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.