Volume 24 | Volume 25 |  |
Always Something New: Thoughts on The Journal’s 25th Birthday ▲ | ||
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Copyright Law: The Last Five Years of Journal Coverage ▲ | ||
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A Bit Liable? A Guide to Navigating the U.S. Secondary Liability Patchwork ▲ | ||
AbstractIn terms of scholarly and media attention, copyright’s secondary liability doctrines long played a bit-part alongside direct liability’s leading lady. But since peer-to-peer (P2P) file sharing providers began facilitating billions of copyright infringements a decade ago, those unassuming doctrines have been forced into starring roles. This article shines a spotlight on U.S. secondary liability law ten years after it first took center stage, highlighting the myriad uncertainties and controversies that now plague its operation. These uncertainties are illustrated with detailed reference to the hypothetical secondary liability of BitTorrent Inc., the original and as-yet unlitigated provider of the world’s most dominant P2P file-sharing tool. This work argues that the rhetoric underpinning the existing secondary liability law is strongly protective of technology, but that the breadth and depth of the uncertainties surrounding its proper application effectively abrogates those protections by stealth. | bittorrent court defendant grokster infringement infringing liability search software technology Volume 25 Issue 1 Page 7 | |
Patentability of Human-Animal Chimeras ▲ | ||
Abstract The chimera was a mythological creature with a lion’s head, goat’s body, and serpent’s tail. Because of recent advances in biotechnology, such permutations on species are no longer the stuff of myth and legend. The term “chimera” has come to describe a class of genetically engineered creatures composed of some cells from one species, which thus contain genetic material derived entirely from that species, and some cells from another species, containing only genetic material from that species. Scientists have created a goatsheep chimera or “geep” which exhibits physical characteristics of both animals. Likewise, scientists have also used the tools of modern molecular biology to create human-animal chimeras containing both human and animal cells. While none of the human-animal chimeras hitherto created have exhibited significant human characteristics, the synthesis of human-animal chimeras raises significant ethical concerns. The advent of human-animal chimera technology naturally raises the issue of whether development of human-animal chimeras should be encouraged by the issuance of patents to inventors of human-animal chimeras. | amendment animal chimera court human invention patent patentability patentable subject Volume 25 Issue 1 Page 51 | |
Reconciling Contract Doctrine with Intellectual Property Law: an Interdisciplinary Solution ▲ | ||
Abstract Courts, commentators, and practitioners have for too long viewed intellectual property law as a discrete discipline, without putting it into the proper theoretical context of general jurisprudence. Intellectual property law cannot and must not exist on its own, outside the normative framework of overlapping legal institutions. Even within the rubric of intellectual property, courts have overlooked the potential for cross-applying relevant doctrines between patent, copyright, and trademark law. Certainly, when intellectual property disputes touch on other disciplines, such as civil procedure, contract, or tort law, courts have tended to overlook their synergies, focusing instead on only one of several important policies or principles. The result has gone beyond missed opportunities. It has led to judicial mistakes, including in the very recent, and broad-based, 2007 U.S. Supreme Court case of MedImmune v. Genentech. The Court’s errors have far-reaching implications for the future of the law and its practice. | contract court intellectual license licensee medimmune patent property right supreme Volume 25 Issue 1 Page 105 | |
Nuisance-Value Patent Suits: An Economic Model and Proposal ▲ | ||
Abstract Patent holding entities frequently approach companies with vague allegations of patent infringement, offering a license in exchange for a “nuisance” payment which amounts to less than the cost of litigating a defense. Although accused infringers often have strong arguments that the asserted patent claims are either invalid or not infringed, most risk-averse companies opt to settle rather than face the expensive, protracted, and uncertain prospect of litigation. Such “nuisance” patent settlements, however, defy their name–often amounting to millions of dollars. | claim defendant infringement litigation nuisance patent plaintiff proposal settlement value Volume 25 Issue 1 Page 159 | |
Debugging Software Patents: Increasing Innovation and Reducing Uncertainty in the Judicial Reform of Software Patent Law ▲ | ||
AbstractSoftware patents do not promote innovation, they instead reduce it. Early in the development of the computer industry, a U.S. presidential commission opposed the recognition of software patents, and the Supreme Court never approved the degree of recognition that software patents have recently enjoyed. This paper reviews the genesis of the patentability of software patents, analyzes the social welfare implications of recognizing software as patentable subject matter, and examines recommendations for reform. Others have suggested enhancing software patent claim disclosure requirements to address social welfare losses. This paper concludes that altering disclosure requirements would dramatically increase litigation while reducing the value of most software patents. Instead, the only way to optimally reform software patent law, without destroying settled expectations of current software patent holders, is for the Supreme Court to reinstate and prospectively apply its physical-transformation test. | claim court innovation matter patent policy program software subject uncertainty Volume 25 Issue 1 Page 191 | |
Is the Use of Patents Promoting the Creation of New Types of Securities? ▲ | ||
Abstract Has there been a change in the level of innovation of financial methods subsequent to the State Street decision that allowed the award of patents to protect such methods? Ten years following the issuance of State Street, the patentability of business methods is still so controversial that the Federal Circuit has recently considered overruling its own precedent by rehearing In re Bilski en banc. The goal of the patent system is to promote innovation. If an increase in the level of innovation of financial methods is not present, the adoption of this form of intellectual property to protect creativity in the industry is unjustified and, potentially, even harmful. Indeed, it is important to ascertain the correct balance between encouraging innovation on the one hand, and leaving enough “raw material” upon which individuals can build new ideas on the other. A first step in accomplishing this objective is to understand whether the patent system is “doing its job” or, in other words, whether the provided protection is actually inducing innovation in a specific industry. | application financial innovation matter method patent security state subject system Volume 25 Issue 2 Page 243 | |
Implied License: An Emerging New Standard in Copyright Law ▲ | ||
Abstract This article addresses a proposed new standard in copyright law–the “implied license” doctrine–which has the potential to play a prominent role in copyright conflicts, especially in the context of digital media. The implied license doctrine is not new to intellectual property law but its use is currently limited. It is viewed essentially as a ramification of contract law, and as such the doctrine is usually applied to fill gaps in existing contractual or quasi-contractual relations as a means of identifying the subjective or even objective intent of the relevant parties. This article proposes a new conceptualization of the implied license doctrine, one that would enable courts to impose norms based on public policy considerations in order to bring reasonableness into the law of copyright, as it affects digital media, especially in the Internet. This standard of an implicit license should, in this view, override the intent of the relevant parties, even if explicitly stated, and would thus introduce clear and binding rules of conduct. In this sense, “implied license” is used metaphorically, since it is removed from the realm of contract law and is used in some cases as a means of bypassing actual contractual provisions. | contract copyright court doctrine first implied legal license owner right Volume 25 Issue 2 Page 275 | |
Efficient Definition and Communication of Patent Rights: The Importance of Ex Post Delineation ▲ | ||
AbstractAs with any area of law, rights and duties relating to patents should be clearly communicated in an efficient manner. Unfortunately, uncertainty concerning the scope of the rights granted by patents frequently results in expensive litigation. Most proposals for reducing this uncertainty do not examine its root causes and focus only on measures to provide additional clarification in patent applications. Such ex ante proposals are often inefficient because considerable uncertainty is inherent, given the limits of language and of our ability to foresee future developments. In addition, ex ante clarification often would be wasteful because so few patents are valuable enough to be contested. Therefore, ex post clarification of patent scope after potentially infringing activities have occurred would be more efficient than efforts to clarify exclusively through ex ante measures. More specifically, two ex post techniques should be adopted. First, courts should recognize that patents often cannot communicate ex ante the scope of patent rights and should adjust certain patent law doctrines accordingly. Second, an administrative procedure should be established to cheaply clarify patent scope after a patent has issued. | claim communication construction interpretation patent property regarding right scope uncertainty Volume 25 Issue 2 Page 327 | |
Data Breaches: What The Underground World of “Carding” Reveals ▲ | ||
Abstract Individuals have been at risk of having their personal information stolen and used to commit identity-related crimes long before the emergence of the Internet. What the Information Age has changed, however, is the method by which identity thieves can access and exploit the personal information of others. One method in particular leaves hundreds of thousands, and in some cases tens of millions, of individuals at risk for identity theft: large scale data breaches by skilled hackers. In this method, criminals remotely access the computer systems of government agencies, universities, merchants, financial institutions, credit card companies, and data processors, and steal large volumes of personal information on individuals. Such large scale data breaches have revolutionized the identity theft landscape as it relates to fraud on existing accounts through the use of compromised credit and debit card account information. | account carder carding credit criminal identity information number stolen theft Volume 25 Issue 2 Page 375 | |
Virtual Third Parties ▲ | ||
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The Necessity of EGovernment ▲ | ||
, , and Abstract This paper presents the positive and negative impact information technology (IT) has had on governance in the United States and argues that effective and efficient eGovernment is a necessity created by the increased and widespread use of IT in the private sector. | agency cost egovernment government information policy privacy public state transaction Volume 25 Issue 3 Page 427 | |
Intangible or Embodied Information: The Non-Statutory Nature of Human Genetic Material ▲ | ||
AbstractAlthough scientists, social scientists, and historians since the early 1950s have described deoxyribonucleic acid (DNA) sequences as information, this characterization has yet to be recognized by the law of intellectual property. However, a prestigious body of national policy-makers recently acknowledged that the nature of genomic discoveries could be considered information distinct from the tangible molecules from which it is derived. The implications of this characterization for patent law suggest that recent decisions dealing with the statutory subject matter of computer-implemented inventions could prove more relevant than prior cases regarding patents granted to discoveries in the life sciences. The following Article expands upon this suggestion. Examining the science of DNA, including the technical processes of DNA isolation and purification, as well as the language of specific patent claims, establishes that these claims are being made purely for their informational content, as either intangible information per se, or by regarding DNA as information embodied as a molecular structure. Thus characterized, analogous cases dealing with computer technology, including recent decisions from the Federal Circuit, provide the argument that DNA sequences represent exceptions to patentable subject matter as laws of nature and can be viewed as falling outside the enumerated categories of statutory subject matter under 35 U.S.C. § 101. | claim court human information matter patent process sequence statutory subject Volume 25 Issue 3 Page 467 | |
Common Sense: Treating Statutory Nonobviousness As a Novelty Issue ▲ | ||
AbstractTitle 35 of the United States Code at § 103 limits patent protection to subject matter that would not be “obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” The requirement was introduced as a statute by the Patent Act of 1952, but, according to the legislative history, was a codification of judicial precedent. The origin of that precedent generally is attributed to the 1851 Supreme Court decision of Hotchkiss v. Greenwood. However, Hotchkiss was not widely declared a watershed moment in legal history until Cuno Engineering Corp. v. Automatic Devices Corp. ninety years later, and enactment of the Patent Act of 1952. The decision by the Supreme Court in Hotchkiss was, in fact, consistent with earlier case law developed largely by English courts, and by U.S. Supreme Court Justice Joseph Story. Until KSR International Co. v. Teleflex Inc., the Supreme Court, despite language that appears to link patentability to skill, generally maintained an underlying requirement, predating Hotchkiss, that patentable subject matter embody a new application of principle that alters the functional relationship between claimed components of statutory subject matter. Invocation of broad motivation and “common sense” by the Court in KSR to determine patentability ironically limits the capacity of reason to produce the consistent results intended by the enactment of § 103. | application court hotchkiss improvement invention justice machine patent patentability principle Volume 25 Issue 3 Page 539 | |
A Policy and Economic Exploration of Wireless Carterfone Regulation ▲ | ||
, , and AbstractCritics assert that certain practices by wireless service providers–such as handset locking, data bandwidth limitations, and control over features included on handsets–unduly hamper the ability of consumers to access advanced data communications services. Whether these wireless service providers should be required to open their networks to users’ choices of wireless handsets has been the focus of recent policy debates in the United States surrounding potential regulatory intervention. This intervention, often called “wireless Carterfone” rules (after an FCC 1968 decision for the landline telephone network), would ban some of these practices and mandate that service providers design their networks to accommodate the user’s choice of wireless handsets and equipment. This article explores the historical background of the Carterfone decision and its application to the contemporary wireless industry in light of two significant economic implications. First, the regulations that commoditize the wireless network services industry may harm the prospects for entry and competition in that industry. Therefore, while the concentrated nature of the wireless market is often cited as a reason for imposing wireless Carterfone rules, those rules may in fact exacerbate that market concentration. Second, wireless Carterfone rules may have the effect of increasing prices for handsets without any offsetting price decrease for wireless network services. As a result, consumer welfare may decrease without any guarantee that producer or social welfare will increase. | carterfone consumer equipment industry market network price regulation service wireless Volume 25 Issue 3 Page 647 | |
Carterfone: My Story ▲ | ||
AbstractThomas Carter invented the “Carterfone”–an acoustic coupling device that enabled the connection of a telephone handset to a radio transceiver. AT&T, the dominant telephone company at the time, advised its customers that the Carterfone was a prohibited “interconnecting device” under FCC Tariff No. 132, which essentially made it unlawful for telephone subscribers to connect their own equipment to AT&T’s telephone network. Carter brought suit against AT&T in federal court, alleging that AT&T’s warnings to its customers constituted a violation of the Sherman Anti-Trust Act. Carter’s suit ultimately culminated in the FCC’s landmark Carterfone decision. In Carterfone, we held that “application of [FCC Tariff No. 132] to bar the Carterfone in the future would be unreasonable and unduly discriminatory . . . and that the provisions prohibiting the use of customer-provided interconnecting devices should accordingly be stricken.” This result, originally set in motion by Thomas Carter’s unprecedented challenge to the telephone monopoly, paved the way for a period of profound technological innovation in the telephone equipment industry and to the Internet beyond. | carter carterfone company device history internet phone telecommunication telephone visited Volume 25 Issue 3 Page 677 | |
Where is the ITC Going After Kyocera? ▲ | ||
and AbstractThe International Trade Commission (ITC) is an important forum to litigate issues concerning the importation into the United States of articles that allegedly infringe a U.S. patent. Traditionally, patent holders view the broad injunctive remedy and quick resolution available from the ITC as advantages. The Federal Circuit, however, recently limited the scope of some ITC remedies. This paper examines the potential impact of that decision. | commission court decision downstream exclusion kyocera order product respondent section Volume 25 Issue 4 Page 701 | |
The Shifting Sands of Price Erosion: Price Erosion Damages Shift by Tens of Millions of Dollars Depending Upon the Admissibility of Pre-Notice Eroded Prices ▲ | ||
, , and AbstractCompetition from an infringing product reduces the price the patent holder can charge for its product. An economist pegs the beginning of the reduced prices to the date the infringing conduct begins. In other words, there is economic harm to the patent holder in the form of falling prices on or soon after the infringing sales begin. However, the accounting period for patent infringement damages often begins much later–the commencement of the damage accounting period is usually tied to the date the patent holder gives actual or constructive notice under the patent marking statute. This article addresses whether the calculation of damages on the infringing sales that fall within the accounting period should: a) reflect the fact that, as of the commencement of the accounting period, prices have already eroded to a specific level, or b) employ the fiction that, as of the commencement of the accounting period, there has been no previous erosion in prices. There is sparse and conflicting law regarding whether or not the court should allow damage experts to consider and rely upon evidence of pre-notice eroded prices in calculating price erosion damages. As price erosion is often a major portion of the total damages awarded for patent infringement, this unsettled area of law is ripe for clarification. | court damage erosion holder infringement infringing notice patent price sale Volume 25 Issue 4 Page 723 | |
Injunctions Enjoined; Remedies Restructured ▲ | ||
and AbstractOne of the foundational intellectual property rights in the proverbial “bundle of sticks” granted by the United States patent system to a patentee is the patentee’s right to exclude others from practicing is or her patented invention. The Supreme Court’s decision in eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), and the Federal Circuit’s decision in Kyocera Wireless Corp. v. International Trade Commission, 545 F.3d 1340 (Fed. Cir. 2008), have shortened those sticks. This article tracks the impacts those two decisions have on cases in the district courts and in investigations in the International Trade Commission, including a decrease in the rate of injunctions issued against parties found to infringe patents and an increasing likelihood of patentees being required to accept compulsory-like-licenses as their only remedy for infringement. In addition, this article examines the disparate impact the cases have on patentees that are in direct competition with the accused infringers versus patentees that are non-practicing entities (NPE). | circuit court downstream federal injunction injunctive patent patentee product relief Volume 25 Issue 4 Page 787 | |
Exclusion of Downstream Products After Kyocera: A Revised Framework For General Exclusion Orders ▲ | ||
| , , and | downstream exclusion general infringing kyocera limited order product relief usitc Volume 25 Issue 4 Page 821 | |
Application of the Inequitable Conduct Doctrine After Kingsdown ▲ | ||
and AbstractAll individuals associated with prosecuting and filing patentAapplications owe a duty of candor to the U.S. Patent Office, including the obligation to disclose all information that is material to the patentability of an invention. Where an applicant fails to comply with this duty, challengers may seek to render the patent unenforceable by charging the applicant with inequitable conduct. Responding to a vast increase in inequitable conduct claims, the Federal Circuit in 1988 decided Kingsdown Medical Consultants, Ltd. v. Hollister, Inc., enumerating clear requirements for an inequitable conduct ruling. The Kingsdown court held that inequitable conduct requires a showing of both materiality and intent to deceive by clear and convincing evidence. Nevertheless, since Kingsdown, judges and commentators have criticized the perceived erosion of the intent element of inequitable conduct. Although Kingsdown requires a finding of a specific intent to deceive, subsequent decisions have been criticized for establishing a "should have known" standard for intent, thus lowering the requirements specified in Kingsdown. This article traces the development of the inequitable conduct doctrine leading up the Kingsdown decision. It also summarizes a number of criticized cases decided after Kingsdown, noting the perceived shift in the intent analysis. Finally, this article discusses several recent cases that may symbolize a shift to more rigorous requirements for intent to deceive. | conduct court deceive evidence inequitable intent inventor kingsdown materiality patent Volume 25 Issue 4 Page 839 | |
Poised on the Precipice: a Critical Examination of Privacy Litigation ▲ | ||
AbstractThe ever-increasing use of information, coupled with changes in computing technology that make information easier to use, and more portable, ensure that privacy litigation will be a focus of government enforcement and plaintiffs in years to come. This article examines trends in privacy litigation, common theories of liability, damage issues faced by plaintiffs, as well as an examination of class action issues as plaintiffs typically frame their allegations in the class action context. | action claim class court information issue person plaintiff privacy service Volume 25 Issue 4 Page 883 | |
The History, Content, Application and Influence of the Northern District Of California’s Patent Local Rules ▲ | ||
and AbstractOn December 1, 2000, the United States District Court for the Northern District of California became the first district court to promulgate rules governing the content and timing of disclosures in patent-related cases. The Northern District’s conception of Patent Local Rules finds its origins in the concerns during the 1980’s and 1990’s, when the increasing cost and expense of civil litigation came under increasing attack from commentators and all three branches of the federal government. Despite efforts to improve the efficiency of civil litigation generally, patent litigation proved particularly burdensome on litigants and the courts. The Supreme Court’s decision in Markman v. Westview Instruments, Inc. only exacerbated this situation. The Northern District’s Patent Local Rules are specifically tailored to address the unique challenges that arise during patent litigation, particularly during the pretrial discovery process. The Rules require the patentee and the accused infringer to set forth detailed infringement and invalidity theories early in the case. The Rules also govern the content and timing of disclosures related to the claim construction hearing, an event unique to patent litigation that is often case-dispositive. The Northern District’s Patent Local Rules have been expressly endorsed by the United States Court of Appeals for the Federal Circuit. The Rules have also proven highly influential in other judicial districts, as evidenced by the adoption of substantially similar rules in a growing number of district courts. Substantive differences do exist, however, between the patent local rules of various district courts. Accordingly, the Judicial Council of the United States should consider the advisability of appointing an Advisory Committee to consider the adoption of Federal Rules of Patent Procedures (FRPP) for United States District Courts to promote the efficient resolution of patent-related cases, regardless of the forum in which the case is litigated. | claim construction contention court district infringement local northern patent rule Volume 25 Issue 4 Page 965 | |
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