11/15/2017

Reconceptualizing Copyright Registration

Omri Alter

This Article considers the issue of copyright registration through the paradigm of behavioral economics. By considering the issue through a paradigm that has not been considered before, it results in a conclusion that stands face to face with copyright scholarship of recent years. This Article critiques the trend in the literature that advocates for strengthening the role of registration in copyright law. The Article does so by examining what is termed here as “registration dilemma,” which relates to the decision making done by authors to come to a conclusion regarding whether to register their work. The social benefits ascribed to the implementation of copyright registration by the conventional literature dealing with this issue are based on rational decision making of authors. Yet, this conventional model portrays only a limited picture. It does not account for a wide array of decisions that authors may take with regard to the registration dilemma, such as decisions that arise while considering behavioral models of decision making. Because the benefits of copyright registration rely on authors making rational decisions, the existence of decisions that are not based on these kinds of considerations imply that the intended goals will not be achieved. Hence, this Article proposes to downplay the role of registration and search for other means to achieve the same policy goals, without relying on authors’ decision making.

11/01/2017

Holmes on Patents: Or How I Learned to Stop Worrying and Love Patent Law 

Amelia Smith Rinehart

The writings and opinions of Oliver Wendell Holmes, Jr., have inspired generations of legal scholars to explain topics like pragmatic skepticism, legal positivism, legal realism, legal moralism, and other “legal-isms.” Justice Holmes—celebrated and contemptible, beloved and beleaguered, emphatically entrenched in the common law—stumbled into federal patent cases on the Supreme Court, yet there is little scholarship stemming from his few opinions in this area. As the twenty-first century ushers in a new gilded age, replete with important battles over patent law and policy as a mechanism for promoting innovation, Holmes’ unique outlook on public and private law (and patents) at the turn of the twentieth century may offer a new perspective within contemporary debates about patent law and its limitations.

10/26/2017

Uber & Alice: Could One Patent Really Take Down This Ridesharing Giant?

Douglas B. Wentzel

General Motors’ recent acquisition of ridesharing company Sidecar, licensing of its intellectual property, and half a billion dollar investment in Lyft each suggest that Uber’s likelihood of being sued for patent infringement is on the rise. General Motors now has the rights to assert U.S. Patent 6,356,838—“System and method for determining an efficient transportation route.” Uber’s infringement liability ultimately depends on the validity of this patent, which includes claims to computer-implemented methods and systems for procuring on-demand automobile-based transportation services. U.S. Patent 6,356,838 includes at least one means-plus function claim, and its claims as a whole implicate the Mayo/Alice twostep framework due to their computer implementation, making it an interesting specimen for analysis. This Article finds that Claims 12 and 18 of U.S. Patent 6,356,838 are patent-eligible under 35 U.S.C. § 101 and that Uber infringes each of these claims. The analysis performed and discussed herein evidences a patent-eligibility framework that generates uncertainty for patentees, creates instability in the relevant computer-implemented technology markets, and reduces the value of United States intellectual property. Ultimately, something must be done to address uncertainty and instability inherent in the Mayo/Alice framework if the United States intellectual property is to retain its status as the most valuable global currency.

10/20/2017

Technology Unions: How Technology Employees Can Advocate For Internet Freedom, Privacy, Intellectual Property Reform, and the Greater Good

Martin Skladany

The acute demand for programming, engineering, and scientific talent has put highly skilled and talented workers at Internet and technology behemoths-e.g., the Apples, Facebooks, and Googles of the world-in a unique position to promote change within their companies that would improve society. Such employees should band together to form technology unions in order to advocate for more responsible and enlightened policies by their employers on issues such as privacy, Internet freedom, and the commons and to encourage their employers to challenge competitors and governments that violate such policies. Given that external actors such as civil society and government have been ineffective in pressuring technology giants towards reform, it is time to generate pressure internally.

08/29/2017

Are Means-Plus-Function Claims Reasonably Certain to Require Tables of Support?

David Orange

The most likely victims of the Supreme Court’s Nautilus v. Biosig decision appear unaware of their fate. When the Court explained that patent claims must be more than merely “amenable to construction,” but rather must provide “reasonable certainty” in order to meet the requirements of the second section of 35 U.S.C. §112, it is actually claims invoking the sixth section of this statute, better known as means-plus-function claims, that could be invalidated first. Means-plus-function claims are at risk for exactly the reasons that attorneys include them: there is flexibility in matching the claim element to examples from the patent. The flexibility of means-plus-function claims is now on a collision course with the new reasonable certainty standard. Patent drafters seeking the protection of old means-plus-function standards may be creating the very “zone of uncertainty” that Nautilus prohibits. Without new case law, practitioners may not understand how to draft valid means-plus-function claims going forward. This paper considers both legal and practical considerations to forecast how the Patent Trial and Appeal Board will guide applicants.

08/23/2017

Patentee's Monetary Recovery From An Infringer - A Revisit

Richard L. Stroup, Cecilia Sanabria, Kelly C. Lu, & Daniel G. Chung

In 1977, the original article was published in this Journal, authored by a younger version of one of the authors, at the start of his legal career. Since then, much has changed. The Federal Circuit was created and given exclusive jurisdiction over patent appeals. The Supreme Court, the Federal Circuit, the district courts, and the U.S. Claims Court have published additional precedent, refining the law and its application. Congress has made a few changes to the law, although the majority of controlling statutes and types of available awards remain much the same. Yet, since 1977 the interpretation and application of the law has shifted in many ways.

08/15/2017

Claims With Ranges, the Result-Effective Variable, and In re Applied Materials

Tom Brody

Claims can be drafted to require a parameter associated with a value (number), range, or algorithm. Where a claim includes a parameter associated with a value, range, or algorithm, enhanced resistance to obviousness rejections can result because of case law requiring that the prior art disclose overlap and case law requiring the prior art disclose a goal-to-be-achieved in optimizing the value of the parameter. Case law requiring overlap is In re Peterson and In re Geisler, while case law requiring that the prior art disclose a goal-to-be-achieved in optimizing the parameter is In re Antonie and In re Boesch. In re Applied Materials describes both requirements. Rebuttal strategies include arguing that the prior art fails to disclose the same parameter as that required by the claim. Another strategy is to argue that the prior art fails to disclose one or both of overlap and the goal. Yet another type of rebuttal is to demonstrate that the prior art’s disclosed goal is associated with a parameter, but that it is not the same type of parameter as that is recited in the claim. Application of the above cases by the Board and examiners is unpredictable, because the Board and examiners sometimes base the rejection solely on In re Aller or only In re Gal (”design choice”). In re Aller and In re Gal case law are of low-stringency, and these bodies of case law work to the disadvantage of the inventor. 

08/05/2017

''Adapted to'' After Aspex

Sean Burke

A recent trio of Federal Circuit cases has exposed uncertainty about the meaning of the linking phrase “adapted to.” Under the new intrinsic evidence standard, “adapted to” is initially presumed to mean “configured to,” but may be broadened to mean “capable of” if there exists support in the claims and specification.

The intrinsic evidence test has caused three problems for patent practitioners. First, the presumption of the narrower “configured to” meaning violates the broadest reasonable interpretation standard at the Patent & Trademark Office. Second, the use of intrinsic evidence unavoidably imports limitations from the specification into the claims. Finally, litigators have exploited, and likely will continue to exploit, the two definitions of “adapted to” by advocating either the broad definition or the narrow definition, depending upon whether the party owns the patent in question.

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