Intellectual Property Law Commons^™

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 …

Intellectual Capital Disclosure And The Ipo Prospectus: An Exploratory Study, Keith Harman

Faculty Publications and Presentations

ICD (Intellectual Capital Disclosure) was studied via content analysis of IPO (Initial Public Offering) filings by retailers versus software companies. Data were obtained from 106 firms’ SEC S-1 filings between 2001 and 2011. Key findings were: (1) ICD increased over time, (2) significant differences in the type of IC disclosed, (3) Structural Capital was the type of IC most frequently disclosed, (4) consistency among firms regarding the frequency with which specific IC components (e.g. brands) were disclosed, and (5) no significant difference in ICD when comparing retailers and software companies.

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. …

A Witness Against Himself: A Case For Stronger Legal Protection Of Encryption, Benjamin Folkinshteyn

Santa Clara High Technology Law Journal

This Article examines the application of the Fifth Amendment privilege against self-incrimination to compelled disclosure of unencrypted data. Such disclosure can include provision of passwords to access encrypted data as well as, increasingly, providing unencrypted data after compelled decryption.

The pervasiveness and persistence of electronic data drastically increases the availability of information with potential evidentiary value that has not previously existed with physical evidence. The courts have struggled with finding the appropriate balance in determining the scope and applicability of the privilege against self-incrimination to electronic evidence. The lack of precise physical world analogues to encryption has led to particular …

Graduated Response American Style: “Six Strikes” Measured Against Five Norms, Annemarie Bridy

Fordham Intellectual Property, Media and Entertainment Law Journal

In 2008, in recognition of the DMCA’s inadequacy in the face of P2P file sharing, and with the high-profile case of Arista Records v. Lime Group pending in federal district court in New York, then New York State Attorney General Andrew Cuomo began pressuring broadband providers to agree voluntarily to play a greater role in fighting online infringement. Subsequently, the Obama administration, represented nationally by the Office of the Intellectual Property Enforcement Coordinator (IPEC) and internationally by the Office of the United States Trade Representative (USTR), expressly endorsed the concept of privately negotiated anti-piracy collaborations between corporate rights owners and …

Toward A Limited Right Of Publicity: An Argument For The Convergence Of The Right Of Publicity, Unfair Competition And Trademark Law, Andrew Beckerman-Rodau

Fordham Intellectual Property, Media and Entertainment Law Journal

The right of publicity — the most recently developed type of intellectual property — allows a person to control commercial use of his or her identity. The scope of the right has expanded significantly since its inception because many courts and commentators have misinterpreted it, viewing it as a pure property right justified by a labor or unjust enrichment theory. Rather, this article contends that it should be evaluated in light of the utilitarian justification for intellectual property law. Rewarding people by allowing them to monetize their public persona is not the goal of the right of publicity. The goal …

Evolution Or Mutation?: The Elimination Of High Mark Similarity Standards In Federal Dilution Law, Matthew A. Karmel

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

Who Owns Your Body Art?: The Copyright And Constitutional Implications Of Tattoos, Meredith Hatic

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

Red Card: Using The National Football League’S “Rooney Rule” To Eject Race Discrimination From English Professional Soccer’S Managerial And Executive Hiring Practices, Jeremy Corapi

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

News On The Internet, Robert Denicola

Fordham Intellectual Property, Media and Entertainment Law Journal

Newspapers are in trouble. Circulation and advertising are down as readers shift from print to online media. Although changing reader preferences and the loss of lucrative classified advertising to online sources are major worries, the news media seems preoccupied with news aggregators and bloggers who distribute news content on the internet without permission. Newspapers are not the only ones worried about the unauthorized distribution of "their" news on the internet. Financial services companies are unhappy about the distribution of their "hot" stock recommendations and other content providers seek to control online news ranging from movie schedules to business ratings. Traditional …

Litigation Following A Cyber Attack: Possible Outcomes And Mitigation Strategies Utilizing The Safety Act, Brian E. Finch, Leslie H. Spiegel

Santa Clara High Technology Law Journal

Liability for a cyber attack is not limited to the attackers. An attack may be foreseeable in some circumstances, and the failure of the target or the other entities to take steps to prevent the attack can constitute a breach of duty to injured victims. In the absence of the protections provided by the Support Anti-Terrorism By Fostering Effective Technologies (SAFETY) Act, a cyber attack on a chemical facility could give rise to a number of common-law tort and contract claims against the target of the attack and other entities, potentially including the target’s cyber security vendors. This article discusses …

Choosing The Genetics Of Our Children: Options For Framing Public Policy, Girard Kelly

Santa Clara High Technology Law Journal

This paper examines the controversial topic of choosing our children’s genes through human germ-line manipulation otherwise known as Inheritable Genetic Modification (IGM) with current Assisted Reproductive Technologies (ARTs) and future Reproductive Genetic Biotechnologies (RGBs) such as genetic engineering. The purpose of the paper is to examine these potentially revolutionary biotechnologies and the emerging social, and bioethical perspectives advanced by both proponents and opponents—in the context of the legal and regulatory policies impacting ARTs and RGBs. Lastly, the paper recommends new public policy and regulatory frameworks to support future research and development of RGBs by providing legislative guidance to policymakers to …

Bringing Standards To Life: Synthetic Biology Standards And Intellectual Property, Andrew W. Torrance, Linda J. Kahl

Santa Clara High Technology Law Journal

In aspiring to become a true engineering discipline for the biological sciences, the field of synthetic biology has a unique opportunity to create and encourage the widespread adoption of standards to enhance innovation and social impact in the field. This article presents a study of the standards setting efforts by the institutions, firms, governments, and individuals within the field of synthetic biology.

Numerous standards have been proposed in synthetic biology, including those relevant to structure, function, description, measurement, data, information exchange, software, biosafety and biosecurity, and even law. At the present time, the adoption of technical standards has been relatively …

Information Costs And Reverse Payment Settlements: Bridging The Gap Between The Courts And The Antitrust Agencies, Brenna E. Jenny

Santa Clara High Technology Law Journal

Reverse payment settlements have attracted increased scrutiny due to the controversial presence of a payment from a brand-name drug company to a generic company that is ostensibly preparing to infringe on the branded company’s patent. The antitrust agencies and the courts settled into an intergovernmental stalemate regarding the appropriate framework of analysis to apply when reviewing antitrust challenges to these settlements. The FTC and DOJ have viewed the deals skeptically as a vehicle for competitors to split monopoly profits, but the lower courts have generally been deferential to what they identified as an exercise of a patent holder’s lawful right …

Injunctive And Reverse Settlements In Competition-Blocking Litigation (With Keith N. Hylton), Sungjoon Cho

All Faculty Scholarship

We distinguish standard settlements, in which the status quo is preserved, and injunctive settlements, which prohibit the defendant’s activity. The reverse settlement is a special type of injunctive settlement. We examine the divergence between private and social incentives to settle and policies that would minimize socially undesirable injunctive and reverse settlements (e.g., banning reverse settlements). The results are applied to competition-blocking litigation, such as patent infringement and antidumping.

Responsible Patent Protections: Preserving Public Health Objectives In The Trans-Pacific Partnership Agreement, Christina Bucci

Global Business & Development Law Journal

No abstract provided.

Coping With The America Invents Act: Patent Challenges For Startup Companies, Patricia E. Campbell

Faculty Scholarship

No abstract provided.

Fashion And U.S. Ip Law, Marketa Trimble

Boyd Briefs / Road Scholars

No abstract provided.

International Covergence On The Need For Third Parties To Become Internet Copyright Police (But Why?), Dennis S. Karjala

Richmond Journal of Global Law & Business

No abstract provided.

Affixing The Service Mark: Reconsidering The Rise Of An Oxymoron, Peter J. Karol

Law Faculty Scholarship

This article explores the deep and to date unacknowledged contradictions underlying service marks (trademarks used in connection with services rather than goods). Namely, the Lanham Act statutorily mandates treating trademarks the “same” as service marks; yet it simultaneously loosens requirements for proving service mark “use” by allowing mere advertising to substantiate service mark rights. This shortcut is not permitted with trademarks as such. As a result of this imbalance, sophisticated trademark practitioners may now quickly secure vast service mark rights for clients in ways not available for trademarks.

To better understand current service mark practice, and the above contradictions, the …

Hey, He Stole My Copyright: Putting Theft On Trial In The Tenenbaum Copyright Case, Peter J. Karol

Law Faculty Scholarship

This article approaches the well-publicized Joel Tenenbaum copyright case through an analysis of its highly-charged trial rhetoric. In particular, it argues that the case as tried was not really about Joel Tenenbaum or his actions. Rather, the trial was about whether, and to what extent, peer-to-peer (“P2P”) file sharing is “theft,” and the P2P sharer a “thief.” So approached, the case provides a captivating, perhaps unique, academic case study on the power of theft rhetoric in a copyright trial as advanced before a jury.

It first introduces the Tenenbaum litigation generally, and its place in the recording companies’ broad attack …

Intellectual Property And Public Health – A White Paper, Ryan G. Vacca, James Ming Chen, Jay Dratler Jr., Thomas Folsom, Timothy S. Hall, Yaniv Heled, Frank A. Pasquale, Elizabeth A. Reilly, Jeffery Samuels, Katherine J. Strandburg, Kara W. Swanson, Andrew W. Torrance, Katharine A. Van Tassel

Faculty Scholarship

On October 26, 2012, the University of Akron School of Law’s Center for Intellectual Property and Technology hosted its Sixth Annual IP Scholars Forum. In attendance were thirteen legal scholars with expertise and an interest in IP and public health who met to discuss problems and potential solutions at the intersection of these fields. This report summarizes this discussion by describing the problems raised, areas of agreement and disagreement between the participants, suggestions and solutions made by participants and the subsequent evaluations of these suggestions and solutions. Led by the moderator, participants at the Forum focused generally on three broad …

The Reciprocity Of Search, Tun-Jen Chiang

Vanderbilt Law Review

The discussion of search in patent law always focuses on one particular model of search: producers of commercial products are supposed to identify the patents that their products might infringe and then negotiate a license from the owners of those patents. This one-sided view of search responsibility is most evident in doctrine. As a doctrinal matter, patent law imposes an absolute duty on the producer of a commercial product to find all relevant patents and obtain licenses from each of the owners before commencing manufacture. Failure to meet this duty is punished by liability for infringement, where ignorance of the …

Patent Variation: Discerning Diversity Among Patent Functions, Jessica Silbey

Loyola University Chicago Law Journal

This Article describes and analyzes qualitative interview data collected over a five-year period. The goal of the interviews was to explore the roles of intellectual property (“IP”) in IP rich fields. Interviews were with diverse actors in a wide-range of industries: film, book publishing, visual arts, internet commerce, biology, engineering, chemistry, computer science. The data described and analyzed in this Article focuses on the specific question about the diverse functioning of patents in the subset of interviewees who are scientists and engineers, their lawyers and business partners. The Article proceeds in two parts. Part I describes the empirical dimension of …

Legal Issues In Mass Digitization: A Preliminary Analysis And Discussion Document, United States Copyright Office

AALL Legal Website of the Month

The Library of Congress Copyright Office published a preliminary analysis and discussion document that addresses the issues raised by the intersection between copyright law and the mass digitization of books. The purpose of the analysis is to facilitate further discussions among the affected parties and the public discussions that may encompass a number of possible approaches, including voluntary initiatives, legislative options, or both. The document also identifies questions to consider in determining an appropriate policy for the mass digitization of books.

Using Valuation-Based Decision Making To Increase The Efficiency Of China's Patent Subsidy Strategies, William Murphy, John L. Orcutt

Law Faculty Scholarship

[Excerpt] “The Chinese government has grown concerned that its patent fee subsidy programs have not funded the most deserving patents, and thus they no longer wish to spend public resources to promote low-value patents. Instead, the government would prefer subsidy programs that encourage the most deserving patents. The Patent Strategy reflects this desire, as the fourth strategic focus of the Patent Strategy recognizes the need to “[o]ptimize [China’s] patent subsidy policy and further define the orientation to enhance patent quality.”19 This Article explains how a disciplined and transparent valuation-based decision making process can help the Chinese government design patent fee …

Patent Invalidity Versus Noninfringement, Roger Allen Ford

Law Faculty Scholarship

Most patent scholars agree that the Patent and Trademark Office grants too many invalid patents and that these patents impose a significant tax upon industry and technological innovation. Although policymakers and scholars have proposed various ways to address this problem, including better ex ante review by patent examiners and various forms of ex post administrative review, district courts invalidating patents in litigation remain a core defense against bad patents. This article analyzes a previously unidentified impediment to the use of district courts to invalidate patents. Nearly every patent lawsuit rises or falls on one of two defenses: invalidity or noninfringement. …

Intellectual Property And Opportunities For Food Security In The Philippines, Jane Payumo, Howard Grimes, Antonio Alfonso, Stanley P. Kowalski, Keith Jones, Karim Maredia, Rodolfo Estigoy

Law Faculty Scholarship

By 2050, the Philippine population is projected to increase by as much as 41 percent, from 99.9 million to nearly 153 million people. Producing enough food for such an expanding population and achieving food security remain a challenge for the Philippine government. This paper argued that intellectual property rights (IPR) can play a key role in achieving the nation’s current goal to be food-secure and provided examples to illustrate that the presence of sound intellectual property (IP) helps foster research, development, and deployment of agricultural innovations. This paper also offered key recommendations about how the IP system can be further …