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.