Intellectual Property Law Commons^™

Eviscerating Patent Scope, Shahrokh Falati

Articles & Chapters

The scope of patent claims directed to inventions in the field of pharmaceuticals and biotechnology has been stumped by the Court of Appeals for the Federal Circuit’s recent jurisprudence on 35 U.S.C. § 112. Specifically, the application of a heightened test for enablement of claims to a genus of compounds with functional limitations or a genus of therapeutic antibodies, coupled with an increasingly broader application of the written description doctrine, has resulted in considerable uncertainty in the biopharmaceutical industry. The Federal Circuit’s shift in interpreting 35 U.S.C. § 112 contravenes the statute and Supreme Court precedent by splitting the singular …

A Compulsory Solution To The Machine Problem, Cole G. Merritt

Vanderbilt Law School Faculty Publications

Artificial Intelligence (AI) is already disrupting and will likely continue to disrupt many industries. Despite the role AI already plays, AI systems are becoming increasingly powerful. Ultimately, these systems may become a powerful tool that can lead to the discovery of important inventions or significantly reduce the time required to discover these inventions. Even now, AI systems are independently inventing. However, the resulting AI-generated inventions are unable to receive patent protection under current US patent law. This unpatentability may lead to inefficient results and ineffectively serves the goals of patent law.

To embrace the development and power of AI, Congress …

Intellectual Property, Independent Creation, And The Lockean Commons, Mala Chatterjee

Faculty Scholarship

Copyrights and patents are differently structured intellectual property rights in different kinds of entities. Nonetheless, they are widely regarded by U.S. scholars as having the same theoretical underpinnings. Though scholars have sought to connect philosophical theories of property to intellectual property, with a particular interest in the labor theory of John Locke, these explorations have not sufficiently probed copyrights’ and patents’ doctrinal differences or their philosophical implications for the theories explored. This Article argues that a defining difference between copyrights and patents has normative significance for the framework of Lockean property theory: namely, that copyright law treats independent creation as …

Trick Or Treat? How A U.S. Patent Over A Method For Processing Sugarcane Wrongly Alarmed The Colombian Panela Industry, Carter Ostrowski

University of Cincinnati Law Review

No abstract provided.

Breaking The Status Quo Of International Design Law: How The United States' Design Law Frustrates The Purpose Of The Hague Agreement, Nicholas P. Mack

Vanderbilt Journal of Transnational Law

This Note explores how the United States' substantive law frustrates the purpose of an international procedural agreement. The Hague Agreement Concerning the International Registration of Industrial Designs revolutionized the process of applying for industrial design protections on a global scale. The Hague Agreement's purpose is to support easily and efficiently acquired industrial design protections in contracting parties to the agreement by simplifying procedures for obtaining protection. The United States-a country without a coherent and dedicated industrial design law-joined this agreement with effect in 2015, allowing designers around the world to easily apply for industrial design protections in the United States. …

A Typology Of Disclosure, Sharon K. Sandeen

Akron Law Review

Information and data have always been valuable to businesses, but in the Information Age, as businesses have figured out more ways to commoditize the information and data they possess, there has been a corresponding increase in expressed concerns about the unauthorized “disclosure” of information. Often, these concerns are expressed in absolute terms, as if any unauthorized disclosure of information constitutes an act of unfair competition or theft. The problem is that the common understanding of disclosure, particularly among information owners that seek to restrict access to the information they possess, belies the legal meaning of the term as used in …

After The Trolls: Patent Litigation As Ex Post Market-Making, Robert Merges

Akron Law Review

Patent policy has been dominated lately by efforts to reduce rent-seeking patent troll litigation. As recent reforms begin to take effect, it is timely to consider the more constructive aspects of patent litigation. This Article contends that the lag between product development and patent litigation, which pushes the problem of patent valuation into the ex post (after product development) period, serves just such a positive function. Re-search, development, and product roll-out can all take place first. Then, at a later stage, patent litigation sorts out the relative merits and contributions of the various inventors and competitors who contributed to the …

The Death Of The Genus Claim, Sean B. Seymore, Dimitry Karshted, Mark A. Lemley

Vanderbilt Law School Faculty Publications

The central feature of patent law in the chemical, biotechnology, and pharmaceutical industries is the genus claim a patent claim that covers not just one specific chemical but a group of related chemicals. Genus claims are everywhere, and any patent lawyer will tell you they are critical to effective patent protection. But as we show in this Article, the law has changed dramatically in the last thirty years, to the point where it is nearly impossible to maintain a valid genus claim. Courts almost always hold them invalid, either at trial or on appeal. Remarkably, courts do this without acknowledging …

Ruth Bader Ginsburg's Intellectual Property Jurisprudence, Ryan Vacca, Ann Bartow

Faculty Publications

On September 18, 2020, the world lost an irreplaceable leader. Justice Ruth Bader Ginsburg, after many years of battling cancer, had passed away. Although she will primarily be remembered for her work on gender equality—as both advocate and jurist—Justice Ginsburg signiicantly impacted other areas of the law. One such area is intellectual property. During her time on the U.S. Supreme Court, she authored 20 opinions in these areas—11 copyright, seven patent, and two trademark—and joined the opinions of her colleagues in many others.

Protecting Patent Owners From Infringement By The States: Will The Intellectual Property Rights Restoration Act Of 1999 Finally Satisfy The Court?, Brandon White

Akron Law Review

The Intellectual Property Rights Restoration Act of 1999 (IPRRA), a Senate Bill currently making its way through Congress, seeks to provide a remedy for patent infringement by the states that Supreme Court will find constitutional. In this Comment, Part II will explore the history of state sovereign immunity under both the Eleventh Amendment and the common law. Part III examines Senate Bill 1835, also known as the Intellectual Property Rights Restoration Act of 1999. Part III looks at not only the substantive provisions of the IPRRA, but also at the legal arguments and policy concerns that support the Act. Part …

Enabling Science Fiction, Camilla A. Hrdy, Daniel H. Brean

Michigan Technology Law Review

Patent law promotes innovation by giving inventors 20-year-long exclusive rights to their inventions. To be patented, however, an invention must be “enabled,” meaning the inventor must describe it in enough detail to teach others how to make and use the invention at the time the patent is filed. When inventions are not enabled, like a perpetual motion machine or a time travel device, they are derided as “mere science fiction”—products of the human mind, or the daydreams of armchair scientists, that are not suitable for the patent system.

This Article argues that, in fact, the literary genre of science fiction …

Ignoring Information Quality, Janet Freilich

Faculty Scholarship

Entry into the patent system is guarded by an examination process to screen out applications that impose undue costs on the public without commensurate benefit. To do this, patent examiners rely heavily on various pieces of information-both provided by the patent applicant and independently discovered by the examiner-to assess whether an application should be granted. This Article shows that there are few mechanisms at the U.S. Patent and Trademark Office for questioning the veracity of this information, even though it may be incorrect. Rather, patent examination often assumes that existence of information equals accuracy of information. Consequently, examiners may rely …

Can There Be Too Much Specialization? Specialization In Specialized Courts, Melissa F. Wasserman, Jonathan D. Slack

Northwestern University Law Review

While modern society has embraced specialization, the federal judiciary continues to prize the generalist jurist. This disconnect is at the core of the growing debate on the optimal level of specialization in the judiciary. To date, this discussion has largely revolved around the creation of specialized courts. Opinion specialization, however, provides an alternative, underappreciated method to infuse specialization into the judiciary. In contrast to specialized courts, opinion specialization is understudied and undertheorized.

This Article makes two contributions to the literature. First, this Article theorizes whether opinion specialization is a desirable practice. It argues that the practice’s costs and benefits are …

The Library Of Babel For Prior Art: Using Artificial Intelligence To Mass Produce Prior Art In Patent Law, Lucas R. Yordy

Vanderbilt Law Review

Artificial intelligence is playing an increasingly important role in the invention and innovation processes of our society. To date, though, much of the academic discussion on the interaction of artificial intelligence and the patent system focuses on the patentability of inventions produced by artificial intelligence. Little attention has been paid to organizations that are seeking to use artificial intelligence to defeat the patentability of otherwise patent-worthy inventions by mass producing prior art. This Note seeks to highlight the consequences of allowing mass-produced, AI-generated prior art to render valuable inventions unpatentable. Specifically, this Note concludes that AI-generated prior art decreases the …

Statutory And Constitutional Problems With Judicially-Imposed Patent-Claim Limitations, Sloane Kyrazis

Georgia Journal of Law & Technology

The safety valve standard articulated in In re Katz Interactive Call Processing Litigation is at odds with the provisions of the U.S. Patent Act and violates constitutional due process. Without requisite constitutional protections and those protections guaranteed by the U.S. Patent Act, patentees in complex modern patent litigation are at risk of having their patent rights deprived from contrary to the congressional intent articulated in the statute and without requisite process. The courts must balance their need for efficient administration of the law in patent cases by implementing equitable measures to ensure that patentees’ rights are not trampled on. Additionally, …

Evidence-Based Patent Damages, Taorui Guan

Georgia Journal of Law & Technology

No abstract provided.

Reconstructing Patent Eligibility, Talha Syed

American University Law Review

Patent law’s doctrine of ineligible subject matter is widely agreed to be in a bad state of repair. Even those welcoming the Supreme Court’s return to express subject-matter bars have been left disoriented by the Court’s pronouncements in this area. Which subject matter is ineligible, why it is ineligible, and how it might become eligible have all remained enshrouded in mystery.

The nub of the problem, this Article contends, is two-fold. First, from its nineteenth-century origins to the present, courts grappling with ineligibility doctrine have remained in the grip of a series of “physicalist” misconceptions of the object of patent …

Federal Judge Seeks Patent Cases, Jonas Anderson, Paul R. Gugliuzza

Utah Law Faculty Scholarship

Imagine the following advertisement popping up on Craigslist: "FEDERAL JUDGE SEEKS PATENT CASES! (Waco) — Former patent litigator, recently appointed to the U.S. District Court for the Western District of Texas, longs for the intellectual challenge of a good patent fight. Can promise special procedural rules, efficient discovery, and speedy trials. Dismissal, stay, or transfer of case extremely unlikely. File in Waco and get the patent court you've always dreamed of!"

That probably seems bizarre. Still, and startlingly, it accurately portrays what’s happening in the Waco Division of the U.S. District Court for the Western District of Texas. One judge, …

The Trade Secrecy Standard For Patent Prior Art, Camilla A. Hrdy, Sharon K. Sandeen

American University Law Review

A fundamental criterion of patentability is that an invention must be new as compared to the prior art—the corpus of preexisting knowledge and technology already available to the public. If an invention is in the prior art, or rendered obvious by it, it cannot be patented.

The U.S. Patent Act has traditionally envisioned a categorical approach for deciding what counts as prior art. Under this approach, courts are supposed to decide whether a particular disclosure about the invention (a reference) falls within one of the categories listed in Section 102 of the Patent Act, such as “described in a printed …

Association For Molecular Pathology V. Myriad Genetics: A Critical Reassessment, Jorge L. Contreras

Michigan Technology Law Review

The Supreme Court’s 2013 decision in Association for Molecular Pathology v. Myriad Genetics is an essential piece of the Court’s recent quartet of patent eligibility decisions, which also includes Bilski v. Kappos, Mayo v. Prometheus, and Alice v. CLS Bank. Each of these decisions has significantly shaped the contours of patent eligibility under Section 101 of the Patent Act in ways that have been both applauded and criticized. The Myriad case, however, was significant beyond its impact on Section 101 jurisprudence. It was seen, and litigated, as a case impacting patient rights, access to healthcare, scientific freedom, …

Is There A New Extraterritoriality In Intellectual Property?, Timothy R. Holbrook

Faculty Articles

This Article proceeds as follows. Part I discusses the state of the law of extraterritoriality in copyright, trademark, and patent, as it stood before the Supreme Court’s recent intervention. This review demonstrates that all three disciplines were treating extraterritoriality very differently, and none were paying much attention to the presumption against extraterritoriality. Part II reviews a tetralogy of recent Supreme Court cases, describing the Court’s attempt to formalize its approach to extraterritoriality across all fields of law. Part III analyzes the state of IP law in the aftermath of this tetralogy of extraterritoriality cases. It concludes that there has been …

Intellectual Property Through A Non-Western Lens: Patents In Islamic Law, Tabrez Y. Ebrahim

Faculty Scholarship

The intersection of secular, Western intellectual property law and Islamic law is undertheorized in legal scholarship. Yet the nascent and developing non-Western law of one form of intellectual property—patents—in Islamic legal systems is profoundly important for transformational innovation and economic development initiatives of Muslim-majority countries that comprise nearly one-fifth of the world’s population.

Recent scholarship highlights the tensions of intellectual property in Islamic law because religious considerations in an Islamic society do not fully align with Western notions of patents. As Islamic legal systems have begun to embrace patents in recent decades, theories of patents have presented conceptual and theological …

Equitable Defenses In Patent Law, Christa J. Laser

University of Miami Law Review

In patent law, “unenforceability” can have immense consequences. At least five equitable doctrines make up the defense of “unenforceability” as it was codified into the Patent Act in 1952: laches; estoppel; unclean hands; patent misuse; and according to some, inequitable conduct. Yet in the seventy years since incorporation of equitable defenses into the patent statute, the Supreme Court has not clarified their reach. Indeed, twice in the last four years, the Supreme Court avoided giving complete guidance on the crucial questions of whether, and when, such equitable defenses are available to bar damages in cases brought at law.

Several interpretive …

Unregistered Patents, Miriam Marcowitz-Bitton, Emily Michiko Morris

Washington Law Review

Although all should be treated equally under the law, patent law has long been known to favor some less than others. Patentable technology is highly heterogeneous, covering everything from minute improvements in electronics to pioneering new artificial organs, but patent protection itself is purely a one-size-fits-all system. Patents thus overreward some while underrewarding others. On the one hand, patents overreward low-investment, low-value inventions by granting them the same twenty-year term of protection as those that required much higher investments and yield much higher social value. The resulting glut of low-quality patents has contributed greatly to the “patent crisis” of opportunistic …

Certiorari In Patent Cases, Christa J. Laser

Law Faculty Articles and Essays

In the decade from 2010 to 2019, the Supreme Court has decided more patent law cases than in the prior three decades combined. A higher percentage of its docket has been patent cases--5.45%--than in any decade in the last century. A number of scholars have advanced theories of why this rate of review of patent cases has increased and provided quantitative analyses. Yet no scholarship to date has used qualitative data to investigate why the Supreme Court’s patent docket is increasing and what factors the Supreme Court considers in its review of patent cases. This paper shares statistics of the …

Federal Judge Seeks Patent Cases, Jonas Anderson, Paul Gugliuzza

Working Papers

Imagine the following advertisement popping up on Craigslist: "FEDERAL JUDGE SEEKS PATENT CASES! (Waco) — Former patent litigator, recently appointed to the U.S. District Court for the Western District of Texas, longs for the intellectual challenge of a good patent fight. Can promise special procedural rules, efficient discovery, and speedy trials. Dismissal, stay, or transfer of case extremely unlikely. File in Waco and get the patent court you've always dreamed of!" That probably seems bizarre. Still — and startlingly — it accurately portrays what’s happening right now in the Western District of Texas. One judge, appointed to the court less …

Don't Go Breakin' My (3d Bioprinted) Heart: Dissecting Patentability And Regulation Of 3d Bioprinted Organs, Anna Marie Whitacre

Georgia Journal of Law & Technology

In light of the growing realism of 3D bioprinted organs, legal issues arising from these concerns can easily bleed into our society. This bleeding demands exploration. Should 3D bioprinted organs be regulated as natural organs or as medical devices? Are 3D bioprinted organs patentable? What happens if a 3D bioprinted organ is subject to a successful patent infringement suit? Does the recipient face a Repo Men fate?

The beginning of this note dissects the scientific underpinnings of 3D bioprinted organs. Part II explores statutory authority and controlling, or otherwise persuasive, case law that pertains to subject-matter patentability. Current rights associated …

The Economic Burdens Of Life: Trade Secrecy And The Insulin Pricing Crisis In The United States, Emily Hanson

Georgia Journal of Law & Technology

Approximately one in every ten Americans lives with diabetes, a condition that inhibits the body’s ability to regulate blood sugar. The majority of those with diabetes rely on insulin injections to control the condition and avoid the dire health consequences that can quickly result from insufficient insulin. The price of insulin has risen 700% in the past two decades, with burdensome if not disastrous consequences for individual patients and for public health more generally. Federal law provides a pathway for manufacturers of follow-on pharmaceuticals, including insulin, to obtain abbreviated approval from the FDA without repeating costly clinical trials by showing …

Defective Patent Deference, Tejas N. Narechania

Washington Law Review

The Supreme Court’s implicit deference to the Office of the Solicitor General in patent cases is well-documented: What the Solicitor General requests, the Solicitor General typically receives. But we know far less about how the Solicitor General arrives at these preferred policy positions, or why the Solicitor General comes to advocate for some outcomes over others. This is problematic. In practically every other corner of the administrative state, an agency earns substantial deference to its views only where robust procedural protections attend to the policymaking process, where the agency’s outcome reflects its substantive expertise, and where the agency may, through …

‘Substantial Portion’ Of A Patent: Quantitative Or Qualitative?, Matthew Rollin

Journal of the National Association of Administrative Law Judiciary

This Article examines the U.S. Supreme Court’s holding in Life Technologies Corp., where the Court issued another requirement for patent infringement. Part II of this Article examines the text of the Patent Act and the history behind it. Part III further discusses the facts of Life Technologies Corp., to give more relevant background facts and history. Part IV focuses on the prior opinions of the case, including the district court’s ruling, appellate court’s decision, and the Supreme Court’s decision. Part V examines and concludes with the legal significance of Life Technologies Corp., the impact that it will have on future …