Intellectual Property Law Commons^™

The Cessation Of Innovation: An Inquiry Into Whether Congress Can And Should Strip The Supreme Court Of Its Appellate Jurisdiction To Entertain Patent Cases, Catherine Taylor

Chicago-Kent Law Review

No abstract provided.

Are Patents Really Limited To 20 Years?, Melody Wriz

Oklahoma Journal of Law and Technology

No abstract provided.

Samsung V. Apple: Taking A Bite Out Of The Design Patent “Article Of Manufacture” Controversy, Elizabeth M. Gil

University of Miami Business Law Review

Smartphones have become a universal item. A smartphone is comprised of hundreds of thousands of patented inventions, many of which are design patents.1It is these design patents that are at the center of the highly-contested case of Samsung Electronics Co., Ltd. v. Apple Inc., which involves three of the design patents within Apple’s iPhone. Beginning in 2011, Apple and Samsung have been in a seemingly never-ending litigious battle over these design patents with the case commencing in the district court, climbing up to the Supreme Court of the United States, and returning to the district court. It is this …

Causal Responsibility And Patent Infringement, Dmitry Karshtedt

Vanderbilt Law Review

It is not uncommon for multiple parties in the stream of commercemanufacturers, distributors, end users-to be involved in the infringement of a single patent. Yet courts continue to struggle with such scenarios. Attempts to deal with them-particularly when plaintiffs asserted so-called method patents, which cover specific "steps," or actions-have produced results that defy commonsense notions of legal responsibility. In method patent cases, the patentee must clear much higher legal hurdles to prevail against a manufacturer who designed and supplied an infringing device than against an end user who simply bought that device and operated it as intended. The manufacturer can …

Fixing Forum Selling, Brian L. Frye, Christopher J. Ryan Jr.

Law Faculty Scholarly Articles

"Forum selling” is jurisdictional competition intended to attract litigants. While consensual forum selling may be beneficial, non-consensual forum selling is harmful because it encourages jurisdictions to adopt an inefficient pro-plaintiff bias. In the last 20 years, the Eastern District of Texas has adopted an aggressive and remarkably successful policy of non-consensual forum selling in patent infringement actions. In 2016, 44% of all patent infringement actions were filed in the Eastern District of Texas, and 93% of them were filed by patent assertion entities or “patent trolls.”

In December 2016, the Supreme Court granted certiorari in TC Heartland v. Kraft, …

Enhanced Damages For Patent Infringement: A Normative Approach, Keith N. Hylton

Faculty Scholarship

This paper takes a normative approach to patent infringement damages. Its underlying premise is that the goal of a damages regime should be to maximize society's welfare. Patent damages should therefore balance society's interest in encouraging innovation against the need to regulate infringement incentives. This balancing approach generates an optimal standard for awarding enhanced damages and guidelines for determining the size of the damages multiplier. On the legal standard, the approach developed here illuminates the factors that should be taken into consideration in the enhancement analysis, and, more importantly, the reasons those factors should be considered. On the precise size …

The "Strict Liability" Of Direct Patent Infringement, Lynda J. Oswald

Vanderbilt Journal of Entertainment & Technology Law

In 1995, the Federal Circuit summarily attached the label of "strict liability" to direct patent infringement, even though that term does not appear in any US Patent Act enacted in the past two centuries. The catechism of "strict" direct patent infringement liability is now so well engrained in patent doctrine that it is easy to lose sight of how recent the advent of this terminology is in the case law, and how troublesome application of this standard has proven, even to the Federal Circuit, which created it. The first Patent Act (1790) preceded the emergence of tort law as a …

Enhancing Ongoing Royalties: The Inequitable Equitable Remedy, Layne S. Keele

West Virginia Law Review

No abstract provided.

Plausible Pleading In Patent Suits: Predicting The Effects Of The Abrogation Of Form 18, Kyle R. Williams

Michigan Telecommunications & Technology Law Review

On December 1, 2015, amendments to the Federal Rules of Civil Procedure took effect. The changes included, among other things, the abrogation of the Appendix of Forms, which contained templates for summons, complaints, answers, and other litigation documents. Prior to its abrogation, Form 18—a template for a “Complaint for Patent Infringement”—was widely utilized by patent plaintiffs in crafting infringement complaints. Form 18 was created during the Conley pleading regime, when conclusory allegations were generally sufficient to survive a motion to dismiss. Accordingly, the sample allegations in Form 18 were conclusory and bare-bones in nature. Under Conley, plaintiffs who followed this …

When An Idea Is More Than Just An Idea: Insurance Coverage Of Business Method Patent Infringements Suits Under Advertising Injury Provisions Of Commercial General Liability Policies, Grace N. Witte

Georgia Journal of Law & Technology

No abstract provided.

Commil Usa, Llc V. Cisco Systems: Joining Policy And Prose To Foster A Good Faith Analysis, Theresa E. Durante

Maryland Law Review Online

No abstract provided.

Key Words And Tricky Phrases: An Analysis Of Patent Drafters' Attempts To Circumvent The Language Of 35 U.S.C. § 112, Stephen J. Stark

Georgia Journal of Law & Technology

No abstract provided.

Patent Compensation Under 35 U.S.C. § 284, Vincent P. Tassinari

Georgia Journal of Law & Technology

No abstract provided.

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

Notre Dame Law Review

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 …

The 2015 Changes To The Federal Rules Matter For Your Patent Case And Tech Business: Getting In The Courthouse Door Just Got Tougher, Matthew D'Amore

Cornell Law Faculty Publications

No abstract provided.

Medical Process Patents: Can We Live Without Them? Should We?, Lara L. Douglass

Georgia Journal of Law & Technology

No abstract provided.

The Patent Reexamination Reform Act Of 1994: A New Era Of The Third Party Participation, Shannon M. Casey

Georgia Journal of Law & Technology

No abstract provided.

Intel V. Ulsi System Technology, Mark J. Rozman

Georgia Journal of Law & Technology

No abstract provided.

Limiting Downstream Effects Of Patent Licensing Activity In Software And Electronics: An Argument For Alienability Of Patent Licenses To Licensees' Business Successors, Anna A. Onley

Chicago-Kent Law Review

Frustrating the ability to transfer ownership is costly, and non-creative entities (NCEs) may contribute to rising costs of innovation by contractually requiring their licensees to seek NCE consent to subsequent license transfers. One possible way of gradually limiting the reach of NCEs in this area is to expand the doctrine of patent misuse—which supports the unenforceability defense to patent infringement—to construe restraints on alienation of patent licenses as patent misuse. This narrowly tailored approach, discussed in this Note, minimizes the risk of negative impact on the patent system because it avoids the question of patent invalidity and does not seek …

The Supreme Court’S Quiet Revolution In Induced Patent Infringement, Timothy R. Holbrook

Sturm College of Law: Faculty Scholarship

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 …

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. …

Brief Of Amici Curiae 56 Professors Of Law And Economics In Support Of Petition Of Writ Of Certiorari, John R. Allison, Margo Bagley, James Bessen, Jeremy Bock, Daniel H. Brean, Michael A. Carrier, Michael W. Carroll, Bernard Chao, Tun-Jen Chiang, Colleen V. Chien, Andrew Chin, Robert Cook-Deegan, Md, Rochelle Dreyfuss, Dr. Dieter Ernst, Samuel F. Ernst, Robin C. Feldman, Lee Fleming, Brian Frye, William Gallagher, Shubha Ghosh, Eric Goldman, Bronwyn H. Hall, Yaniv Heled, Christian Helmers, Joachim Henkel, Susan Helper, Tim Holbrook, Herbert Hovenkamp, William Hubbard, Dr. Xavier Jaravel, Dennis S. Karjala, Peter Lee, Mark A. Lemley, David K. Levine, David S. Levine, Doug Lichtman, Yvette Joy Liebesman, Orly Lobel, Brian Love, Phil Malone, Michael J. Meurer, Dr. Shawn Miller, Matthew Mitchell, Susan Barbieri Montgomery, Sean Pager, Arti K. Rai, Jacob H. Rooksby, Jorge R. Roig, Matthew Sag, Pamela Samuelson, Ana Santos Rutschman, Lea Bishop Shaver, Toshiko Takenaka, John L. Turner, Jennifer Urban, Eric Von Hippel

Faculty Scholarship

28 U.S.C. § 1400(b) provides that a defendant in a patent case may be sued where the defendant is incorporated or has a regular and established place of business and has infringed the patent. This Court made clear in Fourco Glass Co. v. Transmirra Prods. Corp., 353 U.S. 222, 223 (1957), that those were the only permissible venues for a patent case. But the Federal Circuit has rejected Fourco and the plain meaning of § 1400(b), instead permitting a patent plaintiff to file suit against a defendant anywhere there is personal jurisdiction over that defendant. The result has been rampant …

The Rule Of Reason And The Scope Of The Patent, Herbert Hovenkamp

San Diego Law Review

For a century-and-a-half, the Supreme Court has described perceived abuses of patents as conduct that reaches "beyond the scope of the patent." That phrase, which evokes an image of boundary lines in real property, was applied to both government and private activity and came to have many different meanings. Sometimes it was used offensively to conclude that certain patent uses were unlawful because they extended beyond the scope of the patent. Later it came to be used defensively as well, to characterize activities as lawful if they did not extend beyond the patent's scope. In the first half of the …

Have We Gone Too Far: Does The Seventh Amendment Compel Fact-Finding Before Reaching A Decision On Patent-Eligible Subject Matter?, Jesse D.H. Snyder

Chicago-Kent Journal of Intellectual Property

No abstract provided.

Aspex Eyewear, Inc. V. Marchon Eyewear, Inc. And Brain Life, Llc. V. Elekta, Inc.: Irreconcilable Conflict In The Law Governing Claim Preclusion In Patent Cases, Christopher Petroni

Chicago-Kent Journal of Intellectual Property

In 1991, the Federal Circuit held that a judgment on the merits in a patent infringement action bars future claims based on products that are “essentially the same” as the product at issue in the former suit. This rule governed claim preclusion in patent actions until at least 2009. Then, in 2012, the Federal Circuit upended the apple cart with Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335 (Fed. Cir. 2012), holding that a judgment in an infringement suit never bars future claims against products that could not have been accused in the former litigation, essentially the …

Protection Of Computers And Computer Software Before The United States International Trade Commission: In Re Certain Personal Computers And Components Thereof, Nicholas N. Leach

Georgia Journal of International & Comparative Law

No abstract provided.

Ongoing Royalties In Patent Cases After Ebay: An Empirical Assessment And Proposed Framework, Christopher B. Seaman

Scholarly Articles

While the Federal Circuit has authorized the award of ongoing royalties as an equitable alternative to a permanent injunction, numerous questions regarding such relief remain unresolved, including when ongoing royalties should be awarded, the structure and methodology for computing an award, and possible enhancement of the royalty rate for post-judgment willful infringement. Despite lower courts' attempts to grapple with these issues, a comprehensive methodology for determining ongoing royalties has yet to emerge.

This Article seeks to fill this void in two ways. First, it empirically assesses how courts have resolved claims for ongoing royalties by prevailing patentees. It does so …

Patent Punting: How Fda And Antitrust Courts Undermine The Hatch-Waxman Act To Avoid Dealing With Patents, Rebecca S. Eisenberg, Daniel A. Crane

Michigan Telecommunications & Technology Law Review

Under the Hatch-Waxman Act, patent law and FDA regulation work together to determine the timing of generic entry in the market for drugs. But FDA has sought to avoid any responsibility for reading patents, insisting that its role in administering the patent provisions of the Hatch-Waxman Act is purely ministerial. This gap in regulatory oversight has allowed innovators to use irrelevant patents to defer generic competition. Meanwhile, patent litigation has set the stage for anticompetitive settlements rather than adjudication of the patent issues in the courts. As these settlements have provoked antitrust litigation, antitrust courts have proven no more willing …

Global Data Meets 3-D Printing: The Quest For A Balanced And Globally Collaborative Solution To Prevent Patent Infringement In The Foreseeable 3-D Printing Revolution, Tyler Macik

Indiana Journal of Global Legal Studies

This Note explores a potential global solution to the foreseeable patent infringement problems with 3-D printing and do-it-yourself users. More specifically, at a time when 3-D printing is quickly gaining popularity and recognition for its many beneficial applications through advancements in printing and scanning technology, the current state of patent law lacks the ability to detect and prevent patent infringement among do-it-yourself users of 3-D printing. I propose a potential global solution that would provide a balance between fostering growth in 3-D printing and upholding patentees' rights by exploring the possibility of creating a collaborative, intergovernmental 3-D CAD file database …

Pay-For-Delay Settlements In The Wake Of Actavis, Michael L. Fialkoff

Michigan Telecommunications & Technology Law Review

“Pay-for-delay” settlements, also known as reverse payments, arise when a generic manufacturer pursues FDA approval of a generic version of a brand-name drug. If a patent protects the brand-name drug, the generic manufacturer has the option of contesting the validity of the patent or arguing that its product does not infringe the patent covering the brand-name drug. If the generic manufacturer prevails on either of these claims, the FDA will approve its generic version for sale. Approval of a generic version of a brand-name drug reduces the profitability of the brand-name drug by forcing the brand-name manufacturer to price its …