Intellectual Property Law Commons^™

The More Things Change, The More They Stay The Same: Implications Of Pfaff V. Wells Electronics, Inc. And The Quest For Predictability In The On-Sale Bar, Timothy R. Holbrook

Faculty Articles

This Article posits a two prong approach to the on-sale bar. First, for the anticipatory version, the courts should expressly incorporate the law of enablement under 35 U.S.C. § 112 and of utility under 35 U.S.C. § 101 into the on-sale bar, thus providing a well-known body of law to promote predictability. Procedurally, the courts should establish a hierarchy of evidence, similar to the approach used in claim construction, that considers certain, more readily available information as the most pertinent while eschewing the use of expert testimony and other litigation based evidence. Second, for the obviousness version of the on-sale …

Echoes Of Scientific Truth In The Halls Of Justice: The Standards Of Review Applied By The United States Court Of Appeals For The Federal Circuit In Patent-Related Matters , Lawrence M. Sung

American University Law Review

No abstract provided.

Zurko Raises Issue Of Patentability Standards, Thomas G. Field Jr.

Law Faculty Scholarship

In re Zurko isolated one of the oldest U.S. agencies from mainstream administrative law because the Federal Circuit has chosen to review the U.S. Patent and Trademark Office more as it would a federal district court. The case is important, if only because the Supreme Court rarely treats the PTO as an agency. Also, regardless of whether the issue or the Federal Circuit itself is the primary target, the decision could have a major effect on the type of case most commonly encountered by that court.

Escaping The World Of I Know It When I See It: A New Test For Software Patent Ability, Brooke Schumm Iii

Michigan Telecommunications & Technology Law Review

The major thesis presented in this article is a focused standard of software patentability, in particular for pure computational methods or algorithms directed to the manipulation of numbers operating on a computer. The general philosophy is to compel inventors to narrow their claims to an algorithm expressed in terms of its utility and then to require that the particular utility or functionality be expressed in the claim as a limit on the claim, thus precluding the patent monopoly from being overbroad. As a corollary, any person is free to use or perhaps to patent the algorithm for a different utility …

Sofware Patents And The Information Economy, Michael Perelman

Michigan Telecommunications & Technology Law Review

Modern economists universally acknowledge that information is an essential component of productivity. Moreover, as they begin to focus more and more on the nature of information, their conception of information widens considerably.

Judicial Deference To The Pto's Interpretations Of The Patent Law, R. Carl Moy

Faculty Scholarship

This article attempts to provide a basis upon which to preserve the Federal Circuit's current lawmaking primacy. Given the large body of preexisting literature on Chevron, USA, Inc v. Natural Resources Defense Council, it does not address whether Chevron allocates power between agencies and the courts optimally. Rather, the article examines how the PTO's statutory interpretations should be reviewed under Chevron. In Section I, the article places the examination in context by describing the Chevron decision and its general implications. Section II of the article examines how Chevron should be applied specifically in the context of reviewing statutory interpretations of …

Personal Jurisdiction Over Aliens In Patent Infringement Actions: A Uniform Approach Toward The Situs Of The Tort, David Wille

Michigan Law Review

This Note examines current approaches to the question of personal jurisdiction over alien patent infringers. Part I describes personal jurisdiction requirements in the context of patent infringement suits against aliens. The leading case addressing these requirements has been interpreted differently by several courts, thus resulting in conflicting outcomes. Part II explains the current controversy over the locus of the tort of patent infringement. The three different modes of reasoning currently used by courts to determine the locus of the tort would allow immunity from suit for the alien in at least two hypothetical cases. This Part concludes that in order …

The New World Of Patents Created By The Court Of Appeals For The Federal Circuit, Martin J. Adelman

University of Michigan Journal of Law Reform

The purpose of this Article is to outline the creation of this new circuit and to analyze its position on several substantive issues. Part I discusses the origin and power of the Federal Circuit. Part II analyzes the court's recent decisions on the issues of nonobviousness, infringement, inequitable conduct, patent misuse, and jury trials. This Article concludes that the Federal Circuit has in general performed well, but there are areas of patent law that must be refined for the court to further its intended goals.

Law And Fact In Patent Litigation: Form Versus Function, Thomas G. Field Jr

Law Faculty Scholarship

Recently, the Supreme Court sent Dennison Mfg. v. Panduit Corp. back to the Court of Appeals for the Federal Circuit (CAFC). It remanded with explicit directions that the lower court consider the extent to which Rule 52(a) governs appellate review of determinations of obviousness.

It is by no means certain that obviousness determinations should be treated as questions of law. Nevertheless, there is ample evidence that courts seek to review findings of obviousness (or nonobviousness) more intensely than would be appropriate under the "clearly erroneous" or "substantial evidence" standards. If the courts are inclined to persist in more intense review …