Gulbrandsen, Stephanie Adamany, Sandra Haberny, Jason Sheasby

UIC Review of Intellectual Property Law

The most recent push for patent reform established competing groups supporting individual agendas. In view of current economic difficulties, however, the focus on innovation should be ever more important. By enacting the Bayh-Dole Act in 1980, the federal government invested in innovation and unlocked American industrial potential through Universities. The current reform has provisions that limit disclosure and facilitate patent challenging which increases costs to inventors and adds responsibilities to an already overloaded patent office. This article addresses a number of the proposed reforms and the effect on University innovation.

The New "Extra-Ordinary" Observer Test For Design Patent Infringement–On A Crash Course With The Supreme Court's Precedent In Gorham V. White, 8 J. Marshall Rev. Intell. Prop. L. 354 (2009), Christopher V. Carani

UIC Review of Intellectual Property Law

Over one hundred and thirty-five years ago the U.S. Supreme Court, in Gorham v. White, laid down the test for design patent infringement called the “ordinary observer” test—one that is administered through the eyes of men generally. It has remained the test ever since. Recently, in Arminak & Assoc., Inc. v. Saint-Gobain Calmar, Inc and Egyptian Goddess, Inc. v. Swisa, Inc., the Federal Circuit has improperly replaced this “ordinary observer” test with an “extra-ordinary observer” test—one that uses persons who are versed in the trade. In order to bring design patent jurisprudence in line with the U.S. Supreme Court’s jurisprudence …

Do As We Say, Not As We Do: A Study Of The Well-Known Marks Doctrine In The United States, 8 J. Marshall Rev. Intell. Prop. L. 412 (2009), Andrew M. Cook

UIC Review of Intellectual Property Law

Treaties such as the Paris Convention and the TRIPS Agreement protect well-known marks around the world, but there is currently uncertainty as to whether these marks can be protected in the United States. While a signatory to those treaties, recent decisions in the Second and Ninth Circuits leave the circuits split on whether foreign well-known marks are protectable within the United States. Without a circuit harmonization, the United States remains in a hypocritical position, demanding treaty compliance from other nations while failing to meet its treaty obligations. The uncertainty is efficiently and effectively resolved with a statutory amendment to section …

Obviousness Before And After Judge Markey, 8 J. Marshall Rev. Intell. Prop. L. (Special Issue) 9 (2009), Mark J. Abate

UIC Review of Intellectual Property Law

Chief Judge Howard T. Markey left an everlasting mark on the meaning of obviousness under 35 U.S.C. § 103. Chief Judge Markey viewed all inventions as combinations of old elements because, in his own words, “Only God works from nothing. Man must work with old elements.” Chief Judge Markey’s obviousness jurisprudence can be characterized by three fundamental principles. First, he looked at an invention as a whole. Second, he looked for real world evidence of nonobviousness because it was a reliable indicator of obviousness. Third, he avoided the dangers of hindsight bias by looking for a reason to combine a …

Inequitable Conduct, Gross Negligence And The Kingsdown Decision, 8 J. Marshall Rev. Intell. Prop. L. (Special Issue) 18 (2009), Jim Carmichael, Cameron Weiffenbach

UIC Review of Intellectual Property Law

Rule 56 was promulgated in 1948 to address inequitable conduct and fraud before the United States Patent Office in response to major Supreme Court decisions in the 1930’s and 1940’s. Further development of rule continued through decisions and amendments into the 1980’s. Judge Markey authored several decisions at the Federal Circuit addressing the standard of intent required to find inequitable conduct in the 1980’s. The impact of these decisions culminated in his Kingsdown Medical Consultants, Ltd v. Hollister, Inc. opinion resulting in a 1992 amendment to Rule 56. This article analyzes the development of Rule 56 and Judge Markey’s influence …

The Role Of Juries In Managing Patent Enforcement: Judge Howard Markey's Opinions And Writings, 8 J. Marshall Rev. Intell. Prop. L. (Special Issue) 41 (2009), John R. Alison

UIC Review of Intellectual Property Law

In the 1970s, a trial by jury was rare in patent cases. By the time Chief Judge Markey left the United States Court of Appeals for the Federal Circuit in 1989, jury trials had become the norm. Throughout Judge Markey’s time on the bench he exerted great energy to promote, define, and improve the role of law juries in patent cases. This speech by Judge Markey’s former law clerk, John R. Alison, discusses the three Markey Principles. The first principle of Judge Markey is the fundamental right to a jury trial in patent cases. Second, proceedings in jury trials for …