Slides and papers from the 20th Annual Berkeley Center for Law and Technology/Berkeley Technology Law Journal Symposium - focused on IP and software are now posted. Colleen Chien and I thought we would discuss a few highlights (with some commentary sprinkled in):
David Hayes' opening keynote on the history of software and IP was terrific.
The general tenor was that copyright rose and fell with a lot of uncertainty in
between. Just was copyright fell, patent rose, and is now falling, with a lot
of uncertainty in between. And trade secret law has remained generally steady
throughout. David has long been the Chair of the Intellectual Property Group of Fenwick and West, former home to USPTO Director Michelle Lee, as well as IP professors Brenda Simon, Steve Yelderman, and Colleen Chien and is one of the wisest and most experienced
IP counselors in the valley. (Relatedly, Michael Risch's former firm was founded by former Fenwick & West lawyers.)
Peter Menell's masterful presentation on copyright and software spanned decades
and ended with a Star Wars message, "May the Fair Use Be With You."
Randall Picker took a different view of copyright and software, focusing
instead on whether reuse was simply an add-on/clone or a new platform/core product. Thus, he
thought Sega v. Accolade came out wrong because allowing fair use for an
unlicensed game undermined the discount pricing for game consoles, but thought
Whelan v. Jaslow (a case nearly everyone hates) came out properly because the
infringing software was a me-too clone. Borland, on the other hand, created a
whole new spreadsheet program to create competition. In related work, Risch published "How can Whelan v. Jaslow and Lotus v. Borland Both be
Right?" some 15 years ago.
Felix Wu presented an interesting talk about how the copyright
"abstraction-filtration-comparison" test might be used to determine
the meaning of "means plus function" claims in patent law.
MIT's Randall Davis's "technical talk" explained how software is made
and how abstractions are the essence of software. It's turtles all the way
down: one level that seems concrete is merely an abstraction when viewed from
the level below. The challenge, it seems, is that calling anything abstract can
have wide meaning.
Rob Merges further discussed how we might define abstract. His suggestion was to look at abstract as the opposite of concrete and definite. Thus, patents would need to be far more detailed than many that are being rejected now, but such a standard might be more clear to apply.
Arti Rai discussed a similar solution, noting that lower levels of abstraction were more likely to be affirmed. Furthermore, solutions to computer specific problems seem to hold a key. Rai and Merges should be posting papers on these topics soon.
Kevin Collins presented a draft paper on Williamson v. Citrix Online. He
posited that Williamson would present difficult challenges for courts trying to
determine structure - including structure that's supposedly present in the
claim. He presented some ideas about how to think about solutions to the
Similarly, Lee Van Pelt showed some difficulties with Williamson (including
Williamson itself) in practice.
Michael Risch's talk and paper leaves off where Hayes ended, with the fall of
patents. It explores whether or not, in the wake of the trouble software
patents are in, developers might turn to trade secret to protect visible
features, and what the implications might be. It turns out that less than a
week after the conference, a software company won a $940m jury verdict on
exactly this theory.
Colleen Chien's talk explored, if software is eating the world (H/T MarcAndreesen), how much IP and its default allotments matter, in a world where
contract is king, and monopolies are coming from data, network effects,
scale (a la Thiel) and, possibly, winner take all dynamics, as discussed on Mike Masnick’s recent podcast rather than patents and copyrights. It presents early
results and an early draft paper from an analysis of ~2000 technology agreements and
some 30k sales involving software, finding evidence of both technology and
Aaron Perzanowski's presentation and forthcoming book with Jason Schultz suggests that perhaps the IoT should be known as IoThings-We-Don't-Own.
Relatedly, John Duffy addressed the first sale doctrine and presented his recent paper with Richard Hynes that shows how commercial law ties to and explains how exhaustion should work. This is relevant to the Federal Circuit's recent decision in the Lexmark case on international exhaustion.
Second day lunchtime keynote, William Raduchel, talked about the importance of
culture to innovation and IP. As Mark Zuckerberg mentioned on an investor call,
Facebook develops openly (some of it's IT infrastructure and non-core innovation, at least) because that's what it's developers demand and need to
get the job done. He also discussed how "deep learning" may change how we consider IP, because computers will now be writing the code that produces creative and inventive output.
The empirical panel provided a helpful overview of recent studies. Pam Samuelson’s talk highlighted changes in the software industry, particularly with the growth of software as a service (SaAS), the cloud, the app market, the IoT, and embedded software as well as the software IP protection landscape since the Berkeley Patent Survey was carried out in 2007. Samuelson also discussed how recent invalidations of algorithms and data structure patents will affect copyright. If those features are too abstract for patenting, then we should consider whether they are too abstract for copyright protection, even if they might be expressed in multiple ways. (NB: A return to the old Baker v. Selden conundrum: bookkeeping systems are the province of patents, not copyrights. But can you patent a bookkeeping system? Maybe a long time ago, but surely not today).
John Allison gave an overview of what we know (empirically) about software patents.
And the chief IP officers panel was a highlight, as each person had a different perspective on the system based on its own position - though they did agree on a few basics, such as the need for some way to appropriate investments and the preference for clear lines.
There is much more at the link to the symposium, including slides, drafts, and past (but relevant) papers. It's well worth a look! TAP is also running a seven-part series on the conference, starting with this overview of David Hayes' talk.