Peter Lee: Accession and Patent Remedies

We often refer to patents as "property," so can traditional property remedies teach us something about appropriate remedies in patent infringement cases? This is what Professor Peter Lee (UC Davis) argues in his forthcoming article, The Accession Insight and Patent Infringement Remedies, which I had the opportunity to hear him discuss last month at Fordham Law. (Full disclosure: I edited Lee's Patent Law and the Two Cultures and am already a fan of his writing style.)

Lee considers the doctrine of accession, which governs the "mistaken improvement" of property. In a canonical accession case, Wetherbee v. Green (Mich. 1871), Wetherbee chopped down $25 worth of trees under a faulty license and made $700 worth of barrel hoops. The Michigan Supreme Court held that as long as Wetherbee was acting in good faith, title to the wood would transfer and he would only need to compensate the true owners for their $25 loss, rather than giving them the $700 barrel hoops.

So what happens, Lee asks, if Wetherbee's fictitious great-great-granddaughter patents a revolutionary new battery and begins commercializing it, only to be sued for infringing a patent covering an older battery design? What if she is unable to negotiate a reasonable licensing agreement?

Mortarboard Patents

Yale Law's Commencement is today. Although square graduation hats have been around since the 16th century, there have continued to be improvements in mortarboard technology; for example, a quick Google Patents search revealed that three Chicago inventors filed mortarboard patents in the 1930s, and Ohio-based Thomas La Maida filed three patents in the 1950s. And maybe I should have a graduation cap cover?

Unfortunately, I was unable to locate any scholarship discussing this important topic. But congratulations to all my graduating classmates!

Top 10 Most-Cited Patent Articles

Update 6/10/11: I have realized that there are a lot of problems with using WestlawNext for broad searches like this. For example, I realized that Mark Lemley's Rational Ignorance at the Patent Office has 368 citations—more than any on this list—but it doesn't show up when you search the JLR database for "patent," even though it has "patent" in the title. And if you search JLR for "TI:patent" the most-cited article only has 73 citations—none of the articles below are included. So the list below contains short descriptions of some highly cited patent articles, but I no longer believe that these are the most-cited patent articles of the past 15 years. If anyone discovers how WestlawNext decides what is included in a search, please let me know.

The Federal Circuit cites legal scholarship as frequently as other circuits, according to a study by David Schwartz and Lee Petherbridge (Patently-O has a nice summary). I have also heard that patent scholarship tends to be more widely read than other legal scholarship, both because many law review articles have practical value and because patent practitioners often work at a high academic level (I have no evidence to support this claim, but it seems plausible). Of course, most citations to patent scholarship come from other scholarship and secondary sources. So what are the most cited patent law articles?

Michael Carrier on the Patent-Antitrust Paradox

Studying for my antitrust exam made me think about the intersection of patents and antitrust—something we only had time to touch on briefly during the class. I've already blogged about the chapters my professor, George Priest, wrote for the Kauffman Foundation's new book on innovation, including Chapter 8 on the role of antitrust law in promoting innovation. But to learn more about the specific patent-antitrust intersection, I read Unraveling the Patent-Antitrust Paradox (U. Pa. L. Rev. 2002) by Professor Michael Carrier (Rutgers Law), which seems to be the most-cited article to tackle the topic in the past decade.

Patent Law, State Law, and Abraxis v. Navinta

I am studying for my federal jurisdiction exam, so I have been thinking about how patent law fits into the themes of this course. We used the classic casebook, Hart and Wechsler's The Federal Courts and the Federal System, and one of the themes emphasized by the book is the interstitial nature of federal law. From p. 459:

Federal law is generally interstitial in its nature. It rarely occupies a legal field completely, totally excluding all participation by the legal systems of the states. . . . It builds upon legal relationships established by the states, altering or supplanting them only so far as necessary . . . . Congress acts, in short, against the background of the total corpus juris of the states in much the way that a state legislature acts against the background of the common law, assumed to govern unless changed by legislation.

One might think that patent law is entirely federal, but Professor Amar (who has also reviewed an earlier edition of the casebook) liked to remind us that federal law is never in a vacuum.

Kara Swanson: Feminism, Corsets, and IP

This is a guest post by Allison Tait, a Yale 3L with a Yale Ph.D. in French literature. Allison writes about women's property and marriage regulation and is the former Editor-in-Chief of the Yale Journal of Law & the Humanities.

What do feminism, the corset, and intellectual property have in common? Quite a bit, it turns out, according to Kara W. Swanson (Northeastern Law) in her latest paper, Getting a Grip on the Corset: A Feminist Analysis of Patent Law. For Swanson, feminine interventions in patent-protected technology converge in the corset. The corset involved women as both consumers and litigants. The corset constructed gender by shaping the feminine form into a graceful silhouette with a small waist. And the corset narrated gender by calling into question the divide between public and private in Egbert v. Lippmann—the 1881 “corset case” that provided a foundational examination of the public use doctrine. The case turned on the question of Francis Lee Barnes’ right to her deceased husband’s patent for an improvement in corset springs. Problems abounded for Francis because the Court cast her as a public woman at a time when the public space of the market belonged to men and the private sphere of domestic relations to women.

Sarah Tran on Expediting Green Patents

The PTO's Green Technology Pilot Program, which expedites review of green patents, "looks far greener than it actually is," argues Sarah Tran (SMU Law) in Expediting Innovation: The Quest for a New Sputnik Moment (forthcoming in the Harvard Environmental Law Review). Tran argues that the PTO should reduce obstacles to expedition in order to "better optimize the constitutional patent bargain while responding to critical public needs." Although there are problems with the Sputnik analogy, I agree that developing green technologies should be a top priority, and we should think about how to support both creation of and access to green patents.

The Green Technology Pilot Program was launched in December 2009 in response to green patent programs in the UK, Japan, Australia, and Korea. But Tran points out that it was limited to patents already in the system falling within a small subset of technology classes, with further limitations on types and number of claims. Perhaps more problematic, "accelerated review was only available for one year to applications already in the system—the program had no relevance to technologies that had not yet been invented." But even now that many of these restrictions have been removed, the program remains under-enrolled. What's wrong with it, and how can it be improved?

Monday Deadline To Present at IP Scholars Conference

This year's IP Scholars Conference is August 11-12 at DePaul in Chicago. According to the conference website, requests to present should be made no later than May 2, which is Monday. I hope to be there (talking about my draft paper on disclosure), and I hope to meet some blog readers there!

Seaman on Willful Patent Infringement

What effect has In re Seagate had on willful infringement findings? Seagate raised the bar for willfulness by requiring patentees to show "objective recklessness." Christopher Seaman (Chicago-Kent Law) addresses this question in Willful Patent Infringement and Enhanced Damages After In re Seagate: An Empirical Study (forthcoming in the Iowa Law Review). Seaman created a dataset of all patent willfulness cases from September 2004 to July 2010 (straddling the Seagate decision in August 2007); the paper says that data "will be made publicly available on the author's website," but they don't appear to be posted yet.

Although "[m]any observers predicted that [Seagate's] heightened standard would result in far fewer willfulness findings and enhanced damage awards," Seaman's empirical study "finds that willful infringement was found only about 10% less often after Seagate." For a concise summary of the specific findings, see Peter Zura's post on his 271 Patent Blog. Of course, with studies of this sort it is always difficult to separate the effect of the new legal rule from the decisions of the parties over which cases to litigate, so it is hard to know what conclusions we can draw, but I think Seaman's findings are still useful.

15 Years of TRIPS Implementation

The Journal of Intellectual Property Law at the University of Georgia Law School hosted a conference in January called "15 Years of TRIPS Implementation: Intellectual Property Protection From a Global Perspective." Peter Yu (Drake Law), who organized the conference, presented TRIPS and Its Achilles' Heel. Yu examines "why the TRIPS Agreement fails to provide effective global enforcement of intellectual property rights" and "lessons that can be drawn from the continuous battle between developed and less developed countries over international intellectual property enforcement norms."

Edward Lee (Chicago-Kent Law) presented Measuring TRIPS Compliance and Defiance: The WTO Compliance Scorecard, which "proposes the tabulation of a TRIPS Compliance Scorecard measuring a country's attempt to correct any treaty violation that a WTO panel or the Appellate Body has found against the country. . . . Two alternative methods are offered – a simple and a complex score to track the violating country's response. Scorecards are computed for WTO countries under both methods; in both cases, the U.S. ends up with the lowest score in 2011."

The other papers presented don't appear to be online:

• Donald Harris (Temple Law), Evaluating the Success of TRIPS by Looking to Compulsory Licensing
• Sean Flynn (American University Washington College of Law), From TRIPS to ACTA: The Rise of the Enforcement Agenda
• Ruth Okediji (Minnesota Law), If WIPO Leads, Should the World Follow?: Decentralizing IP Norm-making Processes and the Norms That Result Therefrom
• Henning Grosse Ruse-Khan (Max Planck Institute for Intellectual Property, Competition and Tax Law), The International Law Relation Between TRIPS and Subsequent TRIPS-Plus Free Trade Agreements: Towards Safeguarding TRIPS Flexibilities?
• Susan Sell (George Washington), TRIPS Was Never Enough: TRIPS-Plus, ACTA, and the Trans-Pacific Partnership Negotiations

Do You Want To Blog About IP Scholarship?

Due to my clerkship plans this fall, I will be unable to blog from Sept. 2011 until Sept. 2012. But I'm sure 2011-12 will see lots of great patent and IP scholarship, and it would be great to have some blog posts about it here. So if you are interested in joining me as a co-blogger on Written Description (to begin as soon as you like, and to continue even after my clerkship ends), send me an email at lisa.ouellette@yale.edu to tell me (1) why you are interested and (2) a little about at least one patent/IP article that you would want to blog about. This blog has gotten great shout-outs from sites like The Volokh Conspiracy, Concurring Opinions, Patently-O, PriorSmart IP News, and SCOTUSblog since it began this spring, and I think it is a fantastic opportunity for law students or young academics to get their voices heard.

Also, if any blog readers will be at the Fordham IP Conference next week, feel free to email me and let me know. I would love to meet up and hear about any papers you are working on! I will probably be posting less frequently over the next month during exams, but I will want lots to blog about this summer.

Are Biotech Patents Enabled?

Stanford 3L Dmitry Karshtedt, who has guest posted on this blog, has a new post on Stanford's Law and Biosciences Blog about biologics, which are complicated drugs like erythropoietin that are typically made using living cells, as distinct from easily replicated small-molecule drugs like aspirin.

Karshtedt discusses his new paper, Limits on Hard-To-Reproduce Inventions: Process Elements and Biotechnology's Compliance with the Enablement Requirement, in which he argues that claim limitations can help enable biotech patents. I have also discussed the enablement problem for biologics starting at ¶ 106 of Access to Bio-Knowledge: From Gene Patents to Biomedical Materials, which cites Gregory Mandel's argument that many biotech patents fail enablement. What do readers think: is enablement a problem for biotech? Should biotech patents disclose more? I'd like to think about this issue more as I revise my paper on patent disclosure.

Does Microsoft v. i4i Matter?

Tomorrow, the Supreme Court will hear oral argument in Microsoft v. i4i Limited Partnership, which examines whether the invalidity defense of 35 U.S.C. § 282 must always be proved by clear and convincing evidence. Microsoft has argued that the standard should be a preponderance of the evidence, especially when the prior art used to contest validity is "unconsidered evidence," or evidence not considered by the Patent and Trademark Office (PTO).

Amicus briefs from the legal academic community generally support Microsoft. A brief of 37 law, business, and economics professors (with counsel Mark Lemley) argues that given the constraints on PTO review (e.g., that examiners only have 16-17 hours per patent), the clear and convincing evidence standard is appropriate only when the PTO considered an issue on the record. This echos a 2007 Stanford Law Review article by Lemley and Doug Lichtman, and Lichtman makes the same point in a (tritely titled) New York Times op-ed. Microsoft is also supported by a brief from the William Mitchell Intellectual Property Institute, arguing that the clear and convincing evidence standard is "historically anomalous" and "conflicts with general legal principles," and a brief from digital IP scholar Lee Hollaar, arguing that the heightened standard raises particular problems for software patents. But does the standard of patent validity actually matter?

David Fagundes on Roller Derby IP

Can you learn something about intellectual property by studying roller derby girls? Apparently yes: David Fagundes (Southwestern Law) has posted an entertaining new article, Talk Derby to Me: Emergent Intellectual Property Norms Governing Roller Derby Pseudonyms (forthcoming in the Texas Law Review). Fagundes expands on work by Robert Ellickson and others on the role of social norms in creating order without law. From the abstract:

This analysis of derby names shows that IP norms emerge independently of law’s substantive (un)availability, so long as the relevant group is close-knit and the norms are welfare-maximizing. These groups are especially likely to craft formal regulation and registration schemes to buttress informal norms where the relevant community is identity-constitutive, and where the intangible goods arise from nonmarket production. In addition to this critique of existing explanations for IP norm emergence, this study suggests a counter-theory for the emergence of user-generated IP governance systems, casts (further) doubt on the coherence of the prevailing neoclassical economic assumptions underlying IP law, and calls into question what it means for rules to be law.

If, like me, you hadn't heard of roller derby pseudonyms, check out the description of them on pp. 11-12, with names including Tara Armov, Paris Killton, Venus de Maul'r, Paris Troika, Madam Ovary, and Raven Seaward.

New Book on Innovation: Rules for Growth

An impressive array of authors have put out a new book, Rules for Growth: Promoting Innovation and Growth Through Legal Reform (free download), funded and organized by the Kauffman Foundation. The book covers a dizzying array of topics, from immigration to tort reform. Although the length (494 pages) is daunting, those who just want the take-home message can look at Table 1.1 on pp. 17-22 for the specific policy recommendations. For example, in terms of PTO reform, the book recommends (1) a second-pair-of-eyes review to weed out bad patents; (2) changing incentives for patent examiners; (3) a tiered review process; and (4) a post-grant opposition process.

Here is the Table of Contents, along with notes about what struck me during my brief skim: