Intellectual Property Law Commons^™

The Return Of The Supreme Court To Patent Law, Timothy R. Holbrook

Akron Intellectual Property Journal

The diverse set of patent-related cases decided by the Supreme Court has demonstrated that the Court is not only concerned with narrow issues that generally fall within the penumbra of constitutional issues. Instead, the recent set of cases selected for certiorari primarily related to the core aspects of patent law. During this unsettled period in patent law, with calls for reform coming from commentators and Congress itself, the Court is beginning to articulate its viewpoints on the appropriate scope of protection afforded by patents. The following section discusses the most recent cases before the Court that either are patent cases …

The Health Impact Fund Proposal: Application In The United States' Era Of Comparative Effectiveness, Katherine Jeanne Racz

Georgia Journal of Law & Technology

No abstract provided.

The American Invents Act And The Best Mode Requirement: Where Do We Go From Here?, Andrew Thomas Robinson

Georgia Journal of Law & Technology

No abstract provided.

Judicial Lobbying, Jonas Anderson

Utah Law Faculty Scholarship

Judges who lobby Congress for legal reform tread into an ethical gray area: lobbying is legally permissible, but generally frowned upon. Currently, there are no legal or ethical constraints on judges speaking publicly regarding proposed legislative changes, only an ill-defined norm against the practice. Scholars have largely dismissed judicial lobbying efforts as the result of haphazard, one-off events, driven by the unique interests, expertise, or ideology of the individual judge involved. According to scholars, there is nothing that should be done — not to mention little that could be done — to restrict judges from lobbying.

Judicial lobbying occurs, in …

Exhausting Patents, Wentong Zheng

UF Law Faculty Publications

A bedrock principle of patent law — patent exhaustion — proclaims that an authorized sale of a patented article exhausts the patentee’s rights with respect to the article sold. Over one hundred and fifty years of case law, however, has produced two conflicting notions of patent exhaustion, one considering exhaustion to be mandatory regardless of whether the patentee subjects the sale to express patent restrictions, and another treating exhaustion as a default rule that applies only in unconditional sales. The uncertainty surrounding the patent exhaustion doctrine casts a significant legal cloud over patent licensing practices in the modern economy and …

Trademark Laundering, Useless Patents, And Other Ip Challenges For The Marijuana Industry, Sam Kamin, Viva R. Moffat University Of Denver College Of Law

Washington and Lee Law Review

No abstract provided.

Exceptions To Prosecution History Estoppel Are Hardly A Dime A Dozen: An Analysis Of The Federal Circuit’S Application Of The Narrow Exceptions To Prosecution History Estoppel Twelve Years After Festo, Rachel C. Hughey, Linhda Nguyen

Cybaris®

No abstract provided.

"Courts Have Twisted Themselves Into Knots": Us Copyright Protection For Applied Art, Jane C. Ginsburg

Faculty Scholarship

In copyright law, the marriage of beauty and utility often proves fraught. Domestic and international law makers have struggled to determine whether, and to what extent, copyright should cover works that are both artistic and functional. The U.S. Copyright Act protects a work of applied art "only if, and only to the extent that, its design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article." While the policy goal to separate the aesthetic from the functional is clear, courts' application of the statutory "separability" …

Beyond Eureka: What Creators Want (Freedom, Credit, And Audiences) And How Intellectual Property Can Better Give It To Them (By Supporting, Sharing, Licensing, And Attribution), Colleen Chien

Michigan Law Review

In the theater of the courtroom or the rough and tumble arena of intellectual property policymaking, the day-to-day lives of creators are rarely presented. We often instead see one-dimensional vignettes, for example, “the new artist or band that has just released their [sic] first single and will not be paid for its success,” described on Taylor Swift’s Tumblr last summer when she initially withdrew from Apple’s music streaming service. While instructive, this description leaves out that Swift and other artists have long relied on “free play” mediums like radio and, more recently, YouTube to develop, not cannibalize, their audiences and …

The Supreme Assimilation Of Patent Law, Peter Lee

Michigan Law Review

Although tensions between universality and exceptionalism apply throughout law, they are particularly pronounced in patent law, a field that deals with highly technical subject matter. This Article explores these tensions by investigating an underappreciated descriptive theory of Supreme Court patent jurisprudence. Significantly extending previous scholarship, it argues that the Court’s recent decisions reflect a project of eliminating “patent exceptionalism” and assimilating patent doctrine to general legal principles (or, more precisely, to what the Court frames as general legal principles). Among other motivations, this trend responds to rather exceptional patent doctrine emanating from the Federal Circuit in areas as varied as …

From Incentive To Commodity To Asset: How International Law Is Reconceptualizing Intellectual Property, Rochelle Dreyfuss, Susy Frankel

Michigan Journal of International Law

The intellectual property landscape is changing. As Jerry Reichman once observed, intellectual property rights were islands in a sea of the public domain until domestic laws expanded to include such “innovations” as business methods, software, scents, and sounds and turned the public domain into a pond surrounded by a continent of rights. Reichman spoke towards the end of the 20th century, and whatever problems accompanied this change, in truth (to paraphrase Voltaire’s view of the Holy Roman Empire), the concept of “intellectual property rights” was predominantly about neither “property” nor “rights” (nor was it always “intellectual”). Rather, copyright, patent, and …

Pay The Troll Toll: The Patent Troll Model Is Fundamentally At Odds With The Patent System's Goal Of Innovation And Competition, Grace Heinecke

Fordham Law Review

    Patent litigation has multiplied sixfold since the 1980s, with the last few years seeing an unprecedented number of patent lawsuits. When an inventor receives a patent, the U.S. Constitution grants him a monopoly for a limited number of years to reward him for his investment of time and resources and to incentivize him to continue innovating, which ultimately benefits society. However, the emergence of a litigious character, deemed the “patent troll,” has led to the patent system’s hindrance of innovation, a result that is at odds with the primary goal of patent law. Patent trolls exploit weaknesses in the patent …

An Administrative Meter Maid: Using Inter Partes Review And Post-Grant Review To Curb Exclusivity Parking Via The "Failure To Market" Provision Of The Hatch-Waxman Act, Brian T. Apel

Michigan Law Review

Congress created the unique Hatch-Waxman framework in 1984 to increase the availability of low-cost generic drugs while preserving patent incentives for new drug development. The Hatch-Waxman Act rewards generic drug companies that successfully challenge a pharmaceutical patent: 180 days of market exclusivity before any other generic firm can enter the market. When a generic firm obtains this reward, sometimes drug developers agree to pay generic firms to delay entering the market. These pay-for-delay agreements give rise to exclusivity parking and run counter to congressional intent by delaying full generic drug competition. The Medicare Prescription Drug, Improvement, and Modernization Act created …

The Uniformed Topograhy Of Patent Scope, Janet Freilich

Faculty Scholarship

Setting and ascertaining patent scope are among the most important questions in patent law. However, we cannot accurately set patent scope. This is because patent scope has a sequence-of- information problem. Patent scope is set at the time that a patent is granted, while the information necessary to set and measure patent scope is not obtained until many years later. In consequence, the scope of any given patent is very likely to contain significant "error," meaning that the scope is broader or narrower than the theoretical ideal (the minimum amount of scope necessary to incentivize innovation). Deviation from the theoretical …

Inventing Patents: A Story Of Legal And Technical Transfer, L. R. Bradford

West Virginia Law Review

No abstract provided.

Patentability Of Micro-Organisms, Diamond V. Chakrabarty, Ann Amer Brennan

Akron Law Review

The decision rendered by the Supreme Court in Diamond v. Chakrabarty allows the new science of biotechnology to come out of the closet and to take its place in the public domain with other scientific achievements that have, for better or for worse, shaped the industrial life of the United States. It is probable that the products which will result from this emerging science will affect each of us in some way during our lifetimes.

Patent Law Reform Via The Federal Courts Improvement Act Of 1982: The Transformation Of Patentability Jurisprudence, Timothy J. O'Hearn

Akron Law Review

The Federal Courts Improvement Act was signed into law on April 2, 1982. Set for an effective date of October 1, 1982, the result of this enactment has been the merger of the Court of Customs and Patent Appeals and the Court of Claims into a new appellate federal court: the Court of Appeals for the Federal Circuit. Unlike most appellate courts, the jurisdiction of the new Federal Circuit is determined primarily by subject matter, rather than geography. As a result, this change in the federal judiciary will be felt directly in only a few special legal subject areas. Among …

Protecting The High-Tech Frontier: The Need For Stronger Process Patent Laws, Bruce Kramer

Akron Law Review

But difficulties exist in transforming technological possibilities into realities. Aside from scientific and engineering problems, legal obstacles stand in the way of technological development. One major legal impediment is the lack of protection afforded by U.S. process patent laws. All too often, foreign companies infringe on process patents obtained by American companies. For example, Sohio developed a process to manufacture ceramic heat seals for turbine engines and obtained a patent on it, but Japanese competitor Kyocera soon entered the market with a similar process." Other major companies which claim their process patents have been violated include Allied-Signal, Corning Glass Works, …

Human Creativity For Economic Development: Patents Propel Technology, Robert M. Sherwood

Akron Law Review

Intellectual property both leads and lags the development of new technology. It lags in the sense that developments usually precede the law. Today science is accelerating so rapidly that the lawyers and policy analysts can barely grasp what the new questions are, much less supply answers. How are we to adapt the historic forms of protection to deal with new things like patents for genetically modified life forms, or for the Internet? Yet, this process of adaptation is not new. There was a time when maps were all the rage in Europe and judges puzzled over how much difference was …

Selecting An Appropriate Damages Expert In A Patent Case; An Examination Of The Current Status Of Daubert, Michael H. King, Steven M. Evans

Akron Law Review

The determination of damages is a critical part of any patent case. As a plaintiff, maximizing awarded damages, whether financial or injunctive, is the ultimate objective of the patent case. As a defendant, minimizing or preventing any awarded damages is the ultimate objective.

Multimillion dollar verdicts in patent cases are now the norm and hundred plus million dollar verdicts are becoming more frequent. A lawyer who fails to devote sufficient time to this critical component of a case does the client a disservice.

There are generally two types of damages in patent cases: lost profits and a reasonable royalty. A …

The Medical Liability Exemption: A Path To Affordable Pharmaceuticals, Carrie E. Rosato

Florida State University Law Review

Patent monopolies are tolerated because we believe they promote progress that benefits society. What should be done when these monopolies actually increase human suffering? Drug prices in America are fifty to eighty percent higher than the rest of the world, meaning many cannot afford drugs that will improve or even save their lives. When striking a balance between the interests of the patent holder and that of the public, it is important to bear in mind that the rewards granted to patentees are secondary to the public benefit derived from their labors. The ideal solution would come from Congress creating …

Beyond Incentives: Expanding The Theoretical Framework For Patent Law Analysis, Ofer Tur-Sinai

Akron Law Review

This Article challenges this one-dimensional approach and calls for a more frequent use of non-utilitarian considerations in discussions of the patent system. To be sure, this Article does not call for the complete abolition of economic analysis of patent law, which, despite its shortcomings, remains the most important tool in the evaluation of legal rules in this arena, where the vast majority of the players are motivated primarily by economic considerations. However, it does call for a broader use of non-economic considerations, particularly those embedded in the labor theory and the personality theory, alongside the economic analysis. As will be …

The X Patents: Patents Issued Under The Patent Acts Of 1790 & 1793, Robert Berry

Librarian Publications

The earliest United States patents— sometimes called “name and date patents” because they were not numbered—are distinctive in many respects. Patent specifications were not required to include claims until the Patent Act of 1870. Moreover, while the 1790 Act required a substantive examination by a Patent Board, that requirement ended with the 1793 Act, when it was deemed too burdensome. Thereafter the evaluation of the sufficiency of patent specifications was left to the courts.

Testimony Before The House Committee On Energy And Commerce, Hearing On Patent Demand Letter Practices And Solutions, Paul Gugliuzza

Faculty Scholarship

A small number of patent holders have been abusing the patent system. These patent holders blanket the country with thousands of letters demanding that the recipients purchase a license for a few thousand dollars or else face an infringement suit. The letters are usually sent to small businesses and nonprofits that do not have the resources to investigate allegations of patent infringement. And the letters often contain false or misleading statements designed to scare the recipient into purchasing a license without investigating the claims of infringement. In an attempt to address this problem, eighteen states have recently passed statutes that, …

Forcing Patent Claims, Tun-Jen Chiang

Michigan Law Review

An enormous literature has criticized patent claims for being ambiguous. In this Article, I explain that this literature misunderstands the real problem: the fundamental concern is not that patent claims are ambiguous but that they are drafted by patentees with self-serving incentives to write claims in an overbroad manner. No one has asked why the patent system gives self-interested patentees the leading role in delineating the scope of their own patents. This Article makes two contributions to the literature. First, it explicitly frames the problem with patent claims as one of patentee self-interest rather than the intrinsic ambiguity of claim …

A Framework For Patent Exhaustion From Foreign Sales, Jay A. Erstling, Frederik W. Struve

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

Should All Drugs Be Patentable?: A Comparative Perspective, Cynthia M. Ho

Vanderbilt Journal of Entertainment & Technology Law

Although there has been substantial discussion of the proper scope of patentable subject matter in recent years, drugs have been overlooked. This Article begins to address that gap with a comparative perspective. In particular, this Article considers what is permissible under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), as well as how India and Canada have utilized TRIPS flexibilities in different ways to properly reward developers of valuable new drugs, while also considering the social harm of higher prices beyond an initial patent term on drugs.

This Article brings valuable insight into this area at a critical …

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 …

Court Competition For Patent Cases, Jonas Anderson

Utah Law Faculty Scholarship

The traditional academic explanation for forum shopping is simple: litigants prefer to file cases in courts that offer some substantial advantage — either legal or procedural — over all other courts. But the traditional explanation fails to account for competition for litigants among courts. This Article suggests that forum shopping in patent law is driven in part by the creation of procedural and administrative distinctions among courts that are designed to attract, or in some cases to repel, patent litigants.

This Article makes two primary contributions to the literature, one theoretical and one normative. First, it theorizes that judicial competition …

Specialized Standards Of Review, Jonas Anderson

Utah Law Faculty Scholarship

The applicable standard of review on appeal is governed by a simple rule: appellate courts review questions of law de novo, questions of fact for “clear error,” and questions of discretion for “abuse of discretion.” Despite the apparent simplicity of the rule, its application has been uneven, to state it mildly. Scholars have written extensively about the application of the rule, but have yet to consider whether the traditional rule of “deference” should be altered when the appellate court is a specialized court.

Despite the dearth of legal scholarship on specialized deference, the Supreme Court is keenly interested in the …