Intellectual Property Law Commons^™

The Effects Of Ebay: Discretion, Statutory Damages, And Private Attorneys-General, Liam O'Melinn

Akron Intellectual Property Journal

If it were not already an apt time to consider the effects of the Supreme Court's eBay v. MercExchange decision, several recent developments serve as reminders of the importance of the issues addressed in the case: In Capitol v. Thomas the recording industry has succeeded in securing a $222,000 judgment in statutory damages for copyright infringement, a software patent infringement suit was filed in October 2007 by IP Innovation and Licensing against Novell and Redhat-seemingly the first suit to target Linux-and the PTO has rejected most of the claims in Amazon's 1-Click patent.

The eBay decision appears to assert that …

Constructed And Enhanced Equities Under Ebay: Whose Right Is It Anyway?, Richard S. Gruner

Akron Intellectual Property Journal

This article treats the injunction issuance standards announced in eBay Inc. v. MercExchange, LLC, as the starting point for patent enforcement planning by sophisticated clients and their patent and corporate attorneys. The eBay standards imply a set of circumstances in which a patent holder will be well-positioned to obtain a patent enforcement injunction, circumstances that patent holders may be able to reach through well-crafted strategic moves. This article explores the actions that a pure licensee patent holder can take to improve its position and establish "constructed equities" that will enhance its chances of obtaining a patent enforcement injunction.

Truth In Intellectual Property Revisited: Embracing Ebay At The Edge, Thomas C. Folsom

Akron Intellectual Property Journal

In addition to whatever else it might do to serve the public interest, intellectual property diminishes the commons. To that extent, any particular intellectual property claim intersects the public interest and affects more than just the immediate parties. Not only does intellectual property diminish the commons, but also each of its disciplines contains an almost casually incoherent metaphysic. There is incoherence, if not at the core, at least at the critical edges of intellectual property law that is systemic and fundamental. Notwithstanding over 200 years of practice in the United States, the goal of establishing a sufficiently principled, practical and …

Opening The Door To Efficient Infringement: Ebay, Inc. V. Mercexchange, L.L.C., Sheri J. Engelken

Akron Intellectual Property Journal

Before the Supreme Court's decision in eBay, Inc. v. MercExchange, L.L.C., the Federal Circuit's "general rule" held sway: after a finding of patent infringement, trial courts were expected to issue permanent injunctions to halt any continuing infringement "absent exceptional circumstances." That general rule was intended to protect a patentee's right to exclude others from making, using, selling, or offering to sell the invention during the monopoly period enjoyed by the patentee. The Supreme Court in eBay rejected the Federal Circuit's general rule, placing the determination of whether and on what terms, if any, to grant a permanent injunction in …

Ebay's Practical Effect: Two Differing Visions, Jay Dratler Jr.

Akron Intellectual Property Journal

This short paper examines the likely effect of the Court's three opinions on the actual practice of intellectual property cases in their remedial phase. The first part briefly discusses the unanimous opinion and its likely economic effect in increasing the already daunting complexity-and therefore the already considerable cost-of intellectual property litigation. The second part examines the first concurring opinion and the effect of its implicit suggestion that nothing much has really changed. The third part examines the possible practical effect of the second concurring opinion. The conclusion then offers a few general observations on where remedial practice in patent cases …

Ebay And The Blackberry: A Media Coverage Case Study, Lisa A. Dolak, Blaine T. Bettinger

Akron Intellectual Property Journal

This paper centers on media coverage relating to eBay and related patent system developments. In particular, it provides a quantitative comparison between media coverage of eBay and that relating to another recent patent case: the litigation between NTP, Inc. and Research in Motion, Ltd. involving the popular BlackBerry® handheld wireless communications device, and examines the extent and nature of the NTP-related coverage in light of the co-pendency of the two cases and the issues they share in common. In so doing, it facilitates consideration of the experience of news coverage consumers - including, presumably, Supreme Court Justices - while eBay …

Are The Secrecy Order Compensation Provisions Of The Patent Act Constitutional Under The Fifth Amendment?, Adam J. Citrin

Akron Intellectual Property Journal

The secrecy order provisions of the Patent Act' raise a number of issues under the U.S. Constitution. The primary focus of this note is on the Fifth Amendment issues raised by the Invention Secrecy Act.

Patent Litigation In Japan, David W. Hill, Shinichi Murata

Akron Intellectual Property Journal

This article will explore how patent litigation in Japan has changed and will also compare and contrast aspects of patent litigation in the U.S. and Japan.

In Part II, we show recent statistical data on Japanese patent infringement litigation. Parts III and IV briefly review the Japanese judicial system and legal professionals in the area of intellectual property. Part V addresses patent-infringement actions in Japan and the recent amendments of the Code of Civil Procedure and the Patent Law. Next, Parts VI and VII discuss infringement analysis and possible defenses in patent-infringement litigation. Part VIII reviews how to calculate the …

An Intentional Tort Theory Of Patents, Saurabh Vishnubhakat

Faculty Scholarship

This Article challenges the dogma of U.S. patent law that direct infringement is a strict liability tort. Impermissibly practicing a patented invention does create liability even if the infringer did not intend to infringe or know about the patent. The consensus is that this is a form of strict liability. The flaw in the consensus is that it proves too little, for the same is true of intentional torts: intent to commit the tort is unnecessary, and ignorance of the legal right is no excuse. What is relevant is intent to perform the action that the law deems tortious. So …

The Youngest Patent Validity Proceeding: Evaluating Post-Grant Review, Saurabh Vishnubhakat

Faculty Scholarship

Of the three major ex post patent validity challenge mechanisms that the 2011 Leahy-Smith America Invents Act put into place, the third is beginning to show signs of use. Post-grant review is an administrative proceeding of remarkable breadth as compared both to inter partes review and to the transition program for covered business method patents. Thus far, however, patent challengers have made very limited use of post-grant reviews: in the nearly three years since the procedure became available, the United States Patent and Trademark Office has received only about two dozen petitions for post-grant review. By contrast, the number of …

A Pharmaceutical Park Place: Why The Supreme Court Should Modify The Scope Of The Patent Test For Reverse Payment Deals, David Ernest Balajthy

Georgia Journal of Law & Technology

No abstract provided.

The Rise And Fall Of The Patent Trolls: How They Lost The Public Relations Battle, Liz Weber

Journalism

Patent trolls gained notoriety in the early 2000s as many nine- and even 10-digit patent infringement settlements made headlines. Trolls claim they are helping inventors get the compensation they deserve for their inventions, while opponents claim trolls are parasites on successful businesses who want glittering pots of gold in exchange for doing absolutely nothing. As the debate continues and parties on both sides continue to call for patent reform, the question arises: what is best of the IP overall market? And how can patent trolls utilize communications best practices to ensure their message is convincingly conveyed to key influencers who …

Unh School Of Law Ip Library: 20th Anniversary Reflection On The Only Academic Ip Library In The United States, Jon R. Cavicchi

Law Faculty Scholarship

[Excerpt] The UNH School of Law Intellectual Property Library celebrates its twentieth anniversary this year. It is a fortuitous time for this look back and for strategic considerations for the future. This anniversary comes at a time in the history of legal education when conditions over the past few years have intensified the analysis of mission and resources for law school libraries. This article is a retrospective review of the history and dynamics surrounding the founding and first twenty years of growth. It is also an analysis of the future growth and mission of the IP Library during times that …

Patent Anticipation And Obviousness As Possession, Timothy R. Holbrook

Sturm College of Law: Faculty Scholarship

The concept of possession in property law operates to allocate property rights among competing claimants by awarding the property to the first to take possession. Possession in this context requires an act that communicates to third parties that someone has exercised dominion over the item. Patent law operates in similar ways. Inventors must disclose their invention in the patent document to memorialize what their creation is. This disclosure communicates to third parties the innovation over which the patent owner is asserting dominion. Patent law has similar first-in-time dynamics, awarding the patent among competing applicants to the first-to-invent under the 1952 …

Patent Disclosures And Time, Timothy R. Holbrook

Sturm College of Law: Faculty Scholarship

Patents by their very nature are pregnant with considerations of time. The exclusive rights they afford only last for a finite period — generally from issuance until twenty years from the filing date of the application. Moreover, since patents necessarily engage with the evolution of technology, patents reflect various “snap shots” in time that reflect the state of the art at a particular moment. Patent law must constantly wrestle with time.

Many of these topics have been explored extensively in both judicial decisions and the academic literature. The most obvious example of considering the temporal aspect of patent law is…obviousness. …

The Case For Incentivizing Healthy Food By Using Patents, Enrico Bonadio

Marquette Intellectual Property Law Review

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In Pursuit Of Patent Quality (And Reflection Of Reification), Kenneth L. Port, Lucas M. Hjelle, Molly Littman

Marquette Intellectual Property Law Review

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Myriad: A Look Into The Future Of Genetic Patentable Subject Matter, Nathan Edward Cromer

Marquette Intellectual Property Law Review

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A Fake Right Of Priority Under The Cross-Strait Agreement On Intellectual Property Right Protection And Cooperation, Ping-Hsun Chen

Marquette Intellectual Property Law Review

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Only A Pawn In The Game: Rethinking Induced Patent Infringement, W. Keith Robinson

Faculty Journal Articles and Book Chapters

A party that causes another to infringe a patent may be liable for induced infringement. Recently, the Supreme Court and the Federal Circuit have interpreted the inducement statute in a way that may be problematic. For example, in a suit for induced patent infringement a plaintiff must show that an accused party had specific intent to cause infringement. The defendant can rebut allegations of induced infringement by showing that he had a good faith belief that he did not infringe the patent. However, a defendant’s good faith belief that the patent is invalid is no longer a defense to inducement. …

The Mayo Framework Is Bad For Your Health, Christopher M. Holman

Faculty Works

This Article begins by providing a brief historical retrospective of the development of the patent eligibility doctrine, and then delves into the related questions of: (1) what are the Supreme Court’s policy objectives for the recent reinvigoration of the patent eligibility doctrine; and (2) has it achieved those objectives? The article then discusses three important out-standing questions regarding the application of the new test for patent eligibility: (1) what constitutes a natural phenomenon; (2) what constitutes an inventive step; and (3) what, if any, role does preemption play in the analysis? The article then provides four examples of recent lower …

The Irrelevance Of Nanotechnology Patents, Emily M. Morris

Faculty Publications

Although scientists have for decades now had the ability to manipulate matter at the atomic level, we have yet to see the nanotechnological revolution that these scientists predicted would follow. Despite the years of effort and billions of dollars that have been invested into research and development thus far, nanotechnology has yielded surprisingly few end-user applications. A number of commentators have blamed this lack of progress on the Bayh-Dole Act and other changes to patent law, arguing that, although these laws are supposed to stimulate technological development, they have in fact had the exact opposite effect when it comes to …

The Supreme Court's Quiet Revolution In Induced Patent Infringement, Timothy R. Holbrook

Faculty Articles

The Supreme Court over the last decade or so has reengaged with patent law. While much attention has been paid to the Court’s reworking of what constitutes patent-eligible subject matter and enhancing tools to combat “patent trolls,” what many have missed is the Court’s reworking of the contours of active inducement of patent infringement under 35 U.S.C. § 271(b). The Court has taken the same number of § 271(b) cases as subject matter eligibility cases—four. Yet this reworking has not garnered much attention in the literature. This Article offers the first comprehensive assessment of the Court’s efforts to define active …

Ip Litigation In U.S. District Courts: 1994-2014, Matthew Sag

Faculty Articles

This Article undertakes a broad-based empirical review of intellectual property ("IP") litigation in U.S. federal district courts from 1994 to 2014. Unlike the prior literature, this study analyzes federal copyright, patent, and trademark litigation trends as a unified whole. It undertakes a systematic analysis of the records of more than 190,000 cases filed in federal courts and examines the subject matter, geographical, and temporal variation within federal IP litigation over the last two decades.

This Article analyzes changes in the distribution of IP litigation over time and their regional distribution. The key findings of this Article stem from an attempt …

Top Tens In 2015: Patent, Trademark, Copyright And Trade Secret Cases, Stephen M. Mcjohn

Suffolk University Law School Faculty Works

The Supreme Court significantly affected the dynamics of patent litigation, holding that patent claim interpretation was not always reviewed de novo and that good faith belief that a patent was invalid was not a defense to infringement. The Federal Circuit potentially changed the approach to patent claim interpretation, holding that claims could be interpreted in light of the written description of the invention, even where the claim was not ambiguous. The Federal Circuit also addressed inducement of patent infringement, holding that it was not inducement to suggest consulting a physician who would likely prescribe an infringing treatment. The Federal Circuit …

Ip Litigation In United States District Courts: 1994 To 2014, Matthew Sag

Faculty Publications & Other Works

This Article undertakes a broad-based empirical review of intellectual property (“IP”) litigation in U.S. federal district courts from 1994 to 2014. Unlike the prior literature, this study analyzes federal copyright, patent, and trademark litigation trends as a unified whole. It undertakes a systematic analysis of the records of more than 190,000 cases filed in federal courts and examines the subject matter, geographical, and temporal variation within federal IP litigation over the last two decades.

This Article analyzes changes in the distribution of IP litigation over time and their regional distribution. The key findings of this Article stem from an attempt …

A Collision Course Between Trips Flexibilities And Investor-State Proceedings, Cynthia M. Ho

Faculty Publications & Other Works

This Article discusses an important, yet understudied threat to patent, as well as other intellectual property sovereignty under TRIPS: pending and potential challenges by companies under international agreements protecting investments. Although such agreements have existed for decades, Philip Morris and Eli Lilly are blazing a new path for companies to sue countries they claim interfere with their intellectual property rights through so-called investor-state arbitrations. These suits seek hundreds of millions in compensation and even injunctive relief for alleged violations of internationally agreed intellectual property norms. The suits fundamentally challenge TRIPS flexibilities at the very time the Declaration on Patent Protection …

Intellectual Property Law Hybridization, Clark D. Asay

Faculty Scholarship

Traditionally, patent and copyright laws have been viewed as separate bodies of law with distinct utilitarian goals. The conventional wisdom holds that patent law aims to incentivize the production of inventive ideas, while copyright focuses on protecting the original expression of ideas, but not the underlying ideas themselves. This customary divide between patent and copyright laws finds some support in the Constitution’s Intellectual Property Clause, and Congress, courts, and scholars have largely perpetuated it in enacting, interpreting, and analyzing copyright and patent laws over time.

In this Article, I argue that it is time to partially breach this traditional divide. …

Awarding Attorney Fees And Deterring 'Patent Trolls', W. Keith Robinson

Faculty Journal Articles and Book Chapters

A court may award attorney fees to a prevailing party in a patent trial under exceptional circumstances. Since 2005, courts had applied a rigid formula to determine whether a case was exceptional. In the summer of 2014, the Supreme Court rejected this rigid test. Instead, the Court held that an exceptional case is “simply one that stands out from others.” Finding a case exceptional, the Court said, was at the discretion of the district court and only reviewable on appeal for an abuse of discretion.

A little over a year later, one interesting question is: how do district courts now …

Intellectual Property Law Hybridization, Clark D. Asay

University of Colorado Law Review

Traditionally, patent and copyright laws have been viewed as separate bodies of law with distinct utilitarian goals. Conventional wisdom holds that patent law aims to incentivize the production of inventive ideas, while copyright focuses on protecting the original expression of ideas, but not the underlying ideas themselves. This customary divide between copyright and patent laws finds some support in the distinction between "authors" and "inventors," as well as that between "writings" and "discoveries," in the U.S. Constitution's Intellectual Property Clause. And Congress, courts, and scholars have largely perpetuated the divide in separately enacting, interpreting, and analyzing copyright and patent laws …