An Overview and Comparison of U.S. and Japanese Patent Litigation, Part II

Kyle Pietari

The forces of globalization and nations’ investments in their patent systems are making the enforcement of patent rights an increasingly international practice. Though the patent systems of Japan and the United States differ in many fundamental ways, both are key jurisdictions. The aim of this two-part article is to provide a thorough overview and comparison of the major aspects of patent litigation in the U.S. and Japan. It is written from a litigator’s perspective, to demystify the system of each nation for someone familiar with that of the other nation.


Bifurcation of Validity and Infringement Determinations

Janice Kwon and Mark Vallone

A large majority of jurisdictions have adopted a “unified” (or “combined”) patent litigation system, wherein the same court adjudicates the validity and infringement of a patent. For example, prior to the implementation of the America Invents Act (“AIA”), in the United States, the same court would adjudicate both an infringement claim and an invalidity defense thereto. However, a handful of other jurisdictions, such as Germany and China, have adopted a bifurcated system wherein one court supported by technical experts adjudicates patent validity and a separate court or agency adjudicates patent infringement. Infringement proceedings are quickly completed under the assumption that the patent is valid, and the judgment can be enforced before the validity of the patent is determined. Other countries, such as Belgium, Japan, and now the United States, are de facto or “optional” bifurcated systems—while the patent litigation system on its face is a “unified” system, wherein the same court adjudicating infringement can also review validity issues, patent infringement proceedings may be suspended until parallel validity proceedings in the Patent Office are completed.


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.


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.


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.


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.


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.


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.

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