Intellectual Property Law Commons^™

Implied Obviousness: Reevaluating The Jury's Role In Nonobviousness After Kinetic Concepts, Michael A. Silliman

Vanderbilt Journal of Entertainment & Technology Law

Nonobviousness is a central patentability requirement, requiring that a person with ordinary skill would not have found the patented subject matter obvious. Due to its flexibility, obviousness is the most commonly litigated requirement. It is thus crucial that the US judicial system determine obviousness uniformly, predictably, and accurately. However, because nonobviousness is a mixed question of law and fact, it is often unclear how much control the judge and jury have over the ultimate conclusion. In Kinetic Concepts v. Smith & Nephew, the United States Court of Appeals for the Federal Circuit increased the jury's role in the obviousness determination, …

Predictability And Nonobviousness In Patent Law After Ksr, Christopher A. Cotropia

Law Faculty Publications

In KSR International Co. v. Teleflex, Inc., the Supreme Court addressed the doctrine of nonobviousness, the ultimate question of patentability, for the first time in thirty years. In mandating a flexible approach to deciding nonobviousness, the KSR opinion introduced two predictability standards for determining nonobviousness. The Court described predictability of use (hereinafter termed "Type I predictability" )-whether the inventor used the prior art in a predictable manner to create the invention-and predictability of the result (hereinafter termed "Type II predictability")-whether the invention produced a predictable result-both as a means for proving obviousness. Although Type I predictability is easily explained as …

Copyright's Topography: An Empirical Study Of Copyright Litigation, Christopher A. Cotropia, James Gibson

Law Faculty Publications

One of the most important ways to measure the impact of copyright law is through empirical examination of actual copyright infringement cases. Yet scholars have universally overlooked this rich source of data. This study fills that gap through a comprehensive empirical analysis of copyright infringement litigation, examining the pleadings, motions, and dockets from more than nine hundred copyright lawsuits filed from 2005 through 2008. The data we collect allow us to examine a wide variety of copyright issues, such as the rate of settlements versus judgments; the incidence of litigation between major media companies, small firms, and individuals; the kinds …

Trademark Law And Consumer Centrality - Part I, James Gibson

Law Faculty Publications

The conventional wisdom provides two traditional justifications for trademark law. The first is the “consumer protection” rationale. If there were no trademark law, an unknown soft drink manufacturer could freely use Coca-Cola’s COKE trademark on its goods. If it did so, consumers would be defrauded; they would buy the unknown’s products thinking that they were Coca-Cola’s. Trademark law prevents this sort of fraud from occurring and thereby protects consumers from fraud.

The second justification is the “producer incentive” rationale. In the preceding COKE example, it is not just the consumer who is happy that fraud has been prevented. Coca-Cola is …

Transformation, Copyright Infringement, And Fair Use, James Gibson

Law Faculty Publications

A small copyright decision out of the U.S. Court of Appeals for the Seventh Circuit last month has gotten a big reaction from copyright experts. The case is Kienitz v. Sconnie Nation, and it involves an entertaining set of facts.

In the 1960s, there was a young University of Wisconsin student named Paul Soglin, who had an anti-authoritarian streak. He led a number of demonstrations on issues ranging from civil rights to the Vietnam War. Indeed, one particular Vietnam protest, in May 1969, led to his arrest for failure to obey a police officer. That same protest became an annual …

The Failed Promise Of User Fees: Empirical Evidence From The United States Patent And Trademark Office, Michael D. Frakes, Melissa F. Wasserman

Faculty Scholarship

In an attempt to shed light on the impact of user-fee financing structures on the behavior of administrative agencies, we explore the relationship between the funding structure of the Patent and Trademark Office (PTO) and its examination practices. We suggest that the PTO’s reliance on prior grantees to subsidize current applicants exposes the Agency to a risk that its obligatory costs will surpass incoming fee collections. When such risks materialize, we hypothesize, and thereafter document, that the PTO will restore financial balance by extending preferential examination treatment—i.e., higher granting propensities and/or shorter wait times—to some technologies over others.

Experimental Tests Of Intellectual Property Laws' Creativity Thresholds, Christopher Buccafusco, Zachary C. Burns, Jeanne C. Fromer, Christopher Jon Sprigman

Faculty Scholarship

No abstract provided.

Declaration On Patent Protection: Regulatory Sovereignty Under Trips, Reto Hilty, Matthias Lamping, Dan L. Burk, Carlos M. Correa, Peter Drahos, N. S. Gopalakrishnan, Henning Große Ruse-Khan, Annette Kur, Geertrui Van Overwalle, Jerome Reichman, Hanns Ullrich

Faculty Scholarship

As a framework regulation for innovation markets, the patent system needs to be tailored to the innovation process, which it is supposed to serve, and to the competitive environment, within which it must operate. In order to ensure an efficient functionality of the patent system as an innovation policy tool, patent rights ought to be defined, justified and continually reconsidered by reference to their socio-economic benefits and costs.

Sovereign states should retain the discretion to adopt a patent system that best suits their technological capabilities as well as their social, cultural and economic needs and priorities, with the proviso that …

Last Sale? Libraries’ Rights In The Digital Age, Jennifer Jenkins

Faculty Scholarship

No abstract provided.

U.S. Executive Branch Patent Policy, Global And Domestic, Arti K. Rai

Faculty Scholarship

No abstract provided.

Diagnostic Patents At The Supreme Court, Arti K. Rai

Faculty Scholarship

No abstract provided.

Compliance Of Canada’S Utility Doctrine With International Minimum Standards Of Patent Protection, Jerome H. Reichman

Faculty Scholarship

This article analyzes the Canadian court case of Eli Lilly v. Novopharm and the "utility" doctrine in Canada, and international standards of patent protection including TRIPS and NAFTA. The ‘‘promise of the patent’’ doctrine in Canada seeks to ensure that firms do not obtain a legal monopoly on the basis of speculative claims about increased utility — especially claims about therapeutic efficacy — that were unsubstantiated at the time of filing. Under this test, some of Eli Lilly’s patented pharmaceutical products have been invalidated retroactively.

The Influence Of The Andean Intellectual Property Regime On Access To Medicines In Latin America, Laurence R. Helfer, Karen J. Alter

Faculty Scholarship

This chapter is a contribution to "Balancing Wealth and Health: Global Administrative Law and the Battle over Intellectual Property and Access to Medicines in Latin America," Rochelle Dreyfuss & César Rodríguez-Garavito, eds. Part I of the chapter explains how the repeated interactions between the Andean Tribunal of Justice (ATJ) and domestic IP agencies in the Andean Community helped to build an effective IP rule of law and to solidify pro-consumer interpretations of regional patent and trademark rules. Part II documents how ATJ judges and agency officials enabled Andean governments to resist pressure from the United States and its pharmaceutical industry …

Using Reasonable Royalties To Value Patented Technology, David 0. Taylor

Georgia Law Review

In the last several years, commentators have expressed serious concerns with the state of the law governing awards of reasonable royalties as damages in patent infringement cases. Given these concerns, the proper assessment of royalties has been a recent, frequent topic for debate among economists and legal scholars. At the same time, all three branches of the federal government have studied ways to improve the law governing reasonable royalties. In this Article, I reframe the ongoing debate by identifying and exploring two basic paradigms for calculating reasonable royalties: valuing patent rights and valuing patented technology. The traditional paradigm, valuing patent …

How Trade Law Changed: Why It Should Change Again, John Linarelli

Scholarly Works

No abstract provided.

Food For Thought: Genetically Modified Seeds As De Facto Standard-Essential Patents, Benjamin M. Cole, Brent J. Horton, Ryan Vacca

University of Colorado Law Review

For several years, courts have improperly calculated damages in cases involving the unlicensed use of genetically modified (GM) seed technology. In particular, when courts determine patent damages based on the hypothetical negotiation method, they err in exaggerating these damages to a point where no rational negotiator would agree. In response, we propose a limited affirmative defense of an implied license due to the patent's status as a de facto standard-essential patent. To be classified as a de facto standard-essential patent, the farmer must prove three elements that reflect the peculiarities of GM seeds used in farming: (1) dominance, (2) impracticability, …

The Marrakesh Treaty For Visually Impaired Persons: Why A Treaty Was Preferable To Soft Law, Margot E. Kaminski, Shlomit Yanisky-Ravid

Publications

This paper addresses the debates leading up to the recently adopted international treaty on copyright exceptions for the visually impaired, the Marrakesh International Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled. This treaty was successfully adopted by the World Intellectual Property Organization (WIPO) in June 2013.

Leading up to the negotiation of this instrument, multiple UN member states pushed for the instrument to be negotiated as soft law instead of a treaty. We argue that making this instrument soft law would have precluded its success. WIPO thus correctly chose to …

Saving The Federal Circuit, Paul Gugliuzza

Faculty Scholarship

In a recent, attention-grabbing speech, the Chief Judge of the Seventh Circuit, Diane Wood, argued that Congress should abolish the Federal Circuit’s exclusive jurisdiction over patent cases. Exclusive jurisdiction, she said, provides too much legal uniformity, which harms the patent system. In this response to Judge Wood’s thoughtful speech, I seek to highlight two important premises underlying her argument, neither of which is indisputably true.

The first premise is that the Federal Circuit actually provides legal uniformity. Judge Wood suggests that, due to the Federal Circuit’s exclusive jurisdiction, patent doctrine is insufficiently “percolated,” meaning that it lacks mechanisms through which …

Patent Law Federalism, Paul Gugliuzza

Faculty Scholarship

Most lawsuits arising under federal law can be filed in either state or federal court. Patent suits, however, may be filed only in federal court. Why do patent cases receive exceptional treatment? The usual answer is that federal courts, unlike state courts, provide uniformity and expertise in patent matters. This Article analyzes whether exclusive jurisdiction actually serves those policy aims and concludes that the uniformity-expertise rationale is overstated. If exclusive federal patent jurisdiction is to be justified, attention must also be given to pragmatic considerations, such as the respective quality of state and federal trial courts, the courts’ ability to …

Intellectual Property Geographies, Peter K. Yu

Faculty Scholarship

Written for a special issue on intellectual property and geography, this article outlines three sets of mismatches that demonstrate the vitality, utility and richness of analyzing intellectual property developments through a geographical lens. The article begins by examining economic geography, focusing on the tensions and conflicts between territorial borders and sub-national innovation (including those relating to obligations under the WTO TRIPS Agreement). This article then examines the oft-found mismatch between political geography and cultural geography. Illustrating this mismatch is the challenge of protecting traditional knowledge and traditional cultural expressions. The article concludes by exploring the growing mismatch between legal geography …