Intellectual Property Law Commons^™

Ksr V. Teleflex: Predictable Reform Of Patent Substance And Procedure In The Judiciary, John F. Duffy

Michigan Law Review First Impressions

Though KSR International Co. v. Teleflex, Inc. is now widely acknowl-edged in the bar and the academy to be the most significant patent case in at least a quarter century, that view dramatically underestimates the impor-tance of the decision. The KSR decision has immense significance not merely because it rejected the standard of patentability that had been applied in the lower courts for decades, but also because it highlights many separate trends that are reshaping the patent system. This Commentary will touch upon four such trends that are clearly evi-dent in KSR. First, the case was a predictable continuation of …

Ksr's Effect On Patent Law, Stephen G. Kunin, Andrew K. Beverina

Michigan Law Review First Impressions

The Supreme Court in KSR International Co. v. Teleflex Inc. clarified its 1966 decision in Graham v. John Deere, avoiding the sea change to a synergy- based standard that many had expected—and perhaps feared. KSR has raised the bar set in Graham for seeking patent protection—by providing a flexible test for obviousness—while simultaneously making it easier for accused infringers to defend themselves. Moreover, KSR will change the strategies of both patent prosecutors and litigators. Before KSR, the Supreme Court’s last major decision on nonobviousness under 35 U.S.C. § 103 was Graham, in which the Court established three factual inquiries for …

Now That The Courts Have Beaten Congress To The Punch, Why Is Congress Still Punching The Patent System?, Robert A. Armitage

Michigan Law Review First Impressions

The U.S. House of Representatives began September by passing the Patent Reform Act of 2007. This bill, if enacted, would make major changes to U.S. patent law. Given the universally recognized need for improvements to the U.S. patent system, passing a patent reform bill in the House should have been easy. It was not. The Patent Reform Act of 2007 made it through the House only after a spirited debate. There were a host of complaints by House members that the bill was not ready for floor action. In the end, it passed the House by a relatively narrow margin, …

Making Sense Of Ksr And Other Recent Patent Cases, Harold C. Wegner

Michigan Law Review First Impressions

The recent Supreme Court review of KSR International Inc. v. Teleflex Inc., eBay Inc. v. MercExchange LLC, and Microsoft Corp. v. AT&T Corp. manifests the Court’s current interest in the patent jurisprudence of the Fed-eral Circuit. Now it is evident that the Court has a level of concern sufficient to guarantee the possibility of grant of certiorari—whereas formerly a case could rarely generate sufficient interest for review. For long-range impor-tance in patent law, KSR stands alone as the single most important Supreme Court patent decision on the bread and butter standard of “obviousness” in the more than forty years since …

The Role Of The Fda In Innovation Policy, Rebecca S. Eisenberg

Michigan Telecommunications & Technology Law Review

This Article reexamines the role of FDA regulation in motivating investment in biopharmaceutical innovation. I begin by challenging the standard story that it is the patent system that makes drug development profitable, and drug regulation that makes it costly, by showing how patents add to costs and how drug regulation works in tandem with patents to protect profits. I then compare FDA-administered exclusive rights to patents as a means of fortifying drug development incentives, suggesting ways that FDA-administered rights might be preferable both from the perspective of policy makers and from the perspective of firms. In the remainder of the …

Patents And Diversity In Innovation, Brian Kahin

Michigan Telecommunications & Technology Law Review

Over the past quarter-century, the patent system has expanded in scope and significance, claiming a central position in a U.S. economy increasingly based on knowledge and intangible assets. This historic expansion has come at the cost of controversy and, within the past five years, growing public scrutiny from outside the system--from the press, business, Congress, and finally the Supreme Court. However, proposed reforms are marked by deepening divisions between sectors of the economy. The information technology (IT) and services industries favor strong reforms while pharmaceutical and biotech industries, as well as the patent bar, favor modest, incremental reforms. This yawning …

The Myth Of Inherent And Inevitable Industry Differences: Diversity As Artifact In The Quest For Patent Reforms, Robert A. Armitage

Michigan Telecommunications & Technology Law Review

The University of Michigan Law School hosted a two-day conference entitled "Patents and Diversity in Innovation." The morning of the first day featured a panel devoted to "industry differences." This panel took up the task of dealing with the following questions: How has diversification of innovation and the expansion of patentable subject matter affected patent practice? How do markets for technology vary from sector to sector? And how do they reflect or influence patent practice? To what extent are business practices and competitive markets shaped by the nature of the technology, product, or service?[...] A conference titled "Patents and Diversity" …

Patent Injunctions And The Problem Of Uniformity Cost, Michael W. Carroll

Michigan Telecommunications & Technology Law Review

In eBay v. MercExchange, the Supreme Court correctly rejected the Federal Circuit's general rule requiring that a permanent injunction follow from a finding that a patent is valid and infringed. Recognizing that one size does not fit all in patent law, the Court returned traditional equitable discretion to the district courts. With this discretion, district courts can now deploy remedies for patent infringement that are sensitive to relevant differences among industries, technologies, and entities. This Essay sets the Court's rejection of a uniform remedial regime in a larger context concerning the role of uniformity in patent law. It then explores …

Diversifying Without Discriminating: Complying With The Mandates Of The Trips Agreement, Graeme B. Dinwoodie, Rochelle C. Dreyfuss

Michigan Telecommunications & Technology Law Review

Since the Patent Act was revised in 1952, patent law has expanded to cover an array of novel endeavors--new fields of technology (notably computer science and business methods) as well as the activities of researchers engaged in fundamental scientific discovery. These changes have been accompanied by shifts in the organizational structure of the technological community, with smaller firms and universities emerging as important players in the patent system, and by new marketplace expectations arising from consumer demand for interoperable technology and converging functionality. As a result of these developments, structural flaws in the legal order have become evident. Although the …

A Method For Reforming The Patent System, Peter S. Menell

Michigan Telecommunications & Technology Law Review

The principal recent studies of patent reform (NAS (2004), FTC (2003), Jaffe and Lerner (2004)) contend that a uniform system of patent protection must (or should) be available for "anything under the sun made by man" based upon one or more of the following premises: (1) the Patent Act requires this breadth and uniformity of treatment; (2) "discriminating" against any particular field of "technology" would be undesirable; (3) discrimination among technologies would present insurmountable boundary problems and could easily be circumvented through clever patent drafting; and (4) interest group politics stand in the way of excluding any subject matter classes …

Restoring The Genetic Commons: A Common Sense Approach To Biotechnology Patents In The Wake Of Ksr V. Teleflex , Anna Bartow Laakmann

Michigan Telecommunications & Technology Law Review

In this Article, I argue that a new approach to biotechnology patenting is necessary to fully realize the tremendous potential of recent advances in our understanding of the human genome. Part I places the gene patenting debate in context by highlighting the key landmarks that have shaped the biotechnology industry and outlining the products and stakeholders that comprise the industry. Part II describes the current state of the law on biotechnology patents, summarizing the Federal Circuit's application of the various doctrines that collectively define the patent landscape's parameters. In this Part, I explain how the Federal Circuit's jurisprudence is tied …

The Patent End Game: Evaluating Generic Entry Into A Blockbuster Pharmaceutical Market In The Absence Of Fda Incentives, Jeremiah Helm

Michigan Telecommunications & Technology Law Review

Generic drugs play an important role in the American system of health care. Most anticipate that the entry of these drugs into the market will lower prices and thereby increase treatment options for consumers. To stimulate generic entry, the Food and Drug Administration currently offers a period of marketing exclusivity to the first firm that gains approval for a generic version of a branded drug. During this 180-day period, only two firms can sell versions of the drug: the original, branded drug maker and the first approved generic firm. After the period of exclusivity expires, other generic firms are free …

Patently Wrong: The U.S. Supreme Court Punts In The Case Of Labcorp V. Metabolite, John G. New

Vanderbilt Journal of Entertainment & Technology Law

In June 2006, after having granted certiorari and hearing oral arguments, the United States Supreme Court dismissed the case of Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc. as having been improvidently granted a writ of certiorari. Dissenting from this extraordinary step was Justice Breyer, joined by Justices Stevens and Souter. At issue in the case was a patent, the owners of which claimed that a physician's use of any test to infer vitamin deficiency by raised blood serum levels of the chemical homocysteine infringed the patent. This Article argues that the Supreme Court was itself improvident in dismissing …

Harmonization Through Condemnation: Is New London The Key To World Patent Harmony?, Max S. Oppenheimer

Vanderbilt Journal of Transnational Law

Since 1790, when two U.S. patent applicants have claimed the same invention, the patent has been awarded to the first inventor. Today, the United States stands alone in the industrialized world, and many argue that the United States should, in the interest of world patent harmony, change its system so as to award a contested patent to the first applicant. Of the arguments advanced to justify the change, the only ones that withstand scrutiny are that "all the other countries are doing it" and the hope that some concessions in other aspects of intellectual property or trade might be obtained …

The Supreme Court And The Federal Circuit: Visitation And Custody Of Patent Law, Rebecca S. Eisenberg

Articles

The U.S. Supreme Court’s relationship to patent law sometimes seems like that of a non-custodial parent who spends an occasional weekend with the kids. The custodial parent is, of course, the U.S. Court of Appeals for the Federal Circuit. The Federal Courts Improvement Act of 1982 consolidated intermediate appellate jurisdiction over patent law cases in this single court, which hears appeals from the U.S. Patent and Trademark Office (“PTO”), the U.S. District Courts, the U.S. Court of Federal Claims, and the U.S. In-ternational Trade Commission. Day to day it is the Federal Circuit that reviews contested decisions of the institutions …

Why Pharmaceutical Firms Support Patent Trolls: The Disparate Impact Of Ebay V. Mercexchange On Innovation, Jeremiah S. Helm

Michigan Telecommunications & Technology Law Review

Before the unanimous decision in eBay v. MercExchange, patent holders were almost always granted an injunction against an infringer. In fact, the Federal Circuit, in deciding eBay, noted that, upon a finding of infringement, an injunction would issue unless there were extraordinary circumstances. The Court, in a brief opinion, disagreed with the Federal Circuit and explained that the injunction issue in a patent case must be analyzed under the traditional four-factor test.[...] Is the four-factor test fairer or better than the Federal Circuit's near-automatic injunction rule? It is certainly more difficult to administer a factor test as compared to a …

Trips: With A Painful Birth, Uncertain Health, And A Host Of Issues In China, Where Lies Its Future, Allan Segal

San Diego International Law Journal

In recent decades, the United States and other western nations have used pragmatic and theoretical reasons to justify a strong, global intellectual property ("IP") regime. From a practical perspective, economically mature nations clearly have a direct, vested interest in preventing the piracy of patented goods and ensuring that their domestic agendas maximize financial protection for inventions or creations. Nevertheless, the supranational disregard of patent protection and IP piracy has a financial impact on numerous companies, as well as the taxpaying citizens, in developed countries. These disparate foundations for basic IP rights result in a haphazard theoretical grounding to the Agreement …

The Federal Circuit And The Supreme Court, Arthur J. Gajarsa, Lawrence P. Cogswell

American University Law Review

No abstract provided.

Patent Law Decisions Of The Federal Circuit, Sasha Mayergoyz, Michael F. Harte, David Mckone, Amanda J. Hollis, Peter Moore, Jennifer L. Travers

American University Law Review

No abstract provided.

Biopiracy And Beyond: A Consideration Of Socio-Cultural Conflicts With Global Patent Policies, Cynthia M. Ho

University of Michigan Journal of Law Reform

This Article provides afresh and multi-dimensioned approach to a long-standing claim of biopiracy patents made by developing countries and communities. The basic principles of patent law and policy are first established to provide a foundation from which to evaluate the claim that genetic resources and traditional knowledge from developing countries are being misappropriated in a variety of ways that are loosely referred to as biopiracy. The Article distinguishes rhetoric from reality in examining biopiracy allegations from the perspective of national patent laws, as well as international agreements. In addition, the Article explains the underlying conflicts, misconceptions, and historical biases that …

Patent Drafter Estoppel: Why Didn't Sage Products Create A New Foreseeability Limitation On The Application Of The Doctrine Of Equivalents?, Christopher M. Kaiser

ExpressO

This article reviews the 1997 Federal Circuit Case of Sage Products v. Devon and the case law that has followed it. There is some belief among patent practitioners that Sage Products created a new legal doctrine limiting the application of the doctrine of equivalents in patent infringement cases. The new doctrine, sometimes referred to as “patent drafter estoppel,” would bar the application of the doctrine of equivalents any time an accused equivalent structure should have been foreseen by a reasonable patentee. Federal Circuit case law since Sage Products has diverged into two lines of thought: one that supports the thinking …

The Doctrine Of Equivalents: Becoming A Derelict On The Waters Of Patent Law, Charles Adams

Articles, Chapters in Books and Other Contributions to Scholarly Works

The doctrine of equivalents expands the scope of patent protection in some circumstances to cover variations of the invention that are not within the literal terms of the claims. While there is no statutory basis for the doctrine of equivalents, and it has been characterized as an anomaly, the Supreme Court has repeatedly reaffirmed the doctrine over the past 150 years. Although the Supreme Court and the lower federal courts continue to recognize the doctrine of equivalents, they have not clearly defined the circumstances in which it is available, nor demarcated the extent to which it expands the scope of …

The Experimental Use Exception To Patent Infringement: Do Universities Deserve Special Treatment?, Elizabeth A. Rowe

UF Law Faculty Publications

The experimental use exception is a common law exception to the patent-holder's exclusive right of use. It permits the use of another's patented device when such use is for philosophical inquiry, curiosity, or amusement. It has recently come under attack by many who consider it too narrow. They fear that the courts' "narrowing" of the experimental use exception will stifle research and innovation. Much of the discontent with the doctrine has been spurred by a relatively recent Federal Circuit opinion, Madey v. Duke University, which makes clear that a research university does not receive immunity under the experimental use …

Rules V. Standards For Patent Law In The Plant Sciences, Mark D. Janis

Articles by Maurer Faculty

This article argues that US patent jurisprudence as applied to the plant sciences is moving to a second stage that will be characterized by more by incremental calibration than by spectacular change. The article discusses two doctrines of patent scope that are likely to be implicated in calibrating the utility patent system for the plant sciences: enablement and experimental use. It considers how those doctrines may be refined to serve as calibration tools in the application of patent law to the plant sciences.

Tax Strategies Are Not Patentable Inventions, Andrew A. Schwartz

Publications

No abstract provided.

Harnessing And Sharing The Benefits Of State-Sponsored Research: Intellectual Property Rights And Data Sharing In California's Stem Cell Initiative, Rebecca S. Eisenberg, Arti K. Rai

Articles

This Article discusses data sharing in California's stem cell initiative against the background of other data sharing efforts and in light of the competing interests that CIRM is directed to balance. We begin by considering how IP law affects data sharing. We then assess the strategic considerations that guide the IP and data policies and strategies of federal, state, and private research sponsors. With this background, we discuss four specific sets of issues that public sponsors of data-rich research, including CIRM, are likely to confront: (1) how to motivate researchers to contribute data; (2) who should have access to the …

Patent Donations And Tax Policy, Xuan-Thao Nguyen, Jeffrey A. Maine

Faculty Publications

To achieve the policy goals of ultimate innovation, the government should provide incentives to encourage the patentees to donate, rather than abandon, their "orphan" patents to universities, hospitals, and other nonprofit organizations with research and development facilities that can properly exploit the patents. The authors advocate for the implementation of incentives that would encourage donors to surrender their monopolistic ownership of patents for the benefit of charitable organizations and, in tum, the development and growth of society.

Introduction: Special Project - Current Issues In Intellectual Property, W. Russell Taber

Vanderbilt Law Review

A single legal concept has produced some of the greatest achievements of the human mind: intellectual property. Thousands of years ago, Aristotle denounced the then novel notion of rewarding those who create inventions beneficial to the state. History has been kind to Aristotle, but not because of his insights on intellectual property. The Venetian Senate's passage of the 1474 Act marked the beginning of systematic patent protection on European soil. Along with blown glassware, Venice later exported its penchant for patent protection to the rest of Europe, including Great Britain by the mid- sixteenth century. During the same era, the …

Protecting The Frontiers Of Biotechnology Beyond The Genome: The Limits Of Patent Law In The Face Of The Proteomics Revolution, J. Jason Williams

Vanderbilt Law Review

Scientific knowledge and invention rapidly accelerated in the past few decades, resulting in an untold number of broken barriers and realized benefits. In 2001, scientists announced that the human genome, consisting of 30,000 to 40,000 genes, had been fully characterized. Arguably one of the most important scientific breakthroughs in history, this accomplishment came far sooner than anyone could have anticipated. Fueled by the enormous marketing potential in finding causes and cures for many diseases, the biotechnology industry invested heavily in the project with the hope of maximizing control of genetic intellectual property and its potential downstream value.

While the genomic …

Special Project: Current Issues In Intellectual Property, W. Russell Taber

Vanderbilt Law Review

A single legal concept has produced some of the greatest achievements of the human mind: intellectual property. Thousands of years ago, Aristotle denounced the then novel notion of rewarding those who create inventions beneficial to the state. History has been kind to Aristotle, but not because of his insights on intellectual property. The Venetian Senate's passage of the 1474 Act marked the beginning of systematic patent protection on European soil. Along with blown glassware, Venice later exported its penchant for patent protection to the rest of Europe, including Great Britain by the mid- sixteenth century. During the same era, the …