Intellectual Property Law Commons^™

Reasonable Certainty & Corpus Linguistics: Judging Definiteness After Nautilus & Teva, Joseph S. Miller

Scholarly Works

In Nautilus (2014), the Supreme Court held “that a patent is invalid for indefiniteness if its claims...fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” We don’t require perfect clarity because, as Festo (2002) highlights, patentees can’t achieve it. We don’t launch a post hoc judicial salvage operation to rescue slipshod text because, as the functional-claiming cases from the 1930s and 1940s highlight, others can’t adequately plan around it. Reasonably certain notice, then, is just right: § 112 “require[s] that a patent’s claims, viewed in light of the specification and prosecution history, …

Pierson, Peer Review, And Patent Law, Lisa L. Ouellette

Vanderbilt Law Review

When has a researcher done enough to merit a patent? Should the patent belong to the researcher who first suggests an invention or the one who brings it to fruition? The canonical dispute over a fox in Pierson v. Post is used to illustrate the competing policy considerations in deciding when to award a new property right, including providing efficient incentives, setting forth clear rules to guide future behavior, and respecting natural rights. In patent law, all of these considerations suggest that in practice, many patents are awarded too early, before an applicant has demonstrated that the invention is likely …

Legal Fictions And The Role Of Information In Patent Law, Craig A. Nard

Vanderbilt Law Review

In his 1974 Nobel Prize Lecture, Freidrich Hayek admonished us, as he did throughout so much of his work, about the limitations of our knowledge and stressed what knowledge we do have should be used "not to shape the results as the craftsman shapes his handiwork, but rather to cultivate a growth by providing the appropriate environment." This analogy-what Hayek referred to as the "pretense of knowledge"-is germane to legal systems where the common law plays a prominent role. Patent law is such a field. Judicial stewardship of the patent space can be seen as an institutional advantage, one that …

Physicalism And Patent Theory, Christopher A. Cotropia

Law Faculty Publications

United States patent law’s view on the need for a physical embodiment of the invention, and the continued production and use of an embodiment, has varied over the last two centuries. In the early days, the requirement for “physicalism” was high, with the inventor being required to actually reduce the invention to practice prior to patenting, and enforceability was tied to “working” the claimed invention. By the early 1900s, these requirements of physicalism disappeared. This changing view on physicalism speaks volumes as to which major patent theory the law emphasizes, with physicalism supporting the incentive to invent theory and the …

The Doctrinal Structure Of Patent Law's Enablement Requirement, Jason Rantanen

Vanderbilt Law Review

This Article examines the formal law of enablement, focusing on a perceived split in the enablement doctrine: whether disclosure of a single mode of an invention is necessarily sufficient to satisfy the requirement of enablement or whether the full scope of the claim must be enabled. In examining this split, this Article articulates the enablement inquiry in conceptual terms, identifying two elements of the courts' analyses that are implicit in every enablement determination: the nature of enablement disputes, as challenges and the articulation of a target or targets that must be enabled. , With this understanding in mind, the "full …

The Structural Implications Of Inventors' Disclosure Obligations, Kevin E. Collins

Vanderbilt Law Review

Disclosure theory posits that inventors must disclose knowledge about their inventions and make that knowledge freely available for certain uses during the term of a patent as part of the price that they pay for their exclusive patent rights. This Article identifies an overlooked implication of this disclosure obligation. The availability of disclosed knowledge itself for free public use during the term of a patent means that there must be limits on inventors' rights: inventors must not be allowed to transform the use of disclosed knowledge itself into infringement through strategic claiming. If they could, inventors would, oddly, be able …

(In)Valid Patents, Paul Gugliuzza

Faculty Scholarship

Increasingly, accused infringers challenge a patent’s validity in two different forums: in litigation in federal court and in post-issuance review at the Patent and Trademark Office (PTO). These parallel proceedings have produced conflicting and controversial results. For example, in one recent case, a district court rejected a challenge to a patent’s validity and awarded millions of dollars in damages for infringement. The Federal Circuit initially affirmed those rulings, ending the litigation over the patent’s validity. In a subsequent appeal about royalties owed by the infringer, however, the Federal Circuit vacated the entire judgment — including the validity ruling and damages …

Coordination-Focused Patent Policy, Stephen Yelderman

Journal Articles

This Article explores the practical consequences of an important shift that has recently taken place in patent theory. Although it was long agreed that the purpose of granting patents is to reward invention, today many scholars instead attempt to justify the patent system based on its role in facilitating information exchange and enabling technical coordination among firms. This change in justification is controversial, and its viability remains a fiercely contested question. But despite intense attention at the level of theory, little has been said about the consequences of this debate for patent policy itself. This Article addresses that void, developing …

Defending Breakthrough Innovation: The History And Future Of The State Of Patent Law, Max Oppenheimer

All Faculty Scholarship

Congress, while enacting at least six major revisions to patent law since 1793, has left the definition of patentable subject matter essentially unchanged. The Supreme Court, on the other hand, has been uncomfortable with the concept for more than a century. Despite this long-standing discomfort, it has struggled to advance a theoretical basis for its concern. In a series of recent cases, it has finally developed a theory as to why certain types of inventions, although embraced by the statutory definition, are nonetheless unpatentable. The theory, in effect, abandons the federal government’s role in protecting those inventions. This article explores …

Patent Privateers And Antitrust Fears, Matthew Sipe

Michigan Telecommunications & Technology Law Review

Patent trolls are categorically demonized as threatening American innovation and industry. But whether they are a threat that antitrust law is equipped to deal with is a complex question that depends on the particular type of patent troll and activities they engage in. This Article looks specifically at privateer patent trolls: entities that acquire their patents from operating entities and assert them against other industry members. In the particular context of privateering, antitrust law is almost certainly not the proper legal solution. Privateering does raise significant issues: circumventing litigation constraints, evading licensing obligations, and raising the cost and frequency of …

Rent-Seeking And Inter Partes Review: An Analysis Of Invalidity Assertion Entities In Patent Law, W. Michael Schuster

Michigan Telecommunications & Technology Law Review

This Essay is the first analysis of a recent entrant on the patent landscape: the Invalidity Assertion Entity (IAE). IAEs engage in rent-seeking by demanding payment from patent holders in exchange for not attempting to invalidate their patents through administrative action before the U.S. Patent and Trademark Office. The response to IAEs has been uniformly negative. Reflexive proposals have been raised in Congress (unsurprisingly) to terminate the IAE business model. In contrast to the common response to IAEs, this Essay discusses how profit-driven IAEs may generate socially beneficial externalities and why legislating to end the IAE business model is imprudent.

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 …

Innovation Heuristics: Experiments On Sequential Creativity In Intellectual Property, Stefan Bechtold, Christopher Buccafusco, Christopher Jon Sprigman

Indiana Law Journal

All creativity and innovation build on existing ideas. Authors and inventors copy, adapt, improve, interpret, and refine the ideas that have come before them. The central task of intellectual property (IP) law is regulating this sequential innovation to ensure that initial creators and subsequent creators receive the appropriate sets of incentives. Although many scholars have applied the tools of economic analysis to consider whether IP law is successful in encouraging cumulative innovation, that work has rested on a set of untested assumptions about creators’ behavior. This Article reports four novel creativity experiments that begin to test those assumptions. In particular, …

Dispute Resolution Tools In Patent Infringement Cases: Aoki V. Gilbert, No. 2:11-Cv02787-Tln-Cnd, 2015 Wl 5734626 (E.D. Cal. 2015), Brandon Craig

Journal of Dispute Resolution

While arbitration has become a widely accepted alternative to litigation, the role it should play in patent disputes has been widely debated. Issued by the federal government, patents confer a temporary monopoly on the production, use, and sale of new innovations. The government may have an interest in keeping such disputes out of the private realm of arbitration, at least when the dispute is over the validity of the patent. For other patent issues such as licensing, which is essentially a private contract, arbitration may serve as a useful and cost-effective alternative. Even when arbitration is not warranted, other useful …

United States Response To Questionnaire Concerning Applied Arts Under Ip Law: The Uncertain Border Between Beauty And Usefulness, June M. Besek, Robert E. Bishop, Jane C. Ginsburg, Philippa Loengard, Nathalie Russell

Faculty Scholarship

ALAI-USA is the U.S. branch of ALAI (Association Littèraire et Artistique Internationale). ALAI-USA was started in the 1980's by the late Professor Melville B. Nimmer, and was later expanded by Professor John M. Kernochan.

The Unresolved Interpretive Ambiguity Of Patent Claims, Oskar Liivak

Cornell Law Faculty Publications

Claims are at the heart of every major patent related issue. Most importantly, they determine a patent's potent rights of exclusion. Yet, we cannot predict how courts will set the exact boundaries of claims. This renders smooth operation of the patent system near impossible. For some time, scholars have theorized that a basic policy disagreement is a source of this uncertainty. Some judges favor narrower patents, some favor broader and judges will naturally tend toward their policy preference. Policy disagreements result in claim uncertainty. Recently, scholars Tun- Jen Chiang and Lawrence Solum have taken this view further arguing that this …

The Political Economy Of The Research Exemption In American Patent Law, Nicholas Short

Fordham Intellectual Property, Media and Entertainment Law Journal

This Article approaches the research exemption, and related legal developments, as a case study in the political economy of patent law. Part I recounts the history of the research exemption, touching briefly on historical origins but emphasizing developments since the 1970s in legislative, executive, and judicial forums. It also examines changes during the same time frame in related areas of patent law, like the Bayh-Dole legislation and the attempted repeal of state immunity from patent infringement liability. These legal developments indirectly affected the research exemption, or implicated similar concerns about imbalance in the patent system and the use of patents …

Defining The Patent And Copyright Term: Term Limits And The Intellectual Property Clause, Edward C. Walterscheid

Georgia Journal of Law & Technology

No abstract provided.

The Road To Hell Was Paved With A Good Faith Belief: Why The Supreme Court Correctly Rejected The Good Faith Belief In The Invalidity Of A Patent Defense For Dangerously Narrowing Induced Infringement Liability, Sidney C. Eberhart

Georgia Journal of Law & Technology

No abstract provided.

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.

Legal Method Patents And The Rights Of The Public, R. Blake Stone

Georgia Journal of Law & Technology

No abstract provided.

Protecting A Piece Of American Folklore: The Example Of The Gusset, Jo Carrillo

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 …

How Oracle Erred: Functionality, Useful Articles, And The Future Of Computer Copyright, Wendy J. Gordon

Faculty Scholarship

In Oracle v. Google (2015), the Federal Circuit addressed whether the " method header " components of a dominant computer program were uncopyrightable as " merging " with the headers' ideas or function. Google had copied the headers to ease the ability of third-party programmers to interact with Google's Android platform. The court rebuffed the copyrightability challenge; it reasoned that because the plaintiff's expression might have been written in alternative forms, there was no " merger " of idea and expression. But the Oracle court may have been asking the wrong question. In Lotus v. Borland (1995), the owner of …

Taking Patents, Gregory Dolin, Irena D. Manta

Washington and Lee Law Review

The America Invents Act (AIA) was widely hailed as a remedy to the excessive number of patents that the Patent & Trademark Office issued, and especially ones that would later turn out to be invalid. In its efforts to eradicate “patent trolls” and fend off other ills, however, the AIA introduced serious constitutional problems that this Article brings to the fore. We argue that the AIA’s new “second-look” mechanisms in the form of Inter Partes Review (IPR) and Covered Business Method Review (CBMR) have greatly altered the scope of vested patent rights by modifying the boundaries of existing patents. The …

Minority Report: Real Patent Reform, Maybe Later - The America Invents Act And The Quasi-Recodification Solution, Thomas C. Folsom

Akron Intellectual Property Journal

This Article has three parts. In Part One, I describe what Congress claims to have done, then what the Act actually has done, and therefore what is the most that can be hoped to come from it. In considering what Congress has done, I briefly outline the theoretical basis of the new hybrid system, neither first-to-invent nor first-to-file, but rather a "first to declare" system with a one-year grace period that is both a shield and a sword to the declarant. More importantly, Congress has indicated it believes the new system is compatible with the Constitutional grant, and I suggest …

The Imperfect State Of Patent Perfection, Yongae Jun

Akron Intellectual Property Journal

The state of the law regarding perfection of security interests in patents is uncertain. Attorneys advise their clients to record with both the state and the federal registration systems in order to perfect their security interests. Moreover, the Supreme Court missed its opportunity to clarify the ambiguity when it denied certiorari to Cybernetic Services. This comment will attempt to make sense of this area of the law and formulate an opinion as to what the law should be. Part II of this comment will interpret Section 261 through textual analysis, canons of construction, and legislative history. Part III will explore …

The Supreme Court And The Federal Circuit: A Case Of Supervision By Generalists, Jay Dratler Jr.

Akron Intellectual Property Journal

Many of the "general rules" that the Federal Circuit developed in its effort to simplify patent law turned out to be too crabbed and formalistic to do the job that Jefferson intended. As a result, the Supreme Court has had to step in. In virtually every case where it has done so, the High Court has rejected a narrow, formulaic rule proposed by the Federal Circuit and opted for something more general and flexible.

This paper analyzes some key cases of that sort. In the process, it attempts to answer the question "why"? Why did a specialized court fail to …

Recent Developments In Patent Law, Kristen Jakobsen Osenga

Akron Intellectual Property Journal

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 BPAI) 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 2009.2 This brief write-up summarizes many (but by no means all) of the important …

Phillips V. Awh Corporation: Asking Questions, But Refusing To Hear The Answer - A Critical Analysis Of The Court Of Appeals For The Federal Circuit's Recent Decision Regarding The Use Of Dictionaries And The Standard Of Review In Claim Construction, Christopher A. Jethrow

Akron Intellectual Property Journal

This note begins in Section II by summarizing the history of the patent system and introducing two of the main issues raised in Phillips v. AWH Corp. Section III gives the history of Phillips v. AWH Corp. and how it has progressed through the legal system. Section IV analyzes the two main issues raised in Phillips and the impact of the decision. Finally, Section V concludes with closing remarks for the future of patent law in the United States.