Genetic Databases and Biobanks: Who Controls Our Genetic Privacy? ▲ | ||
Abstract A growing number of private biotech companies have been collecting and storing our genetic information and bodily tissues and linking it to life-long medical histories. Many of these companies have close relationships with the public sector: they rely on public institutions to get access to certain medical data and tissue samples, while the public sector relies on those companies for commercial exploitation of the research. Despite the unique nature of the information collected and the sensitivity of genetic databases, these private bio-libraries are largely unregulated in the United States. | database genetic individual information medical personal privacy private research sample Volume 23 Issue 1 Page 1 | |
Representative Patent Claims: Their Use in Appeals to the Board and in Infringement Litigation ▲ | ||
AbstractIn general every patent claim is considered a separate invention. However, in certain instances, multiple claims are grouped together and the patentee’s rights are determined with respect to these “representative claims.” This article examines the representative claims procedures utilized in patent prosecution and litigation. The recent changes in the rules governing the appeals of a rejected patent claim before the Board of Patent Appeals and Interferences are highlighted first, followed by an examination of the use of representative claims in patent litigation and proposals for some guidelines for the selection of representative claims. | appeal board claim court issue patent rejection representative right trial Volume 23 Issue 1 Page 55 | |
Regulatory Status of VOIP in the Post Brand X World ▲ | ||
and AbstractDuring the past several years, the Federal Communications Commission (FCC) has engaged in a series of rulemakings to determine the regulatory status of Voice over Internet Protocol (VoIP). The Supreme Court’s recent decision in the consolidated cases of National Cable and Telecommunications Ass’n v. Brand X and FCC v. Brand X clarifies that even if the FCC’s determination conflicts with that of a court, the FCC’s judgment holds sway as long as the decision is reasonable. We believe that VoIP should be classified as an information service, rather than a telecommunications service, for several reasons. First, the Internet Protocol nature of VoIP technology means that it functions like an information service, rather than a telecommunications service. Second, in the Telecommunications Act of 1996, Congress clearly sought to bring competition to all communications markets; encouraging the development of VoIP by classifying it as an information service comports with congressional intent. Third, economic analysis demonstrates that subjecting VoIP to the full panoply of regulation under Title II of the Telecommunications Act would significantly reduce consumer welfare. Fourth, the FCC’s own experience shows that, if the FCC believes that some selective regulation is necessary, it has ample authority to impose targeted regulation without subjecting VoIP to all regulations that affect telecommunications services. | consumer court distance information phone regulation service telecommunication telephone universal Volume 23 Issue 1 Page 89 | |
Hiding from the Boss Online: The Antiemployer Blogger’s Legal Quest for Anonymity ▲ | ||
AbstractAnti-employer bloggers often use the anonymity of a blog to disclose information about employers or engage in discourse that the employer may perceive as adverse. Employers are increasingly willing to use the power of the courts against such anonymous bloggers. This situation has created a tension between anonymous speech rights and an employer’s right to defend its legitimate business interests against disparagement, defamation. Since traditional anonymous speech principles have proven inadequate at resolving this tension, this article proposes new legal theories designed to ameliorate the problem. | anonymous blogger court employee employer identity information internet loyalty state Volume 23 Issue 1 Page 135 | |
Slaying the Troll: Litigation as an Effective Strategy Against Patent Threats ▲ | ||
AbstractLitigation has traditionally been seen as a disfavored option for an accused infringer. Instead, litigation is commonly viewed as an activity that is forced on an unwilling market participant. This article proposes that the threat of litigation is a double-edged sword that affects not just the decision making process of the infringer, but also that of the patentee. The threat of litigation is particularly important when the patentee is a patent troll, counterbalancing the patent troll’s ability to force a license and playing a key role in forcing low- or zero-cost settlements. This article first explores the options available to the accused infringer in the face of a patent threat, and defines the concept of a patent troll. It then examines the reasons why an infringer might choose to litigate, and describes a model through which to view the infringer and patentee’s decisions. This model is then used to examine how changes in the ability of patentees to obtain injunctions may drive the tendency of parties to litigate and the value of settlements that occur in place of litigation. | claim infringer litigate litigating litigation patent patentee settlement troll value Volume 23 Issue 1 Page 159 | |
Joint Infringement of Patent Claims: Advice for Patentees ▲ | ||
AbstractLiability for direct patent infringement generally requires the presence of an entity that directly infringes all the limitations in a patent claim. But, in some situations a single direct infringer may not be present. There are two judicially developed theories of joint infringement that address such situations: the “agency” theory and the “some connection” theory. This article explores both theories and provides some practical advice for patentees who need to avail themselves of one or both joint infringement theories. | agency claim connection court customer direct entity infringement patent theory Volume 23 Issue 1 Page 211 | |
Will Shrinkwrap Suffocate Fair Use? ▲ | ||
AbstractThis article explores the balance between using copyright law and contract law to protect intellectual property, specifically computer software. This article analyzes the balance between the software creator’s rights and the public good that results from access to the source code. Section II gives a general overview of the types of protection available to software producers. Section III discusses contract protection for software and the growing acceptance of shrinkwrap licenses and other adhesion agreements as valid contracts. Section IV discusses traditional copyright protection for software in great detail. It discusses the exclusive rights under copyright law as well as the fair use exception to these exclusive rights. Section V discusses the Digital Millennium Copyright Act (DMCA) and its reverse engineering exceptions. Section VI explains how contract law, traditional copyright law, and the DMCA work together, and how preemption doctrines control what happens when they are in conflict with one another. Section VII argues that decisions that uphold adhesion contract prohibitions on reverse engineering were wrong because they did not properly apply preemption analysis. Section VIII argues that the precedents set such decisions are especially frightening when applied to the DMCA. | computer contract copyright court engineering license protection reverse shrinkwrap software Volume 23 Issue 2 Page 237 | |
Open Source Biology: A Means to Address the Access & Research Gaps? ▲ | ||
AbstractAlthough Americans enjoy access to a wide range of drugs to treat all types of diseases, ranging from life-threatening to lifesustaining, numerous serious illnesses exist for which either there are no drugs available or worse the drugs that do exist are not available in a particular marketplace, such as the developing world. This article focuses on how an open source licensing system premised on patent law can foster drug development to benefit the developing world. The first section discusses the access and research gaps and explains how patents, in part, contribute to these gaps. The second section briefly explains open source licensing practices in software before discussing why an open source approach attracts biomedical researchers and how it might differ from open source approaches in software. The third section evaluates existing open source biology projects that fall into two approaches. The fourth section compares open source approaches to other alternative patent-based approaches and concludes that an open source model provides the best incentives to reduce access and research gaps. The last section concludes that an open source approach is a viable alternative to current licensing strategies and suggests that open source licensing of patent pools provides the best incentive to promote downstream drug development. | license licensing patent public research right software source university visited Volume 23 Issue 2 Page 271 | |
Brand X and the Federal Communication Commission's Adoption of the Wireline Broadband Internet Access Order -- What Now? ▲ | ||
Abstract On September 25, 2005, just thirty-nine days after the Supreme Court’s decision in National Cable & Telecommunication Ass’n v. Brand X Internet Services, the Federal Communications Commission issued the Wireline Broadband Internet Access Order dropping regulations requiring Bell Operating Companies to offer broadband access on a common carrier basis. Although the FCC believes that the Wireline Broadband Order, designed to help level the playing field between cable modem service providers and DSL providers, will promote marketplace competition, many holes exist which could ultimately harm the availability and accessibility of advanced communication to all Americans. This comment explores both the positive and negative implications of the Wireline Broadband Order including the effect on marketplace competition, the lack of clearly defined enforcement measures, and the viability of the Universal Service Fund. | broadband cable carrier internet modem order provider service telecommunication wireline Volume 23 Issue 2 Page 317 | |
Protecting Academic and Non-Profit Research: Creating a Compulsory Licensing Provision in the Absence of an Experimental Use Exception ▲ | ||
Abstract The experimental use exception permits researchers and their institutions to make certain uses of patent inventions for purposes of experiment or research. Unfortunately, this judicially created doctrine is applied infrequently and is interpreted narrowly. Thus, in most cases, researchers do not have a patent infringement defense under which they can conduct basic research. This comment argues that a compulsory patent licensing provision based on a reformation of the Bayh-Dole Act may solve this problem. This comment analyzes several economically developed foreign nations that use patent compulsory licensing provisions as a base for the U.S. implementation. Section II discusses the history of the U.S. experimental use exception. Section III discusses the impact and implications of the Madey v. Duke University decision on U.S. research. Section IV gives the doctrinal background on the theory of compulsory licensing, international treatment of compulsory licensing, and the purpose of Bayh-Dole Act in the United States. Section IV also discusses how the U.S. can utilize the ideas of other countries to reanalyze and amend the Bayh-Dole Act to produce our own compulsory licensing legislation in light of a non-existent experimental use defense. Section V provides some final observations on compulsory licensing. | compulsory exception experimental invention licensing patent provision public research university Volume 23 Issue 2 Page 347 | |
Is the Patent Paradox a Result of a Large Firm Perspective? – Differential Value of Small Firm Patents Over Time Explains the Patent Paradox ▲ | ||
AbstractThe patent paradox is the over-valuing of patent protection by industry participants despite data showing that patents have low value, and thus must not be an efficient means of protecting intellectual property. The portfolio theory attempts to explain the patent paradox, based upon the assumption that the marginal expected gain in value from the addition of a patent to a well-crafted patent portfolio is greater than the marginal costs of acquiring the patent. While the portfolio theory unifies prior existing theories regarding the valuation of large firm patents, it does not take into account the behavior of small firms in relation to their intellectual property. This comment describes the value of patents to small firms, and explains their relation to venture capital and litigation. This comment also proposes that speculation into the value of innovation of small firms, especially by venture capital, creates an initial value in the patents of small firms. | capital claim firm large paradox patent portfolio scope value venture Volume 23 Issue 2 Page 371 | |
In Search of the Undiscovered Country: The Challenge of Describing Patentable Subject Matter ▲ | ||
Abstract In defining patent law, lawmakers and courts face the unusual challenge of describing the future characteristics of useful devices and processes that are presently nonobvious but which are within the scope of the “useful arts” and the range of patentable subject matters. This article reassesses the Federal Circuit’s patentable subject matter standards in anticipation of the Supreme Court’s possible review of those standards. The article argues that patentable subject matter standards which are appropriately open ended should focus on three minimum features in determining whether a design of a new advance constitutes patentable subject matter – (1) the inventor's articulation of a precise definition of the advance such that the advance is transferable to and usable by multiple parties; (2) the production of immediately available and regularly obtained practical benefits through use of the advance; and (3) the lack of field-specific policy reasons to believe that, if patent controls are applied to the advance, the advantages of innovation incentives normally associated with patent rewards will be overwhelmed by countervailing public injuries from the patent controls. The recent extension of patentable subject matter to tax planning methods for reducing tax liabilities is then examined under these criteria to demonstrate application of the criteria and the sufficiency of these criteria in focusing complete evolutions of the net public benefits achieved by extending patent controls and incentives to new categories of practices and devices. | advance court field matter method patent patentable standard subject system Volume 23 Issue 3 Page 395 | |
Transaction Costs and Patent Reform ▲ | ||
Abstract This article considers current proposals for patent law reform in light of a simple theory about intellectual property law: In a world without transactions costs, the assignment of property rights is not necessary to stimulate the optimal production of creative goods. Because potential users of inventions could contract for their creation, a compelling justification for granting property rights in these intangibles is the reduction of real-world transaction and information costs that hinder, or make impossible, contract formation between users and creators. Proposals for patent law reform, therefore, should be evaluated by whether a change in legal rights, or in the regulatory process increases or lowers these costs. | contract cost farmer invention inventor patent property reform right transaction Volume 23 Issue 3 Page 447 | |
Lessons from Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc. ▲ | ||
Abstract This article provides reflections on the scope of patentable subject matter, using the Supreme Court’s recent consideration of Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc. as a springboard for discussion. A brief introduction to the case and the current standard of patentable subject matter are provided as a backdrop for discussion of the role of patentable subject matter in the overall scheme of patentability and patent enforcement. In addition, this article addresses potential repercussions of the case within the judicial and legislative arenas. This article concludes by offering some broad-based issues for consideration, including both domestic and international implications. | claim court issue matter metabolite method patent patentable scope subject Volume 23 Issue 3 Page 463 | |
Do Reverse Payment Settlements Violate the Antitrust Laws? ▲ | ||
Abstract The term “reverse payment” has been used as shorthand to characterize a variety of diverse agreements between patent owners and alleged infringers that involve a transfer of consideration from the patent owner to the alleged infringer. Reverse payment settlements are particularly associated with drug patent challenges mounted by generic drug companies under the Hatch-Waxman Act. Many, including the Federal Trade Commission, would characterize these agreements as antitrust violations. However, courts have generally declined to find these agreements in violation of the antitrust laws based solely on the presence of a reverse payment. | agreement antitrust court generic litigation patent payment reverse schering settlement Volume 23 Issue 3 Page 489 | |
Fishing for Utility with Expressed Sequence Tags After In re Fisher ▲ | ||
Abstract Following the Court of Appeals for the Federal Circuit’s decision in In re Fisher many media reports seemed to imply that patents for expressed sequence tags (“ESTs”) were no longer possible. This comment examines the rationale behind the court’s decision to deny Fisher a patent for five EST sequences. Section II discusses the history of the utility requirement and its application to Fisher. Section III explores the two legal issues that arise from Fisher, (1) whether Judge Rader’s reasoning in his dissenting opinion should bear any weight in future utility cases for biological inventions; and (2) whether patentable subject matter is still available for ESTs. Section IV proposes that Judge Rader’s dissenting opinion should not be employed in future cases. Section IV also proposes that some applications of ESTs can provide limited but substantial and specific utility, thus meeting the Fisher standard. | application compound court fisher gene patent sequence specific substantial utility Volume 23 Issue 3 Page 589 | |
Article 82: Gestalt, Myths, Questions ▲ | ||
Abstract Article 82 of the Treaty Establishing the European Community is the counterpart to the anti-monopolization provisions contained in Section 2 of the Sherman Act. Commentators have criticized recent applications of Article 82 as outdated, protectionist, inconsistent — and perhaps most damaging of all, based on faulty economics. This paper takes issue with these critiques to offer support for a robust Article 82. An appreciation for Article 82 can only emerge through a contextual analysis of its historical origins and its regulatory role within a broader policy of European economic integration. | antitrust competition consumer dominant economic european market monopoly policy section Volume 23 Issue 4 Page 615 | |
Technical Protection Measures for Digital Audio and Video: Learning from the Failure of Audio Compact Disc Protection ▲ | ||
Abstract As consumers upgrade their computers, stereos and televisions they are replacing analog technologies with digital ones. These new technologies store information in a form that does not noticeably degrade as it is duplicated and is not bound to a particular recording medium. As the Internet bandwidth available to the average computer user has increased, has become highly efficient to transmit and share such data. Fearing enormous financial losses from widespread piracy, content providers sought methods to protect their content via technical protection measures (“TPMs”). | audio computer consumer content digital measure protection software system technical Volume 23 Issue 4 Page 643 | |
The Effect of International Comity on the Application of the Attorney-Client Privilege and Foreign Privilege Laws in U.S. Patent Litigation ▲ | ||
Abstract The attorney-client privilege is a testimonial privilege that allows clients to refuse to disclose, and to prevent others from disclosing, confidential communications with their attorneys that are made for the purpose of obtaining or providing legal advice. Both the Supreme Court and the Federal Circuit have ruled that the privilege applies in the context of patent prosecution. However, U.S. attorneys face considerable uncertainty when asserting the attorney-client privilege to protect confidential communications between clients and their foreign patent agents and attorneys. This uncertainty arises because U.S. courts largely decide privilege disputes pertaining to foreign patent prosecution by applying the law of the nation in which the foreign patent application was filed. | agent application attorney client communication court foreign patent privilege prosecution Volume 23 Issue 4 Page 667 | |
Access Controls in the Digital Era and the Fair Use/First Sale Doctrines ▲ | ||
Abstract Each sale of an iTunes track means that a copy of music has been distributed that cannot be legally resold, edited, excerpted, or otherwise sampled by that user. This scenario has been repeated over 2.5 billion times since the inception of the iTunes Music Store. Much like software sales, consumers are now purchasing licenses to “access” the work instead of the content, given that access to these works is controlled by Digital Rights Management (DRM) schemes bolstered by the Digital Millennium Copyright Act (DMCA). In enacting §1201(a) of the DMCA, Congress effectively created an additional exclusive right for content providers: controlling access to a work. | apple content control copyright digital doctrine first itune music right Volume 23 Issue 4 Page 685 | |
Policing Their Space: The First Amendment Parameters of School Discipline of Student Cyberspeech ▲ | ||
Abstract This article details the First Amendment parameters of student cyberspeech. It was developed out of research into several factual situations of particular concern to the teacher-members of the Pennsylvania State Education Association, a union representing public school employees. Specifically, this article addresses whether and when disciplinary action may be taken against public school students who engage in both on- and off-campus cyberspeech. Potential civil and criminal causes of action are not discussed. | campus court cyberspeech disruption district school speech student teacher website Volume 23 Issue 4 Page 727 | |
Patent Rules of Evidence ▲ | ||
AbstractThe Federal Rules of Evidence apply to all proceedings in Federal District Courts, including patent cases. Unique evidentiary issues arise in patent cases because Title 35 of the United States Code contains restrictions that are tantamount to special rules of evidence. In some areas of patent litigation, courts and litigants also rely on judicial rulings as the dominant source of controlling authority. A notable example of the dominance of judicial rule making is the United States Supreme Court’s Markman v. Westview Instruments, Inc. decision and the large body of cases from the Federal Circuit applying the Markman decision. This article discusses the benefit to patent litigation that has resulted from authoritative judicial rule making. Using the Markman paradigm, this article discusses a similar benefit that would be gained from an articulation of the specialized rules of evidence that apply to patent cases and suggests examples of such an articulation. | case claim construction court evidence expert invention patent rule testimony Volume 23 Issue 4 Page 749 | |
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Santa Clara Computer & High Technology Law Journal.
Designed, built, and maintained by Journal students.
All marks are property of their respective owners.
All rights reserved.