2012 at Written Description

2012 was a fun year at Written Description; there were fantastic posts by Sarah Tran and her RAs, Chris Suarez, and Tan Mau Wu while I finished clerking, and it was great to return to blogging in September. I've gotten to read papers such as Melissa Wasserman's argument that PTO patentability decisions deserve Chevron deference under the AIA, Mark Lemley's software patent solution, and Buccafusco & Heald's study of the impact of a novel's copyright status on audiobook recordings. We learned that Judge O'Malley writes the longest Federal Circuit opinions, and I also added a new page of Supreme Court patent cases (showing that every current Justice has authored at least one patent-related majority opinion), and a page of patent law references (including tips on searching legislative history). I am also excited about extending Mike Madison's list of classic patent scholarship with additions by TJ Chiang, Michael Risch, and Ted Sichelman (and more to come!).

Spring IP Conferences

As reported by the newly redesigned madisonian.net, the annual Works in Progress Intellectual Property (WIPIP) conference will be held at Seton Hall University School of Law on February 22-23, 2013, and the third annual Patent Conference (PatCon 3) will be held at at the IIT Chicago-Kent College of Law on April 12-13, 2013. The deadline to present at WIPIP was December 17; the deadline for PatCon is February 4.

Sichelman: "Recent" (1980-1999) Classic Patent Scholarship

The next addition to the Classic Scholarship Project is by Ted Sichelman, Professor of Law at the University of San Diego School of Law, whose scholarship is available here. He recently presented his work on purging patent law of "private law" remedies at the SCU software patent conference. I also highly recommend his work on commercialization and on the nuances of patenting by startups. All commentary below is his. —Lisa

My list of “classic” works adds to the outstanding efforts of Professors Michael Madison, Michael Risch, and TJ Chiang. As they’ve identified most of the older classics (and post-1999 works are “off limits”), I’ve focused on works between 1980 and 1999—making this a “recent” (but not “instant”) classics list.

Wasserman on Chevron Deference for the PTO

The America Invents Act (AIA) shifts interpretive authority over patentability standards from the courts to the PTO, argues Melissa Wasserman in her forthcoming article, The Changing Guard of Patent Law: Chevron Deference for the PTO. My co-blogger Sarah Tran has argued that the AIA gives the PTO some substantive rulemaking authority, though not over core patentability standards. Arti Rai has stated that post-grant review proceedings "bear the hallmarks of formal adjudication" and that the PTO could ask for Chevron deference under the AIA. But Wasserman’s article is the first detailed examination I've seen of this issue, and it illustrates how a compelling legal challenge seeking greater deference to the PTO on patentability issues might proceed.

Rai & Sampat on Bayh-Dole Underreporting

I’m very interested in university patenting and licensing under the Bayh-Dole Act, so I enjoyed the new Nature Biotechnology piece by Arti Rai (Duke Law) and Bhaven Sampat (Columbia Public Health), in which they report that universities don’t meet reporting requirements when they patent the results of federally funded research.

Top 10 New IP Paper Downloads

Here's an updated list of the most downloaded IP papers that were posted on SSRN in the past 60 days:

Risch: Classic Patent Scholarship

The next addition to my Classic Scholarship Project is from Professor Michael Risch (Villanova Law), whose scholarship has been featured on Written Description and is available here on SSRN. He recently looked at over 3700 early American patents and found some important differences from many characterizations of the early patent system. Here is his list of classic patent scholarship (where I set an arbitrary cutoff of pre-2000), which he divided into two categories (patent theory and historical work)—links and comments in [brackets] are from me:

Balganesh - The "Hot News" Myth

What role does property law occupy in hot news misappropriation claims? In ‘Hot News’: The Enduring Myth of Property in News, Shyamkrishna Balganesh (Penn Law) identifies a shift in the rhetoric and underlying principles advanced by courts when confronted with hot news misappropriation claims. Rather than focus on unfair competition, courts have begun to analyze hot news misappropriation claims through the lens of property rights. Balganesh laments this shift and the corresponding "enduring myth" that the hot news misappropriation doctrine is founded on a property right in the news. He instead encourages courts to understand this doctrine as concerned with unfair competition and resulting unjust enrichment between direct competitors and differentiates the rationale supporting the doctrine from the rationale supporting intellectual property rights. In the process, he addresses the fundamental challenges to the continued existence of the doctrine if courts continue to view it as advancing property interests.

Thankful for Patents

Surprisingly, I have not located any scholarship devoted to the important category of Thanksgiving patents. But you can get your Thanksgiving patent law fix by reading about turkey hunting patents at IP Watchdog (following up on last year's post on turkey fryer patents), a supplemented turkey feed patent at Patent Docs (issued just last month!), a turkey decoration patent at IP Wise, and turkey stuffing innovations at Intellogist. The USPTO even celebrated some Thanksgiving-related patents back in 2001, though it hasn't become an annual tradition.

SCU Software Patent Conference Recap

Friday was Santa Clara's Solutions to the Software Patent Problem conference, which I've previously blogged about, and I was able to follow some of the panels from New Haven via the live stream. Here's a recap, based on the parts I watched online and the detailed #HTLI tweets—thanks to all the tweeters who made this possible!

Keynote #1: What is the Problem?

Richard Stallman said software needs protection from software patents (or "computational idea" patents), and he proposed a safe harbor for software on generally-used computer hardware. The only good computational patent is a dead computational patent, he said. Kent Walker said there is a patent quality problem, a litigation problem (with internet patents litigated nine times more), and a troll problem (90% of cases settle, but when they do go to court, trolls lose 76% of the time, and they cost $29-80B). Patent litigation is a tax on innovation. Walker said we need to stop bad patents from issuing, weed out existing bad patents, and have clearer rules for damages and awarding costs. An attorney from Intellectual Ventures asked, if software patents are such a problem, why doesn't Europe dominate software since they don't patent software? Walker said US dominance came in the 90s before meaningful software patents.

Panel #1: Legal Reform, Part 1

James Bessen said we've had restrictions on patenting abstract ideas since 1972, but money trumps precedent, and lawyers have played word games to get software patents approved. In 2011, the straight legal cost of defending troll suits was $7B, and the deadweight loss from suits was $70B. He proposed adjusting maintenance fees to deter NPEs (i.e., "make pollutors pay" through a Pigovian tax). Colleen Chien explained why TRIPS Article 27 ("patents shall be available ... in all fields of technology") does not prevent industry-specific software patent reform: TRIPS allows exceptions (like our surgical methods and tax strategy exceptions) if they are narrow, well-defined, and don't prejudice legitimate interests. Brian Love proposed a patent term reduction: because most NPE suits are filed at the end of the patent term, even a 3 year reduction would impact 60% of patent troll claims. And while getting a term reduction is not politically feasible, we could effectively do it with higher maintenance fees. Christal Sheppard said Congress can affect patents by simply passing a "Sense of Congress" resolution. The audience poll for "whose solution do you like best?" was close, with Brian Love at 37% and Colleen Chien at 32%.

Panel #2: Agency Reform

Peter Menell argued that the problem is unclear claims and suggested requiring patent applicants to fill out standardized templates to improve patent clarity (and this solution won the audience poll). John Allison said we shouldn't single out software patents and suggested coming up with techniques to make it more costly to game the regulations. Arti Rai said software should learn from bioinformatics and focus on getting rid of patents that don't satisfy written description or definiteness; she thinks the enablement standard is too fuzzy to be useful to examiners. We don't need new law; we just need to enforce 112. Michael Risch said poor examination led to bad patents, but the problem will subside; we just need to tweak the current rules. He noted that coming up with the right obviousness standard is difficult because for software, the hard part is identifying the problem to be solved. He also said that enablement is not a solution: you can't simultaneously claim that everything is obvious and that everything is not enabled. Christina Mulligan noted that even if all the patents are great (satisfying obviousness, 112, etc.), there is still a problem because no one can find the patents they might be infringing. She argued that we should reduce the costs of accidental infringement by (1) having an independent invention defense; (2) making it more difficult for NPEs to recover; and (3) having lower reasonable royalties.

Keynote #2: Views from the Trenches

Caroline Dennison (USPTO) announced that Michelle Lee, formerly of Google, will be the director of the new PTO Silicon Valley office. She also said the PTO will be soliciting comments on improving claim clarity. Hon. Edith Ramirez said the FTC is concerned about use of the ITC as a way of getting around eBay, and that they are urging the ITC to use a public interest test to determine when injunctions are appropriate. They are holding a workshop with the DOJ on December 10 to discuss patent assertion entities (PAEs), which will be available as a webcast. Hon. Paul Grewal emphasized that from a trial judge's perspective, the when of all these questions is as important as the what; he asked folks to consider how different reforms fit into a trial schedule.

Panel #3: Legal Reform, Part 2

Mark Lemley discussed his solution to software patent overclaiming, which I've blogged about previously; he also won the audience poll for this panel. John Duffy (who came in second in the poll) said most of these solutions are software-specific kludges (a characterization Stallman objected to during the Q&A), and that a more elegant solution is to use obviousness to restrict patents based on Graham's inducement standard (only allowing patents on "those inventions which would not be disclosed or devised but for the inducement of a patent"), an idea he and Michael Abramowicz described in their excellent Yale Law Journal article. Ted Sichelman suggested purging patent law of "private law" remedies, arguing that "make-whole" remedies are often unnecessary to incentivize innovation. Samson Vermont said patent law is out of touch with its purpose, which is to optimize the enjoyment of operable inventions, not to promote invention for its own sake. He argued that infringement should be excused when the patentee does not practice the invention, when the infringer is an independent inventor, and when there is a notice failure in the relevant field. Commenter Suzanne Michel of Google said she likes Lemley's idea and that it was also independently invented by someone at Google—another example for his Myth of the Sole Inventor? She also loves Duffy's inducement standard for obviousness. Heidi Keefe argued that clients need to be willing to stick their necks out for legal changes, even if it means waiting for the Supreme Court to reverse the Federal Circuit. She also argued that it is important to explain the ecosystem to jurors, including that high damage awards will come back to them as higher prices.

Panel #4: Self Help

I didn't watch this panel and the tweets were more confusing than for other panels, but it appears that Keith Bergelt discussed defensive publication of prior art, Dan Ravicher discussed public interest lawsuits, Wendy Seltzer discussed royalty-free standards, and Jennifer Urban (who won the audience poll) discussed defensive patenting. Twitter's Benjamin Lee said they've fought every lawsuit over the past six years and haven't paid a cent to an NPE. Brad Burnham of Union Square Ventures said 50% of the companies in his portfolio have been threatened by patents. He said the independent invention defense would have covered every suit they are facing, and Mark Lemley's functional claiming proposal would also help.

Keynote #3

Julie Samuels (who won the poll for favorite keynote and also deserves credit for dubbing the event the #patentprom) emphasized the importance of community building around these proposals, especially post SOPA/PIPA when policymakers are listening to the tech community. Although Congress is nervous about TRIPS, they shouldn't be. Pam Samuelson said there is no silver bullet because there are so many aspects to the patent problem.

Patent Publication & Default Rules

Economists from the USPTO (Chief Economist Stuart Graham and former visiting scholar Deepak Hegde) recently posted a new paper to SSRN: Do Inventors Value Secrecy in Patenting? Evidence from the American Inventor's Protection Act of 1999. Their answer to their title's question is essentially that inventors don't value secrecy as much as you might think.

Top 10 New IP Paper Downloads

Colleen Chien still tops the list of the most downloaded IP papers that were posted on SSRN in the past 60 days:

Chiang: Classic Patent Scholarship

As I described a few weeks ago, over the coming months I will build on Mike Madison's lists of "lost classics" of IP scholarship by asking IP professors to list some works that influenced their own scholarship and that they think young IP scholars should be familiar with. As the first addition to this project, Tun-Jen Chiang (George Mason) has suggested four additions to Madison's list of patent classics, which are listed below along with my own brief summaries.

Lampe & Moser on Patent Pools

Patent pools are often touted as a solution to patent thickets and other problems. But pools might actually discourage innovation, argue economists Ryan Lampe (DePaul) and Petra Moser (Stanford) in a pair of NBER working papers based on studies of historical patent pools. In their 2009 paper, Do Patent Pools Encourage Innovation? Evidence from the 19th-Century Sewing Machine Industry, they concluded that the first patent pool in U.S. history, the sewing machine pool, "appears to have discouraged patenting and innovation, in particular for the members of the pool." In their new (August 2012) article, Do Patent Pools Encourage Innovation? Evidence from 20 U.S. Industries under the New Deal, they "find a 16% decline in patenting in response to the creation of a pool."

Arewa: Welcome to Nollywood

How should Nollywood, the rapidly growing film industry in Nigeria, protect its intellectual property (IP)? Professor Olufunmilayo B. Arewa (University of California Irvine) addresses this question in her article, The Rise of Nollywood: Creators, Entrepreneurs, and Pirates. Her article explains that a weak infrastructure coupled with a fast-paced evolution of the industry created a "leapfrog" effect in which the industry skipped through stages of the development life-cycle. As a result, certain stages of both business and law did not have sufficient time to develop. These weak environments led to the unauthorized distribution of films and copyright violations through piracy. Professor Arewa's article suggests that to sustain growth not only will Nollywood need to better enforce IP rights, but it will also need to encourage a business strategy to monetize piracy.

Gugliuzza Debate: Rethinking Federal Circuit Jurisdiction

This blog recently featured an impressive and provocative article by Paul Gugliuzza titled Rethinking Federal Circuit Jurisdiction (original post) addressing what many scholars consider the "patent crisis." Now thirty years since its creation, the U.S. Court of Appeals for the Federal Circuit has in recent years increasingly become the subject of heated contention and widespread criticism within the intellectual property community. Since appearing in the June 2012 edition, the proposals set forth by Professor Gugliuzza to reconfigure the Federal Circuit's jurisdiction have triggered a debate at the Georgetown Law Journal. Two engaging response comments have been submitted, followed by a reply from Professor Gugliuzza. The remainder of this post highlights the key aspects of this debate.

Perzanowski on Tattoo IP Norms

Here's a fun paper for a Sunday afternoon: in Intellectual Property Norms in the Tattoo Industry, Aaron Perzanowski (Wayne State, currently visiting at Notre Dame) argues that despite the availability of copyright protection, the tattoo industry relies on "a complex set of social norms enforced through informal mechanisms" to resolve disputes over copying.

Classic Patent Scholarship

The primary focus of this blog is new IP scholarship, but it is often hard to appreciate (and even harder to write) new scholarship without understanding the historical context of the work. So what are the classic works of IP scholarship that young scholars should be aware of?

More Software Patent Commentary

Software patents are a hot topic these days! Three weeks ago, I posted about Lemley's proposal to fix software patents with functional claiming, and last week I summarized various "software patent solutions" offered by patent scholars at Santa Clara's upcoming conference. Tim Lee wrote for Ars Technica and Forbes about the Federal Circuit's responsibility for the "recent explosion of patent litigation in the software industry," prompting rebuttals from Gene Quinn at IP Watchdog. Then the New York Times ran a front-page article (and NPR had a related interview) describing how "the marketplace for new ideas has been corrupted by software patents used as destructive weapons," prompting another response from Quinn, in which he argued that this "arms race" is exactly what the patent system is meant to encourage.

Mulligan: Numerus Clausus for IP

Should the number of ways to transfer intellectual property rights be limited? Real property may only be held in certain standardized forms (fee simple, lease, etc.), a principle first termed "numerus clausus" ("the number is closed") by Merrill & Smith in a 2000 Yale Law Journal article. "The justifications for the numerus clausus principle in real property law are even stronger in the intellectual property context," argues Christina Mulligan (Yale Law School Information Society Project) in her forthcoming article, A Numerus Clausus Principle for Intellectual Property.

Top 10 New IP Paper Downloads

Here's an updated list of the most downloaded IP papers that were posted on SSRN in the past 60 days:

Chinese IP Law

This is a guest post by Camilla Hrdy (cahrdy@gmail.com), a Visiting Fellow with the Information Society Project at Yale Law School.

Software Patent Solutions

Readers who have been following our recent posts on Lemley's software patent solution might be interested in Santa Clara's upcoming conference, Solutions to the Software Patent Problem, on November 16, 2012. Want to know what the speakers have already said about software patents?

Fairfield - Avatar Experimentation

How can virtual world researchers minimize the effects of their research on study populations? Messages, apps, and notifications retrieved by hand-held devices have amalgamated the real world and virtual world. As the line distinguishing the worlds fades, Joshua Fairfield, in Avatar Experimentation: Human Subjects Research in Virtual Worlds, offers comprehensive guidelines for approaching research in virtual worlds. Fairfield advises researchers to recognize the risk of real harm to a human research subject’s real world identity, role in the virtual community, real and virtual economic investments, and virtual reputation. The article first recognizes the challenges of ethical experimental design in the virtual world and culminates by recommending helpful approaches to virtual world research.

Buccafusco & Heald: Copyright Extensions

Should Congress consider extending copyrights yet again to prevent works from entering the public domain in 2018? No, argue Christopher Buccafusco (Chicago-Kent) and Paul Heald (Illinois and CIPPM) in Do Bad Things Happen When Works Enter the Public Domain?: Empirical Tests of Copyright Term Extension (forthcoming in BTLJ). Based on existing evidence and their own creative experiments, they conclude that bad things do not happen when works enter the public domain, and that "the significant costs of additional copyright protection for already-existing works are not justified by the benefits claimed for it."

More on Lemley and Software Patents

Tan Mau Wu's post yesterday on Mark Lemley's Software Patents and the Return of Functional Claiming questions whether restricting software claims to disclosed implementations will really make a difference. Recent posts by Simon Phipps at InfoWorld and by Mike Masnick at Techdirt have suggested that it would, calling Lemley's proposal "[t]he software patent solution" that will "[f]ix[] software patents."

Lemley: Software Patents and Functional Claiming

Here’s a software claim from a recent Federal Circuit decision (pulled from Patently-O):
1. A data processing system to enable the exchange of an obligation between parties, the system comprising:

a data storage unit having stored therein information about a shadow credit record and shadow debit record for a party, independent from a credit record and debit record maintained by an exchange institution; and

a computer, coupled to said data storage unit, that is configured to (a) receive a transaction; (b) electronically adjust said shadow credit record and/or said shadow debit record in order to effect an exchange obligation arising from said transaction, allowing only those transactions that do not result in a value of said shadow debit record being less than a value of said shadow credit record; and (c) generate an instruction to said exchange institution at the end of a period of time to adjust said credit record and/or said debit record in accordance with the adjustment of said shadow credit record and/or said shadow debit record, wherein said instruction being an irrevocable, time invariant obligation placed on said exchange institution.

Helpful Patent Scholarship

Do you know of an article that you think would be helpful in a pending patent case? The Green Bag has created a "Helpful Scholarship" site for law professors to suggest scholarship that might be helpful in pending Supreme Court cases (see summary on PrawfsBlawg), and I would like to similarly highlight scholarship that might be helpful in pending patent cases. 

CAFC Opinion Length

Do Federal Circuit judges sometimes write needlessly "longish opinions"? Judge Edmondson of the Eleventh Circuit has been in the news this week for his critique of a 103-page majority opinion—not for its substance, but for its length:

Non-Faculty IPSC Scholars

I missed this year's IP Scholars Conference at Stanford because of clerking, but the IPSC website has abstracts and papers, the conference schedule, and recordings of each session (although some recordings seem to be linked to the wrong session title). So I thought that like last year, I would highlight the work of IP scholars without a tenure-track faculty position, whom I have attempted to group into VAPs & Fellows, graduate students, and practitioners. Please contact me with corrections, and if you were at IPSC, feel free to post a comment about your favorite talk!

Top 10 New IP Paper Downloads

What are the most downloaded IP papers that were posted on SSRN in the past 60 days?

Kapczynski: IP Internalism

Is IP the best way to provide incentives for the production of scientific and cultural knowledge? In The Cost of Price: Why and How To Get Beyond Intellectual Property Internalism, Amy Kapczynski (Yale Law School) builds on a growing dissent from the focus on questions "internal" to IP, arguing that scholars should expand their focus to other information-generating mechanisms, such as grants, prizes, and "commons-based" production. (Full disclosure: I was an RA for Professor Kapczynski while I was a student at Yale.) Kapczynski does not argue that a particular mechanism is best; rather, she argues for an "external" approach that considers the tradeoffs and complementarities between different mechanisms in light of different normative inquiries, including values other than efficiency.

Oskar Liivak—Finding Invention

Could limiting the scope of patents to the patented invention provide clear boundaries and the proper breadth of protection to inventors? Professor Oskar Liivak (Cornell Law School) convincingly argues in his article Finding Invention (forthcoming in the Florida State University Law Review) that the protection and predictability of patents may be improved by extending exclusion only to the “patented invention.” In his article, he proposes that the “patented invention” should be viewed as the set of embodiments disclosed in the patent itself, he addresses how an invention-based patent scope would be capable of reaching after arising technology, and he distinguishes the circumstances where narrow and broad protection should be available.

Phillips & Yoo: Faculty Citation Rankings

Who are the most-cited IP/cyberlaw profs at the top 16 law schools? James Phillips (JSP student at Berkeley) and John Yoo (Berkeley) recently posted The Cite Stuff: Inventing a Better Law Faculty Relevance Measure on SSRN. Using Brian Leiter's methodology for finding citation counts in law reviews, the authors calculated citation counts for professors at the top 16 schools in U.S. News's academic peer rankings. They calculated a per professor per year average by adding all citations for the faculty and dividing by the number of years of experience for the faculty, which they argue reduces bias against young scholars. I am no expert on citation studies, so I will just report the results that might be of the most interest to IP scholars.

Top 10 Law Professors in IP/Cyberlaw at Top-16 Schools

1. Mark Lemley (Stanford)
2. Katherine Strandburg (NYU)
3. Robert Merges (Berkeley)
4. Oskar Liivak (Cornell)
5. Julie Cohen (Georgetown)
6. Yochai Benkler (Harvard)
7. Margaret Radin (Michigan)
8. Jane Ginsburg (Columbia)
9. John Thomas (Georgetown)
10. Rebecca Eisenberg (Michigan)

Top 5 Law Schools in IP/Cyberlaw

1. Harvard (Benkler, Lessig)
2. Stanford (Lemley)
3. NYU (Strandburg)
4. Georgetown (Cohen, Thomas)
5. Michigan (Radin, Eisenberg)

Remember that these are the "top" schools only in the sense that they have one or two highly-cited faculty, and that this list would change if one of these professors makes a lateral move. For comparison, here is Leiter's list of the most cited IP/cyberlaw professors based on citations from 2000 to 2007, which includes two professors outside the top 16 law schools: Thomas McCarthy (University of San Francisco) and Dan Burk (then at Minnesota, now at Irvine).

New Patent Resources

After a year-long blogging hiatus, I'm back! Written Description has a new layout and updated Facebook and Twitter pages—what do you think? If you want to follow by email or RSS, you can use the "Subscribe" gadget on the right.

I have also added a new guide to basic sources for U.S. patent law research (including tips for searching legislative history) and a list of Supreme Court patent cases (currently back to 1952). Did you know that every current Justice has authored at least one patent-related majority opinion? Feel free to send comments or corrections to lisa.ouellette@aya.yale.edu. You can also send suggestions of papers to review, although at this point my to-blog-about list has grown pretty long!

David Olson & Stefania Fusco—Rules Versus Standards: Competing Notions of Inconsistency Robustness in Patent Law

Why do the Federal Circuit and the Supreme Court repeatedly diverge on the adoption of rules versus standards in patent law? In Rules Versus Standards: Competing Notions of Inconsistency Robustness in Patent Law, Alabama Law Review (forthcoming 2012), Professors David Olson (Boston College Law School) and Stefania Fusco (DePaul College of Law) apply the inconsistency robustness (“IR”) paradigm that is maturing in the computer science field to analyze the Federal Circuit and Supreme Court’s crafting of patent law rules and standards. This article highlights areas of patent law where the Supreme Court and Federal Circuit diverge on the implementation of rules versus standards, demonstrates how this pattern can be explained through the IR paradigm, and shows that the courts may be able to more adeptly craft an optimal patent law through a holistic view of IR.

Joseph Scott Miller—Substance, Procedure, and the Divided Patent Power

How should the Federal Circuit determine whether a Patent Office rule is within the agency’s statutory authority? The court has traditionally held that the Patent Office has the authority to issue procedural rules but not substantive ones. See, e.g., Tafas v. Doll. However, the court has struggled to identify a suitable test to define the boundary between procedural and substantive rules. Id. Professor Joseph Scott Miller (University of Georgia School of Law) proposes in Substance, Procedure, and the Divided Patent Power, 63 Admin. L. Rev. 31 (2011), that the court use a “sorting standard” modeled after the framework courts use in interpreting the Rules Enabling Act (REA).

Paul R. Gugliuzza—Rethinking Federal Circuit Jurisdiction

Does the Federal Circuit’s non-patent caseload impact the development of its patent jurisprudence? In Rethinking Federal Circuit Jurisdiction, 100 Geo. L.J. 1437 (2012), Professor Paul R. Gugliuzza (University of Florida Levin College of Law) argues that the Federal Circuit’s non-patent docket might underexpose the court to relevant issues impacting innovation policy and that the court’s concentrated patent docket may marginalize some of its non-patent cases. Professor Gugliuzza concludes by proposing a framework for a reimagined Federal Circuit docket that would rectify these problems.

Thomas F. Cotter—An Economic Analysis of Patent Law’s Inequitable Conduct Doctrine

Does the inequitable conduct doctrine induce an optimal level of disclosure by patentees? In his article An Economic Analysis of Patent Law’s Inequitable Conduct Doctrine, 53 Ariz. L. Rev. 735 (2011), Professor Thomas F. Cotter (Briggs and Morgan Professor of Law, University of Minnesota Law School) suggests that despite reforms post-Therasense, the inequitable conduct doctrine lacks the requisite clarity to encourage efficient disclosure and may consequently induce risk-averse agents to overdisclose.

Tun-Jen Chiang: The Upside Down Inequitable Conduct Defense

Is the doctrine of inequitable conduct adequately tailored to deter patent fraud? In The Upside Down Inequitable Conduct Defense (forthcoming Northwestern University Law Review), Professor Tun-Jen Chiang argues that the inequitable conduct defense is improperly tailored because it creates too much deterrence for minor errors while providing inadequate deterrence for serious patent fraud. This inequity gives rise to three implications: (1) patentees have upside-down incentives to engage in dishonest conduct; (2) the variability of the penalty produces upside-down incentives for accused infringers in litigation; and (3) reform should focus more on adjusting the remedy for inequitable conduct, and less on the standard for attaching liability.

Christopher R. Leslie: Patent Tying, Price Discrimination, and Innovation

Do patent tying arrangements diminish incentives for innovation? In his recent article Patent Tying, Price Discrimination, and Innovation, 77 Antitrust Law Journal 811 (2011), Professor Christopher R. Leslie (University of California, Irvine School of Law) argues that, contrary to the views of commentators who justify patent tying as pro-innovation, metered tying can diminish incentives for innovation. He therefore recommends that antitrust law not recognize a price discrimination defense to patent tying.

Lemley & McKenna: Is Pepsi Really a Substitute for Coke? Market Definition in Antitrust and IP

Traditionally, antitrust law has viewed product markets as relatively static domains where products compete solely based on price and quality. But intellectual property rights complicate this simple picture. For example, while basic intuition would make one assume that Pepsi and Coke compete in the same market (the market for colas or sodas, for example), reality suggests otherwise. Though research indicates that consumers prefer Pepsi over Coke in blind taste tests (better quality), consumers still prefer Coke over Pepsi when the blinders are removed—the “Coke” trademark, on its own, differentiates the product such that Coke and Pepsi may, in reality, compete in separate markets. Using this observation as a springboard for their recently-released working paper, Professors Mark Lemley of Stanford Law School and Mark P. McKenna at Notre Dame Law School ask us to consider the impact of IP rights on market power generally; and, in so doing, they provide some useful insights about the use of market definition in IP cases.

Michael Burstein: Exchanging Information without Intellectual Property

Are intellectual property rights necessary for robust innovation? In his article, Exchanging Information Without Intellectual Property (forthcoming Texas Law Review), Professor Michael Burstein analyzes the role of intellectual property in information exchange. The article explores the range of potential strategies parties may use to enable commercially significant exchange and the ways in which those strategies interact within complex business, cultural, and legal environments.

Christina Bohannan: Copyright Infringement and Harmless Speech

Should copyright law be subject to the same harm requirements as other speech-regulating restrictions? In her article, Copyright Infringement and Harmless Speech, Professor Christina Bohannan persuasively argues that without a harm requirement, copyright law unnecessarily suppresses copying that would otherwise enhance democratic governance by increasing access to creative and informative works. To support this argument, Professor Bohannan methodically explains how First Amendment case law can supplant the vagaries of fair use or statutory litigation to protect important free speech values.

Rebecca Tushnet - Worth a Thousand Words: The Images of Copyright Law

Has the textual model of copyright law restricted its ability to properly govern images? In her article Worth a Thousand Words: The Images of Copyright Law, 125 Harv. L. Rev. 683 (2012), Professor Rebecca Tushnet (Georgetown University Law Center) discusses the contradiction and confusion that courts have encountered when assessing whether images are copyrightable and determining if copyrights have been infringed. She proposes that the “substantial similarity” test for determining whether a party has infringed the reproduction right of a copyright be abandoned, a true “reproduction” right that protects against exact (or near-exact) copying be adopted in its place, and an end to analyzing images as if they were text.

Guest Blogger--David Taylor on Patent Misjoinder

Many thanks to Sarah Tran for highlighting my most recent scholarship on the Written Description blog yesterday and permitting me the opportunity to post a short response.

The blog entry was particularly timely. Just this past Friday the Federal Circuit resolved the split of authority among district courts applying Federal Rule of Civil Procedure 20, which governs permissive joinder, in patent infringement cases. See In re EMC Corp., slip op. (Fed. Cir. May 4, 2012) (granting a petition for writ of mandamus). The Federal Circuit ultimately ordered the district court to reconsider the issues of severance and joinder of accused infringers using a standard articulated in the opinion.

David Taylor: Patent Misjoinder

How should district courts interpret the joinder provisions of the America Invents Act? In Patent Misjoinder (forthcoming New York University Law Review), Professor David Taylor provides a comprehensive analysis of 35 U.S.C. § 299 and offers a statutory interpretation that would maximize judicial efficiencies and avoid undue prejudice to accused infringers. To develop his interpretation, Professor Taylor considers the policy concerns of permissive joinder and how these concerns have led to divergent joinder standards.

Allison, Tiller, Zyontz, & Bligh: Patent Litigation and the Internet

Following State Street Bank and now Bilski, certain Internet business methods remain “patentable subject matter” under Section 101. Given the continued rise of the Internet and its increased role in nearly everyone’s everyday lives, it would be interesting to have a better understanding of how such Internet patents fare in litigation—especially in relation to ordinary patents that bear no relation to the Internet. Recently, a group of researchers, including John Allison of the University of Texas, Emerson Tiller of Northwestern, Samantha Zyontz of George Mason, and Tristan Bligh, published a piece in the Stanford Technology Law Review that continues this worthwhile empirical inquiry. The piece analyzed well over one thousand Internet patents, as well as several thousand non-Internet patents (NIPs).

Titled Patent Litigation and the Internet, their piece raises many intriguing empirical points. The piece generated evidence that Internet patents are far more likely to be litigated than NIPs, suggesting that Internet patent-holders may perceive their patents to have more value than the owners of NIPs perceive their patents. In absolute terms, over 10% of Internet patents were litigated, while only 1.36% of NIPs were litigated.

Sapna Kumar: The Accidental Agency?

Has the Court of Appeals for the Federal Circuit stripped the Patent Office of its administrative power? Professor Sapna Kumar’s article, The Accidental Agency (forthcoming Florida Law Review), explains how the Federal Circuit has essentially become the head of an executive agency. By interpreting the Administrative Procedure Act (“APA”) narrowly, disregarding Supreme Court precedent, and interpreting more appellate issues as questions of law, the Federal Circuit has become the de facto administrator of the Patent Act.

Ted Sichelman: Purging Patent Law of 'Private Law' Remedies

Do current patent law remedies efficiently promote innovation? In his article Purging Patent Law of ‘Private Law’ Remedies, Professor Ted Sichelman (University of San Diego School of Law) argues that patent law’s reliance on tort, contract, and property law models is conceptually flawed and proposes a regulatory model of patent law remedies that would optimize innovation. Professor Sichelman discusses the universally accepted goal of patent law, identifies deficiencies in existing remedy models, and suggests that patent law will more efficiently promote innovation by eradicating the private law moorings from patent law.

Michael Frakes & Melissa Wasserman – Does Agency Funding Affect Decision Making?: An Empirical Assessment of the PTO’s Granting Patterns

Does the Patent and Trademark Office's (PTO’s) budgetary structure influence the rate at which patents are granted? In Does Agency Funding Affect Decision Making?: An Empirical Assessment of the PTO’s Granting Patterns, 66 Vanderbilt Law Review (forthcoming 2013), Professors Melissa Wasserman and Michael Frakes analyze more than two decades of patent grant rates to identify how factors like entity size and technology affect an applicant’s ability to receive a patent. The results of this study suggest that financial incentives, and not just the merits of the invention, may be, in part, driving patentability decisions.

Christopher Buccafusco: Making Sense of Intellectual Property Law

Does the human sensory experience of a product determine whether it is copyrightable or patentable? In his forthcoming article Making Sense of Intellectual Property Law, Professor Christopher Buccafusco (Chicago-Kent College of Law) argues that intellectual property law has established a dichotomy between objects appealing to different senses and offers a novel modification of IP doctrine. He asserts that, traditionally, copyright involves works that have the aesthetic appeal associated with sight and sound, whereas the ‘functional’ connotation of touch, taste, and smell are typically classified in patent law. In this article, Professor Buccafusco suggests that traditional aesthetic theory has become outdated and proposes a change to intellectual property law that would recognize the unity of all senses.

Arti Rai – Patent Validity Across the Executive Branch: Ex Ante Foundations for Policy Development

What can the recent DNA patent controversies teach us about the role of executive agencies in shaping patent policy? In Professor Arti Rai’s essay: Patent Validity Across the Executive Branch: Ex Ante Foundations for Patent Development, Rai analyzes how systematic interagency debate can facilitate the development of beneficial patent policy ex ante. Professor Rai uses recent Supreme Court holdings to demonstrate that executive agencies like the International Trade Commission (ITC), the National Institute of Health (NIH), and the Department of Justice can work in tandem with the U.S. Patent and Trademark Office (PTO or Patent Office) to avoid some of the policy pitfalls created by the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) and Congress.

Gregory Mandel – To Promote the Creative Process: Intellectual Property and the Psychology of Creativity

Does intellectual property law promote creativity? Professor Gregory N. Mandel (Peter J. Liacouras Professor of Law and Associate Dean for Research, Temple University—Beasley School of Law) extensively explores the psychological effects of the patent and copyright systems and their impact on innovation in his article To Promote the Creative Process: Intellectual Property Law and the Psychology of Creativity, 86 Notre Dame L. Rev. 1999 (2011). In this article, Professor Mandel examines modern psychological research of various thought processes, motivation, and collaboration in an effort to reveal how intellectual property laws may affect the process of innovation.

Elizabeth Burleson & Winslow Burleson - Innovation Cooperation: Energy Biosciences and Law

Can the world avert catastrophic climate change through sustained legal cooperation resulting in environmentally efficient, sustainable technology? In Innovation Cooperation:Energy Biosciences and Law, Professors Elizabeth Burleson and Winslow Burleson discuss how different organizations must work together to overcome the imminent threats of climate change. The article delves into the international, legal, and societal barriers that prevent the diffusion of climate change technology while addressing the innovative steps that are being taken to overcome these obstacles.

Donald Chisum: Priority Among Competing Patent Applicants Under the America Invents Act

How will the “First Inventor to File” provisions of the America Invents Act (AIA) impact patent applications filed after the March 16, 2013 implementation date? Donald Chisum’s article, Priority Among Competing Patent Applicants Under the America Invents Act, utilizes a patent bar-esque hypothetical to highlight several important features of the new legislation. Chisum begins his article by outlining a fact pattern involving inventors A and B and the independent steps each inventor takes to patent invention X, a protein that controls muscle spasms.

Adam Mossoff- The Rise and Fall of the First American Patent Thicket: The Sewing Machine War of the 1850s

Have scholars and critics misconstrued patent thickets, incremental innovation, and patent trolling as modern phenomena? In The Rise and Fall of the First American Patent Thicket: The Sewing Machine War of the 1850s, Professor Adam Mossoff (George Mason University School of Law) thoroughly examines the history of the sewing machine and illustrates how these “modern” phenomena have long existed in innovation. In this article, Professor Mossoff provides an overwhelmingly informative historical study of the first American patent thicket and subsequent patent pool, discusses the importance of an in-depth historical analysis, and challenges a few widely-held assumptions.

Great Minds Don’t Always Think Alike: Patent Inflation Sparks Debate Among Scholars

A couple months ago this blog highlighted an intriguing recent article by Jonathan Masur titled Patent Inflation (original post) that presented a model for what the author has observed as a trend of expanding boundaries of patentability. Since that time, Professor Masur’s model of patent inflation has become a hot topic in patent law that has stimulated a hearty debate among three notable patent scholars. Masur’s original article has spawned two thought-provoking responses and a sur-reply. This post summarizes this captivating debate as it is unfolding at the The Yale Law Journal Online.

Jason Rantanen & Lee Petherbridge - Toward a System of Invention Registration: The Leahy-Smith America Invents Act

Does the America Invents Act create a process for patent amnesty? The economic ramifications of the newly created supplemental examination process are discussed by Professors Jason Rantanen and Lee Petherbridge in their highly engaging article, Toward a System of Invention Registration: The Leahy-Smith America Invents Act.

Mark Lemley: The Fractioning of Patent Law

Why is it that patent owners, despite seemingly having an abundance of advantages, seem to consistently lose their cases? In The Fractioning of Patent Law, Professor Mark A. Lemley (William H. Neukom Professor of Law and Director of the Stanford Program in Law, Science, and Technology) systematically explores the structure of modern patent law to provide a detailed, and distinctly probable, explanation for patent owners’ astonishingly low success rates in litigation.

Scott Kieff – The Perils of Patent Reform & Welcome to Patent Purgatory

What effect will the recently enacted America Invents Act (AIA) have on the commercialization of patents? Professor Scott Kieff’s essays, The Perils of Patent Reform and Welcome to Patent Purgatory, explore some reasons why the AIA may negatively influence the rate and the manner by which invention is brought to market.