Feldman on IP Wrongs

Do we need a new doctrine of "inappropriate uses of intellectual property"? This is the proposal Robin Feldman (UC Hastings Law) makes in her working paper Inappropriate Uses of Intellectual Property—Intellectual Property Wrongs. Her broad new doctrine would (1) allow courts to dismiss suits when the plaintiff has behaved inappropriately; (2) allow courts to craft remedies that account for improper behavior; and (3) create an affirmative cause of action that allows for both damages and equitable relief.

Liebesman & Wilson: The Perils of the Online Secondary Sales Market

Have trademark holders succeeded in obtaining control of product distribution, past the first sale? In their article, The Mark of a Resold Good, authors Yvette Joy Liebesman (Professor at Saint Louis University School of Law), together with Benjamin Wilson (Law Clerk for the Honorable William D. Stiehl of the U.S. District Court for the Southern District of Illinois), warn that this is a real possibility.

Academic Commentary on Bowman v. Monsanto

On Tuesday, the Supreme Court hears argument in Bowman v. Monsanto. Monsanto sells patented Roundup Ready soybean seeds (genetically engineered to be resistant to Roundup) and authorizes farmers to sell the genetically identical progeny seeds to grain elevators, which typically sell these seeds to the public as a commodity. Bowman purchased commodity seeds from a grain elevator and used these for planting (correctly assuming that most of them would be Roundup Ready). In general, the doctrine of patent exhaustion would prevent Monsanto from asserting rights in the second-generation seeds, but the Federal Circuit held that patent exhaustion does not apply to self-replicating technologies such as seeds.

When should universities patent?

I spoke today about university patenting to the Yale Student Science Diplomats, a group of science graduate students who are interested in science policy issues. It was great to have a chance to engage with scientists about why we allow universities to file patents on federally funded research (which they are permitted to do under the Bayh-Dole Act), and what those justifications tell us about when public-minded universities should be filing patents. As I discuss in my YLJ Comment, patents are not needed to motivate university researchers to innovate or to disclose their inventions—university researchers were innovating and publishing their results long before Bayh-Dole, primarily out of a desire for prestige (and the resulting tenure and prizes). The most compelling justification for Bayh-Dole patents is commercialization theory, the idea that exclusive patent rights are necessary to bring inventions to market. This theory is more convincing for inventions like pharmaceuticals with high regulatory barriers and low imitation costs, but it does not make sense when the exclusive patent right is unnecessary for commercialization—something that is very difficult to determine.

The Federal Circuit & International Patent Law

How do informal interactions between judges shape international IP law? Chief Judge Rader of the Federal Circuit is highly influential in international patent law, but aside from one piece by a former intern of his, I am not aware of any scholarship that has attempted to measure or evaluate this influence. In 2001, then-Judge Rader stated (in a lecture published at 5 Marq. Intell. Prop. L. Rev. 1) that he had "travel[ed] to nearly fifty countries" and discussed patent law "with the judiciaries of many of these countries." He argued that the Federal Circuit has brought "uniformity" to patent law and "driv[en] much of the international marketplace and the dynamic success we are seeing around the world." He has also told this story (reprinted at 21 Fed. Circuit B.J. 331): "Several years [before 2011], our government sent me to China on a mission of importance. In Beijing, I met with the U.S. Ambassador, Sandy Rand, who asked me to encourage the Chinese judiciary to enforce non-Chinese [IP] rights as aggressively as Chinese IP rights."

Anderson & Menell: Informal Deference

Is it finally time to adopt a deferential standard of review in patent claim construction appeals? Professors Jonas Anderson and Peter Menell respond emphatically in the affirmative in their recent patent law scholarship, From De Novo Review to Informal Deference: An Historical, Empirical, and Normative Analysis of the Standard of Appellate Review for Patent Claim Construction. In the article, Anderson and Menell argue that the time is ripe to abandon the de novo review standard in favor of a deferential standard that comports with the inherent and unavoidable factual aspects of patent claim construction. The article first presents a comprehensive and insightful historical analysis of patent claim construction. It then reveals enlightening results of the authors' empirical study of Federal Circuit jurisprudence from 2000 through 2010, and provides a normative analysis to explain these findings. Finally, it proposes a pragmatic framework for a dual standard for reviewing claim construction rulings, a framework that promotes transparency and uniformity moving forward. The result is a must read for anyone interest in patent litigation, and more specifically in the appellate review of patent claim construction at the Federal Circuit.

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:

1. How the JPML Can Benefit from the Federal Circuit and Vice-Versa, by Christopher Paul Nofal (discussed on Written Description)
2. Money from Music: Survey Evidence on Musicians’ Revenue and Lessons About Copyright Incentives, by Peter C. DiCola (discussed on Techdirt, Duane Morris's blog, World IP Review, RT, Music Business Research, The Trichordist, etc.)
3. The Google Shortcut to Trademark Law, by Lisa Larrimore Ouellette (discussed on Eric Goldman's Technology & Marketing Law Blog)
4. Leistungsschutzrecht für Presseverlage: Müsste Google wirklich zahlen? – eine kartellrechtliche Analyse (Ancillary Copyright Law for News Publishers: Would Google Really Have to Pay? – An Antitrust Law Analysis), by Christian Kersting & Sebastian Dworschak (concludes that Google does not have antitrust obligation to index and display publishers' content if new law protected snippets ... but note that the paper is in German)
5. Patent Assertion Entities, by Colleen V. Chien (presentation slides from the DOJ/FTC workshop on PAEs)
6. The Law of Friction, by William McGeveran (analyzes benefits and drawbacks of "frictionless sharing," such as the Washington Post Social Reader automatically publishing users' activities on Facebook)
7. International Jurisdiction over Copyright Infringements in the Cloud, by Toshiyuki Kono & Paulius Jurcys
8. The HOB-Vín Judgment: A Failed Attempt to Standardise the Visual Imagery, Packaging and Appeal of Alcohol Products, by Alberto Alemanno
9. The Fashion of TV Show Formats, by Stefan Bechtold (discusses why the TV show format market is thriving despite low IP protection)
10. Top Tens in 2012: Patent, Trademark, Copyright and Trade Secret Cases, by Stephen M. McJohn

Who is teaching patent law? (Not Yale)

By "who" I mean both which schools and which professors. This is not a ranking of the best patent law programs—I was just curious about what patent classes were offered at the top USN schools, which might be of interest to students evaluating schools or to schools considering what courses to offer. Below are schools in order of the 2012 USN rankings, and classes with "patent" in the title from the 2012-13 course catalogs. Professors who have tenured or tenure-track positions at the listed school are in bold. If I found a page listing the school's IP faculty, the school name links to it.

Follow @PatentScholar for More IP Scholarship

For readers who aren't following on Twitter (and with apologies to those who are), I thought you might be interested to know that I regularly post links to SSRN abstracts that catch my eye. (I see far more interesting-sounding IP scholarship than I can read, and certainly more than I can blog about!) So if you want to see more IP scholarship (as well as a few other patent-related things), check out the Tweets from @PatentScholar once in a while. Here is a sampling of recent Tweets:

Dreyfuss: Classic Patent Scholarship

The next contribution to the Classic Patent Scholarship Project is from Professor Rochelle Dreyfuss (NYU), a giant in the field of intellectual property law. You can read her dazzling bio yourself, but more importantly, check out her scholarship. Her early work on the Federal Circuit is surely a classic in the institutional design literature, and she has revisited the court in later works that are also worth reading. She has also written insightful articles on topics ranging from business method patents to IP without IP, and I am currently enjoying her new book, A Neofederalist Vision of TRIPS (with Graeme Dinwoodie). She noted that many of the first classics that came to mind have already been mentioned, but she thinks these five works also belong on the list. Here are her additions, along with my own brief summaries:

Nofal on the JPML & the Federal Circuit

The Federal Circuit should be given exclusive appellate jurisdiction over suits consolidated by the Judicial Panel on Multidistrict Litigation (JPML), according to Chris Nofal's How the JPML Can Benefit from the Federal Circuit and Vice-Versa (recently published in IDEA). As regular blog readers know, I love featuring the work of new scholars, so I was pleased to see that Nofal just graduated from Northwestern Law last year (so he must have written this article while still a student). He is also a former patent examiner (his background is computer engineering) and current Covington associate. Nofal argues that both the JPML and the Federal Circuit have promoted "macro-level judicial economy" at the expense of "the just, speedy, and inexpensive determination of every action and proceeding," and that giving the Federal Circuit exclusive jurisdiction over JPML suits could help solve these problems. Nofal’s overarching aim is “to remedy procedures with an eye toward correcting outcomes.”