Volume 27, Number 1
      •   A Century of Leadership and Service: Contributions of the Santa Clara Computer and High Technology Law Journal  p. 1
      •   Balancing Consumer Privacy with Behavioral Targeting  p. 3
      •   Contextualizing the Tensions and Weaknesses of Information Privacy and Data Breach Notification Laws  p. 64
      •   Separation of Ownership and the Authorization To Use Personal Computers: Unintended Effects of EU and US Law . . .  p. 131
      •   Upholding Free Speech and Privacy Online: A Legal-Based and Market-Based Approach For Internet Companies in . . .  p. 175
      •   Balancing Interests at the Border: Protecting Our Nation and Our Privacy in Border Searches of Electronic . . .  p. 219
 
Volume 27, Number 2
      •   The Confluence of European Activism and American Minimalism: "Patentable Subject Matter" After Bilski  p. 247
      •   Heart Pills Are Red, Viagra Is Blue . . . When Does Pill Color Become Functional? An Analysis of Utilitarian . . .  p. 299
      •   The Ripple Effect of Seventh Amendment Decisions on the Development of Substantive Patent Law  p. 333
      •   Killing Good Patents to Wipe Out Bad Patents: Bilski, The Evolution of Patentable Subject Matter Rules, and . . .  p. 403
      •   Patenting Intangible Methods: Revisiting Benson (1972) After Bilski (2010)  p. 445
 
Volume 27, Number 3
      •   Free-Riders and Trademark Law's First Sale Rule  p. 457
      •   When Foreigners Infringe Patents: An Empirical Look at the Involvement of Foreign Defendants in Patent . . .  p. 499
      •   Lead Prior Art Methodology: Applying Lead Compound Case Law to Other Disciplines for Enhanced Objectivity  p. 551
      •   Analysis of the Entire Market Value Rule: Arduous Royalty Base Determinations, Unjust Damage Rewards, and . . .  p. 639
 
Volume 27, Number 4
      •   Judicially Re(de)fining Software Patent Eligibility II: A Survey of Post-Bilski Jurisprudence  p. 673
      •   Four Principles for Calculating Reasonable Royalties in Patent Infringement Litigation  p. 725
      •   Patent Value Apportionment Rules for Complex, Multi-Patent Products  p. 763
      •   Legal Ethics and Non-Practicing Entities: Being on the Receiving End Matters Too  p. 793

A Century of Leadership and Service: Contributions of the Santa Clara Computer and High Technology Law Journal  ▲

Author: Donald J. Polden
   

Volume 27
Issue 1
Page 1

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Balancing Consumer Privacy with Behavioral Targeting  ▲

Author: Dustin D. Berger

Abstract

Behavioral targeting is the emerging practice of collecting information about consumers’ behavior and using that information to customize an advertisement or other service for the consumer. This article first describes the practice and technology of behavioral targeting in its various forms. Second, it aims to identify how this emerging technology might benefit and harm consumers, and to understand how harms occur. Third, it overviews the FTC’s self-regulatory principles and a variety of other proposals to strengthen regulations to prevent harm to consumers and concludes that the proposed approaches do not give consumers the right information to effectively allow them to intelligently manage the risk of harm. Therefore, the article proposes a regime of broad mandatory regulation combined with an audit requirement to address the root causes of potential harm. The article argues that this approach will aid consumers in making informed decisions about their participation in activities that involve behavioral targeting.

    advertising behavioral consumer information local principle privacy profiler targeting website

Volume 27
Issue 1
Page 3

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Contextualizing the Tensions and Weaknesses of Information Privacy and Data Breach Notification Laws  ▲

Author: Mark Burdon

Abstract

Data breach notification laws have detailed numerous failures relating to the protection of personal information that have blighted both corporate and governmental institutions. There are obvious parallels between data breach notification and information privacy law as they both involve the protection of personal information. However, a closer examination of both laws reveals conceptual differences that give rise to vertical tensions between each law and shared horizontal weaknesses within both laws. Tensions emanate from conflicting approaches to the implementation of information privacy law that results in different regimes and the implementation of different types of protections. Shared weaknesses arise from an overt focus on specified types of personal information which results in ‘one size fits all’ legal remedies. The author contends that a greater contextual approach which promotes the importance of social context is required and highlights the effect that contextualization could have on both laws.

    contributor date foreign keyword number page privacy recnum record title

Volume 27
Issue 1
Page 64

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Separation of Ownership and the Authorization To Use Personal Computers: Unintended Effects of EU and US Law on IT Security  ▲

Author: Lukas Feiler

Abstract

It used to be that owners of personal computers typically had full and exclusive authorization to use their computers. This was primarily due to the open architecture introduced with the IBM Personal Computer in the 1980s and proliferated in the 1990s. Recent developments bear evidence of an increasing disconnection between the concept of ownership and that of authorization to use a personal computer (including mobile devices such as notebooks, sub- notebooks, cell phones, smartphones, and PDAs): interference with the closed architecture employed by Apple’s iPhone is claimed to constitute a violation under 17 U.S.C. § 1201; the EULA for Windows 7 supposedly grants Microsoft the right to disable a user’s operating system if the user is deemed to be in violation of the license terms; the Google Chrome Terms of Service supposedly grant Google the right to install new versions of its product without notice; on July 17, 2009, Amazon remotely deleted certain titles, including Animal Farm and Nineteen Eighty-Four from its customers’ ebook devices without consent or notice. This paper analyzes the extent to which EU and US contract law and (para-)copyright law disconnect the concepts of ownership and authorization to use a personal computer and how that affects the security of personal computers.

    computer document extracurricular file internet local microsoft temporary user window

Volume 27
Issue 1
Page 131

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Upholding Free Speech and Privacy Online: A Legal-Based and Market-Based Approach For Internet Companies in China  ▲

Author: Yutian Ling

Abstract

China is well known for its Internet-monitoring and censorship efforts. As Internet technology and the online culture develop, the Chinese government continues its efforts to control content and communications. It forces both domestic and foreign Internet companies that want to do business in China to censor content and reveal the private information of users upon request. There has been much discussion in the international community on how to prevent non-state actors, such as transnational corporations, from violating human rights. The situation in China is uncommon in that it is government coercion and not simply the will of the corporation that leads to free speech and privacy violations. This paper discusses a two-prong approach to move toward more freedom of expression and privacy rights within China’s Internet system. The first prong consists of an international corporate code of conduct, such as the Global Network Initiative, that provides guidelines on how to resist government attempts to violate the rights of users. This code must have a wide range of unified participants and a strong reporting and accountability system. The second prong is a market-based approach that focuses on innovation of technologies to overcome censorship, better consumer relations, and fostering a strong online community. Companies that provide better products and that protect the interest and freedom of users will gain market share in China and thus have more influence over industry regulation. Although China has managed to prevent economic freedom from significantly influencing political reform, greater freedom on the Internet will likely lead to incremental changes in civil and political rights. By combining these two prongs, a strong international network of companies backed by an emerging standard of business conduct can protect freedom of speech and privacy while still providing a robust online world for the Chinese people.

    china chinese company government human international internet local right state

Volume 27
Issue 1
Page 175

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Balancing Interests at the Border: Protecting Our Nation and Our Privacy in Border Searches of Electronic Devices  ▲

Author: Carolyn James

Abstract

An analysis of the Department of Homeland Security’s 2009 Directives on Border Searches of Electronic Media reveals the difficulty in striking a balance between protecting government interests in protecting the borders and preserving travelers’ privacy interests. The 2009 Directives take some steps towards reaching this balance. They do not, however, adequately protect travelers’ privacy interests, especially when taking into account the vast amount of personal information that electronic devices now carry. I make three suggestions to better strike this delicate balance: (1) Border officials should be required to have at least some reasonable suspicion before searching an electronic device; (2) Congress should require the DHS to conduct annual studies of their border searches, report their findings to Congress, and annually issue updated and concrete directives; and (3) Congress should require airlines to better inform travelers of the broad authority that border officials have in searching electronic devices.

    border device directive electronic information policy privacy search searche traveler

Volume 27
Issue 1
Page 219

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The Confluence of European Activism and American Minimalism: "Patentable Subject Matter" After Bilski  ▲

Authors: Patrick E. King , Ryan M. Roberts , and Andrew V. Moshirnia

Abstract

American courts and European jurists continue to struggle to
define the scope of patentability in the recent era of rapid technological innovation. Though the European and American systems rely on opposing judicial philosophies and methods of statutory interpretation, both arrive at the same two-step analytical framework for determining patentability. This article compares the explicit European judicial reshaping of a flexible patentability standard to the Supreme Court’s implicit tailoring in its recent decision Bilski v. Kappos. The comparison clarifies an otherwise challenging body of precedent and presents a blueprint for future analysis.

   

Volume 27
Issue 2
Page 247

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Heart Pills Are Red, Viagra Is Blue . . . When Does Pill Color Become Functional? An Analysis of Utilitarian and Aesthetic Functionality and Their Unintended Side Effects in the Pharmaceutical Industry  ▲

Author: Signe H. Naeve

Abstract

As consumers, we often associate pill color and shape with
particular medications. Should that trade dress be protected beyond the expiration of the patent? Legal scholars have recognized some of the tensions and inconsistencies in court opinions when it comes to trade dress protection for pill shape and color. This article focuses on the specific tensions between requiring secondary meaning and non- functionality, as well as the potential of “genericide” when generic pharmaceuticals enter the market. Ultimately this article makes some novel recommendations to assess functionality at the time of FDA approval for the pharmaceutical and to have the FDA responsible for determining when a shape and color should be an industry standard, creating an exception to trade dress protection. Some exceptions for allowing protection for pill shape and color could be for flavor and colors that indicate flavor, for medications that indicate dosage, or for medications that are associated with a particular patient compliance or psychosomatic effect.

   

Volume 27
Issue 2
Page 299

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The Ripple Effect of Seventh Amendment Decisions on the Development of Substantive Patent Law  ▲

Author: Eileen M. Herlihy

Abstract

In determining whether a judge or jury should decide particular
issues in patent cases, the Federal Circuit has placed too much emphasis on reaching outcomes perceived to be beneficial from a policy perspective and too little emphasis on performing analyses that are consistent with Supreme Court Seventh Amendment precedent. The irony is that, in the course of reaching Seventh Amendment outcomes perceived to foster certainty and uniformity, the Federal Circuit has engaged in expedient and unprincipled analyses that have themselves spawned widespread problems in substantive patent law.
This article examines the ripple effect of statements and intermediate conclusions set forth in the course of flawed Seventh Amendment analyses in the Federal Circuit’s decisions in Markman and Hilton Davis. In relying principally on a fact versus law approach to Seventh Amendment issues in patent cases, an approach not employed by the Supreme Court in addressing such issues, the Federal Circuit has generated faulty and inadequately supported statements and intermediate conclusions that have adversely affected substantive law. Compounding the problem, the Supreme Court has shown excessive deference to the Federal Circuit in this area.
This article addresses the impact of the Federal Circuit’s faulty Seventh Amendment analyses on the substantive law in three areas related to claim scope: claim construction, the doctrine of equivalents and prosecution history estoppel. In each of these areas, statements and intermediate conclusions contained in the flawed Seventh Amendment analyses have created confusion, tension and conflict in the substantive law. The adverse impact has affected a host of issues ranging from the proper role of one of ordinary skill in the art, to the tension between claim scope under the doctrine of equivalents and claim construction. As a result, there is a pressing need to correct the Federal Circuit’s faulty statements and intermediate conclusions, which have been consistently applied and reapplied in cases, and revisit the Seventh Amendment issue in Hilton Davis which was left undecided by the Supreme Court.

   

Volume 27
Issue 2
Page 333

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Killing Good Patents to Wipe Out Bad Patents: Bilski, The Evolution of Patentable Subject Matter Rules, and the Inability to Save Valuable Patents Using the Reissue Statute  ▲

Authors: Edward Van Gieson and Paul Stellman

Abstract

The Supreme Court's Bilski decision changed the rules on
patentable subject matter. This means that software and business method inventions must be claimed in specific ways in order for a patent to be valid. Bilski affects all software and business method patents, including patents issued to innovative and widely admired technology companies. As a result, many "good" patents are now potentially invalid. The U.S. patent system includes a patent reissue statute and long-standing reissue jurisprudence that promises patent owners the ability to liberally correct the claims of an issued patent, even when there has been a change in law after a patent has issued. The change in the Supreme Court's jurisprudence on patentable subject matter would not be a severe problem if the reissue statute worked as originally intended. However, patent reissue proceedings, as currently implemented by the United States Patent & Trademark Office, are agonizingly slow and layered with restrictive rules. This makes reissue impractical, and even impossible, in many situations. Moreover, even if patents can be corrected to address Bilski, the patent owner still loses out on the ordinary investment backed expectations of owning an enforceable patent during lengthy reissue proceedings. As such, there is a potential regulatory taking from patent owners, because they are effectively unable to use reissue to adapt to the Supreme Court's changing rules on patentable subject matter. Solutions are proposed for how the courts and the patent office can apply the reissue statute to permit patent owners to restore their valuable patent rights efficiently and effectively.

   

Volume 27
Issue 2
Page 403

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Patenting Intangible Methods: Revisiting Benson (1972) After Bilski (2010)  ▲

Author: Donald S. Chisum

Abstract

The 2010 Bilski decision on business method patents and
intangible methods expressly relies on a trilogy of cases, Benson (1972), Flook (1978) and Diehr (1981). In light of that reliance, it is important to review the 1972 Benson decision in its technological, industrial and legal context. Benson ruled that a presumptively novel algorithm on number conversion useful for computer programming was unpatentable. It postulated without analysis or factual support that algorithms were “ideas.” It then ruled that the claims in question were unpatentable because they covered all practical applications of the algorithm (idea). This essay shows that Benson was driven not by any sound policy analysis but rather by an anti-patent bias prevalent in the 1960s and 1970s and by the interests of the then-dominant computer hardware company (IBM), which was opposed to the creation of an independent software industry.

   

Volume 27
Issue 2
Page 445

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Free-Riders and Trademark Law's First Sale Rule  ▲

Author: David W. Barnes

Abstract

This article considers how to balance the benefits to consumers
and to creators of intellectual property from enforcing exclusive rights with the benefits to consumers and to competitors from permitting free-riding in the context of resale of trademarked goods. Exclusive rights limit the incentive-undermining effect of one person reaping the benefits of another’s investment without paying. The first sale rule in copyright, patent, and trademark law complements the rationale for exclusive rights. Once a person has paid the price demanded by the rights-holder for the article embodying the expression, invention, or source-indicating symbol, the free-riding concern has normally been addressed. The first sale rule permits the buyer to resell that article. Consumers of intellectual property benefit from encouraging the fixation of original expressions, disclosure of novel and non-obvious inventions, and promulgation of symbols indicating the source, qualities, and characteristics of products. Trademarks are unique because consumers retain an interest in maintaining creators’ exclusive rights to source-indicating symbols beyond providing an incentive to produce the information. To ensure continuity in a symbol’s ability to distinguish one supplier’s goods from others and protect consumers’ ability to locate goods that satisfy their needs in the future, the law limits buyers’ rights to resell goods bearing others’ marks. Consumers may be misled if trademark goods are modified, repackaged, or incorporated into other goods that are then resold with the trademark affixed. Stimulated by a 2010 Ninth Circuit opinion prohibiting such resales even if buyer is not confused, this article explores the proper scope of the trademark first sale defense.

   

Volume 27
Issue 3
Page 457

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When Foreigners Infringe Patents: An Empirical Look at the Involvement of Foreign Defendants in Patent Litigation in the U.S.  ▲

Author: Marketa Trimble

Abstract

This article presents results from a multiple-year project
concerned with the involvement of foreign (non-U.S.) entities in U.S. patent litigation. A comparison of data from 2004 and 2009 that cover 5,407 patent cases filed in U.S. federal district courts in those two years evidences an increase in the number of cases involving foreign defendants, and thus an increasing potential for cross-border enforcement problems. With this basic finding, the research supports the proposition advanced by a number of intellectual property scholars in the U.S. and abroad that rules need to be established to facilitate a smooth process for recognition and enforcement of foreign judgments in intellectual property cases. The research fills a significant gap in the existing literature, which has relied so far on only isolated individual cases to illustrate cross-border enforcement problems; comprehensive empirical evidence has not existed to show a growing need for improved rules for recognition and enforcement. In addition to providing missing evidence, this article uses data concerning the involvement of foreign defendants to reveal remarkable facts about the changing landscape of patent litigation in the U.S.

   

Volume 27
Issue 3
Page 499

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Lead Prior Art Methodology: Applying Lead Compound Case Law to Other Disciplines for Enhanced Objectivity  ▲

Authors: David J. Martens , Carla Mouta, Ph.D. , Stacy D. Lewis , Thomas L. Irving , and Carlos M. Téllez, Ph.D

Abstract

The present paper aims to complement the traditional Graham-
KSR obviousness framework by extrapolating the well-established “lead compound” approach used in the obviousness analysis of new chemical compounds across all fields of innovative endeavor. This extrapolation is designed to provide proponents and opponents of prima facie obviousness for a particular claimed invention, judges, and patent examiners with tools to analyze obviousness to an improved degree of objectivity. To that end, the authors present a methodology for identifying those pieces of prior art (“Lead Prior Art”) that the mythical person of ordinary skill in the art (“POSITA”), without employing hindsight, would have selected for subsequent modification at the time that the invention was made. That method is based on identification of starting point(s) for further innovation that one of ordinary skill in the art would have selected based on the relevant available information at the time the invention was made, as statutorily required. “Relevant available information” includes teachings or suggestions in the prior art as well as inferences that would have been apparent to a POSITA based on ordinary creativity and common sense. In general, any information properly available to a POSITA that is capable of elevating the desirability of one or more potential starting points over others is relevant to the identification of the Lead Prior Art. In some situations, the Lead Prior Art’s potential for modification to achieve the claimed invention may have been very apparent or even certain to a POSITA, given the relevant information that would have been available to the POSITA. In other situations, however, a POSITA’s ability to have achieved the claimed invention given the Lead Prior Art may implicate questions of lack of straightforwardness and “reasonable expectations of success.” Once Lead Prior Art is selected, modifications to that Lead Prior Art may be identified and evaluated to determine whether a POSITA could have achieved the claimed invention from the Lead Prior Art. That evaluation is then used in a determination of nonobviousness or of prima facie obviousness. Thus, rather than making a single, and quite possibly relatively difficult, determination of whether the differences between the prior art and the claimed invention as a whole would have been prima facie obvious, our methodology allows that difficult determination, given appropriate facts, to be partitioned into several simpler, objective determinations that lead to a deduction that the claimed invention is either nonobvious or prima facie obvious. A major goal, of course, is to reduce problems caused by hindsight bias, “pigeonholing,” and/or lack of harmonized analytical methodology. Accordingly, we present our proposal, essentially a synthesis and extension of existing principles, as a step forward in obviousness analysis that can be utilized by patent prosecutors, patent litigators, and decision makers at both the United States Patent and Trademark Office (“USPTO”) and in the relevant U.S. courts.

    30305_scc_27 claimed compound invention obviousness point posita prior sheet starting

Volume 27
Issue 3
Page 551

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Analysis of the Entire Market Value Rule: Arduous Royalty Base Determinations, Unjust Damage Rewards, and Empirical Approaches to Measuring Consumer Demand  ▲

Author: Ravi Mohan

Abstract

Inspired by the unpredictability of patent value apportionment in
complex technologies and the thicket of mobile patent litigation, this article analyzes the entire market value rule. When applicable, the rule allows infringement damages to be based on market value of the infringing product, which includes both infringing and non-infringing features. Considering the convergence of multiple complex technologies in a single device, such a rule could result in unfair damage awards. Advancing a study of the Apple iPhone 4, a device that is the subject of significant and varied patent litigation, this article argues that consumers will ultimately suffer because patentee overcompensation is a realistic possibility in light of current Federal Circuit jurisprudence. To address resulting overcompensation issues, this article explores statistical methods in an effort to produce more reliable damage base determinations. The article concludes by making suggestions to give the rule more teeth, and suggests that while patent value apportionment is difficult, it is not impossible.

   

Volume 27
Issue 3
Page 639

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Judicially Re(de)fining Software Patent Eligibility II: A Survey of Post-Bilski Jurisprudence  ▲

Author: Blake Reese

Abstract

This paper was written for the 2011 Santa Clara Computer and High Technology Law Journal Symposium that took place on January 21, 2011. This paper briefly reviews both of the Federal Circuit’s and Supreme Court’s Bilski decisions and the Federal Circuit’s, district courts’, and ITC’s substantive responses to them that issued by the date of the symposium.

    bilski claim computer court image issue machine method patent transformation

Volume 27
Issue 4
Page 673

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Four Principles for Calculating Reasonable Royalties in Patent Infringement Litigation  ▲

Author: Thomas F. Cotter

Abstract

The development of more accurate methodologies for calculating reasonable royalties in patent litigation has been the focus of intense interest in patent reform circles over the past decade. This article argues that a rational system for awarding reasonable royalties for patent infringement would be premised on four related principles: (1) that in awarding retrospective damages (damages for past acts of infringement) courts should take the scope of substantive patent law as fixed; (2) that the baseline damages recovery for prevailing patent owners should be the amount that restores them to the position they would have enjoyed, but for the infringement; (3) that courts should depart from this baseline when doing so is necessary to attain optimal deterrence; and (4) that, in attempting to replicate the license the parties would have negotiated ex ante but for the infringement, subject to some exceptions courts should authorize the consideration of factors that the parties realistically would have used, and should exclude consideration of certain other factors that lack a sound basis.

    award court damage infringement license patent patentee profit royalty value

Volume 27
Issue 4
Page 725

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Patent Value Apportionment Rules for Complex, Multi-Patent Products  ▲

Authors: Damien Geradin and Anne Layne-Farrar
    component entire holder licensee licensing market patent product royalty value

Volume 27
Issue 4
Page 763

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Legal Ethics and Non-Practicing Entities: Being on the Receiving End Matters Too  ▲

Author: David Hricik
    circuit claim counsel court discovery federal infringement litigation patent patentee

Volume 27
Issue 4
Page 793

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