08/06/13

Volume 95, Issue 2

  • A Critical Analysis of a Legislative Black Swan in an Age of Preconceived Notions and Special-Interest Lobbying — Charles E. Miller and Daniel P. Archibald
  • The Big Lawsuits Keep on Coming: An Analysis of Extortive Pornographic “Trolling Lawsuits” and Preventive Approaches — Amy Rosen
  • ICANN’T Help Myself: Beneficial Adjustments to the New Generic Top-Level Domain Name Expansion Process — Brandon Marsh
  • Lessons from the Federal Circuit: Avoiding Unpatentability for Life Science Inventions — Brandon Zuniga

A Critical Analysis of a Legislative Black Swan in an Age of Preconceived Notions and Special-Interest Lobbying

By Charles E. Miller and Daniel P. Archibald

The second part in a two-part series dealing with the subject of judicial review of U.S. Patent and Trademark Office decisions in patent cases. The previous article dealt with the admissibility of new evidence in district court civil actions seeking plenary adjudication of adverse decisions by the agency in patent applications. The present article critically examines the broad impact of the America Invents Act on the right of plenary district court adjudicatory recourse from USPTO.

The Big Lawsuits Keep on Coming: An Analysis of Extortive Pornographic “Trolling Lawsuits” and Preventive Approaches

By Amy Rosen

In recent years, pornography companies have been filing lawsuits, known as “trolling lawsuits,” against as many as five thousand John Doe defendants for copyright infringement of its porno- graphic works. The attorneys that represent pornography companies never intend to go to trial, and only want to use scare tactics to coerce a maximization of settlements from these shamed defendants. This article addresses three possible solutions to the problem: The first solution is whether to create a new law that makes pornographic works exempt from copyright protections. The second solution is whether the statutory damages within the Copyright Act are unconstitutional. The third solution is whether the joinder rule in the Federal Rules of Civil Procedure should be interpreted so that these John Does cannot be joined into one lawsuit. This paper posits that the third solution would best prevent pornographic companies from filing these “trolling lawsuits” against many defendants, and therefore stop this type of coercive settlement bullying.

ICANN’T Help Myself: Beneficial Adjustments to the New Generic Top-Leve Domain Name Expansion Process

By Brandon Marsh

The Internet Corporation for Assigned Names and Numbers (ICANN) recently implemented a generic top-level domain name (gTLD) expansion process. Trademark owners have expressed concern over these new gTLDs, citing fear of incurring costly fees from defensive registrations. ICANN has spent years developing the procedures behind the expansion process, receiving feedback from its community of global Internet stakeholders. This Comment highlights the potential problem areas the expansion process and offers recommendations that ICANN should adopt to help prevent harm to trademark owners. Part I provides background information about ICANN, the history of the Internet, and the development of gTLD dispute mechanisms. Part II explains the potential problem areas in the new gTLD Applicant Guidebook that address mechanisms within the gTLD application process and new gTLD post-delegation mechanisms. Part III makes recommendations that will strengthen the evaluation and delegation procedures within the application process, and strengthen the new rights protection mechanisms (RPMs) introduced in the Applicant Guidebook. Specifically, this Comment recommends that ICANN remove the use in commerce requirement from some of its RPMs, adopt a hybrid auction model for its string contention procedure, fine tune some the objections procedures, and adopt a hybrid special designation priority and first out system for metering delegated gTLDs. This Comment concludes that in the face of mounting criticism of its handling of the new gTLD expansion process, ICANN must do its best to properly implement these gTLDs to protect trademark owners’ rights.

Lessons from the Federal Circuit: Avoiding Unpatentability for Life Science Inventions

By Brandon Zuniga

Patent portfolios are often a life science company’s most important asset. However, developing and maintaining a valuable patent portfolio is easier said than done. One complicating factor is the relatively high rate at which the Federal Circuit reverses district court decisions. In order to mitigate the risk of having a patent invalidated at the Federal Circuit, patent practitioners are well-ad- vised to search out and understand recent trends in Federal Circuit case law. In an effort to simplify this time-consuming yet necessary task, this Comment provides a tabular summary of reported Federal Circuit decisions from 2010 and 2011 that involved the invalidity of at least one life science patent claim. For these cases, the table summarizes the legal bases for invalidity at issue and indicates whether the challenged claim was upheld or invalidated. Finally, this Comment also summarizes several unsuccessful arguments from the cases included in the tabular summary. It is hoped that by drawing attention to these unsuccessful arguments, patent practitioners can avoid repeating past mistakes.

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