Judge Richard Linn: Changing Times, Changing Demands

Which cases do the Federal Circuit judges think are the most important right now? On September 27, 2011, the Honorable Judge Richard Linn of the U.S. Court of Appeals for the Federal Circuit shared his views on which cases should make it to the top of the list when he gave a videotaped lecture on "Changing Times: Changing Demands" at Southern Methodist University Dedman School of Law in Dallas, Texas. Not surprisingly, his list corresponds well with academic scholarship.

Jay Kesan et al.--Developing a Comprehensive Patent Related Information Retrieval Tool

How can one reliably gather and identify pertinent data from such varied sources as litigation history, press releases, news articles, scientific literature, and foreign databases?  In a recent article, Jay Kesan and his colleagues in the theoretical and computational biophysics group at Illinois (Hang Yu) and in the civil and environmental engineering department at Stanford (Kincho Law, Siddarth Taduri, and Gloria Lau) explore potential frameworks for approaching this non-trivial task. Poorly performing search tools can result in millions of dollars in patent litigation or lost revenue—from erroneous preclearance searches to any resulting patent invalidation proceeding.  Accordingly, the inability to obtain and find critical information regarding patents and patent applications is a very serious problem.  Currently, cross-referencing hundreds of incompatible databases (operated by independent entities), wherein millions of documents are stored in various file formats and contain data arranged in a number of ways, is a very laborious and perhaps impossible task.  In Developing a Comprehensive Patent Related Information Retrieval Tool, Kesan and his colleagues directly address the need to create algorithms capable of cross-referencing data in multiple domains to identify the most relevant documents for a user's specific needs and also establish a basic framework for developing such tools.

David L. Schwartz: Prospectivity and Retroactivity in Patent Law

Should the Federal Circuit issue a higher proportion of non-precedential opinions? In Prospectivity and Retroactivity in Patent Law, Professor David Schwartz of the Chicago-Kent College of Law writes a draft article that raises this and many other fascinating questions.

Reflecting on the role Federal Circuit precedent plays on patent rights, Schwartz uses his piece to illustrate that, while many Federal Circuit opinions have significant retroactive effects on pre-existing patents, most of these opinions have few (if any) prospective effects on future patents. His point, essentially, is that patents, once issued, are very rarely capable of meaningful amendment or modification, so court opinions that limit (or enhance) the value of pre-existing patents will have a meaningful impact on those pre-existing patents; in many cases, the court opinions will contract a patentee’s rights, and there is nothing that the patentee will be able to do about it. At the same time, however, court opinions will often have little to no impact on future patents, as savvy patent prosecutors will usually find ways to “draft around” a court’s newly established patent rules.

Peter S. Menell - The Common Law Development of the American Patent System: What History Can Teach Us

What is the judiciary’s role in developing and evolving patent law? Patent law is essentially a product of the legislature, yet throughout history, courts have been especially active in developing (not just interpreting) this body of law. In The Mixed Heritage of Federal Intellectual Property Law and Ramifications for Statutory Interpretation, Peter Menell, a professor at Stanford Law School and the University of California Berkeley School of Law, illustrates how patent and copyright laws have diverged from the conventional understanding of the Constitutional allocation of law-making authority, and instead have evolved as a mixture of judicial common law and legislative codification and supplementation. In this article, Professor Menell, leads a vastly informative journey from the constitutional beginning of patent law through the modern era, and even provides some insight for the future. According to Menell, this historical context is necessary to properly interpret and apply modern patent law. Professor Menell demonstrates that despite the congressional basis of patent law, the judiciary has always had a large role in developing patent law. As evidence, Menell points to several prominent features of patent law that cannot be found in the United States Code. He also tracks patent law through three distinct periods in history and reveals how the judiciary has played a significant role in shaping the law in each period.

Dan Burk: Do Patents Have Gender?

This is a guest post by Allison Tait, a Gender Equity and Policy Postdoctoral Associate with the Yale Women Faculty Forum, who has previously posted on Written Description. A few comments from me follow below.

Dan Burk wants to find out whether or not patents are gendered. Since everything from Happy Meal toys to energy bars and tool kits can be gendered, a reasonable feminist would not be surprised to find that patents are in fact gendered. The real question is how they are gendered.

Herbert Hovenkamp: Patent Exclusions and Antitrust After Therasense

While Therasense has received a significant amount of coverage due to its implications on the inequitable conduct defense, few have discussed its implications in other areas. In Patent Exclusions and Antitrust After Therasense, Professor Herbert Hovenkamp of the University of Iowa takes the opportunity to analyze the potential implications of Therasense on patent exclusion suits.

Jonathan Masur: The Ever Expanding Patent System

Could the commonly cited flaws of the patent system be caused by the underlying relationship of its two main players, the PTO and the Federal Circuit? The patent system has come under attack in recent years in light of the growing number of invalid or weak patents and an ever-expanding definition of what can be patented. Critics have blamed this expansion (or “patent inflation”) on a number of factors including lack of funding, capture by private interests, and lack of expertise. In Patent Inflation, Jonathan Masur, a professor at the University of Chicago Law School, suggests this phenomenon may have a more fundamental source—the institutional relationship between the PTO and the Federal Circuit.

In his thought-provoking article, Masur suggests that the administrative nature of patent law creates institutional pressure to expand the boundaries of patentability. He arrives at this novel theory by combining a few simple, yet profound, observations into a model that predicts patent expansion.

John M. Golden: Patentable Subject Matter and Institutional Choice

Is the patentable subject matter requirement obsolete or just underdeveloped? Many criticize the Patent Office for its mounting backlog and the rising number of “bad” patents that issue. In Patentable Subject Matter and Institutional Choice, John M. Golden, a Law Professor at the University of Texas, offers a well-analyzed approach to preventing patent grants in undesirable classes of innovation with a rejuvenated patentable subject matter requirement. He advocates for clarification of limits on patentable subject matter in order to better use this threshold inquiry into patentability as a categorical filter. Although Golden suggests ways in which Congress and the courts can act to clarify the patentable subject matter requirement themselves, his primary proposal is for the Patent Office to have substantive rulemaking authority on this issue.

Top 10 New IP Paper Downloads

It's time to revisit the list of most downloaded IP papers posted on SSRN in the past 60 days. Wagner and Petherbridge on Phillips and Horowitz on copyright remain popular, but the rest are new. Unsurprisingly, articles related to the Leahy-Smith America Invents Act signed into law on Sept. 16 are starting to show up:

Colleen Chien: Predicting Patent Litigation

Patent litigation is an expensive headache, especially if the asserted patents seemingly come out of the blue. Patent clearance searches, used to identify patents that may potentially be asserted or infringed, can be daunting, due to the sheer number of patents that must be reviewed. A recent paper by Colleen Chien, Assistant Professor at the Santa Clara University School of Law (also covered at Patently-O), provides a way to narrow the field of potentially-litigated patents by analyzing the “acquired” characteristics of patents.

Blogging Hiatus

This is a sad time to be leaving the blogosphere, with the Leahy-Smith America Invents Act just signed into law on Friday. Even if the changes are less dramatic than many wished, it is still the most significant patent reform bill since at least the 1980s, and I'm sure patent scholars will have a lot to say about the new act over the next year. (There has already been some interesting commentary at Patently-O.)

But I start clerking tomorrow, so I am leaving Written Description in other capable hands while I take a one-year blogging break. You will still be able to follow WD on Facebook and Twitter (as well as by email or with RSS readers), and feel free to email any of the blog authors with your suggestions, questions, or comments. Since I started this blog almost eight months ago, I have gotten to know so many interesting people in the patent community—both scholars and practitioners—and I really appreciate all of your feedback. Looking forward to jumping back into the conversation in a year!

Steven Horowitz: Copyright's Asymmetric Uncertainty

If you are trying to catch the attention of student law review editors, write an abstract like Steven Horowitz did for Copyright's Asymmetric Uncertainty. Horowitz, a Sidley Austin associate coming off Posner/Kennedy clerkships, uses one paragraph to convey a clear and simple idea that still seems novel and nonobvious. Let's see how he does this:

Sarah R.W. Rajec: Tailoring Remedies To Spur Innovation

Will we ever find a perfect remedial scheme in patent law? Ever since the dawn of the patent system, our law has sought to tailor the patent system so that it optimally balances its grants of exclusive monopoly power with the incentives it provides to prospective inventors. In Tailoring Remedies To Spur Innovation, Sarah R. Wasserman Rajec, a Visiting Associate Professor at GW, has written a thought-provoking draft paper in which she seeks to move us one step closer to that ideal balance. Incorporating useful insights from the economics and antitrust literatures, she argues that the law surrounding permanent injunctions in patent suits can be better adapted to promote innovative ends.

Washington Declaration on Intellectual Property and the Public Interest

What do over 180 experts from 35 countries agree is the most pressing global issue for intellectual property policy? The Washington Declaration on Intellectual Property and the Public Interest, which was formulated at the Global Congress on Intellectual Property and the Public Interest from August 25-27, 2011, reveals that changing the direction of negotiations on intellectual property rights in U.S. trade agreements is that issue. The Declaration criticizes an "unprecedented expansion of the concentrated legal authority exercised by intellectual property rights holders" through recent trade agreements. It calls for new efforts to "re-articulate the public interest dimension in intellectual property law and policy." The Declaration is now open to endorsement and comment.

Introducing New Written Description Bloggers

I am delighted to welcome three new bloggers on Written Description, who will share their thoughts on recent IP scholarship while I take a one-year blogging break. You can look forward to hearing from them in the coming weeks! We are open to adding one or two more blog authors, so if you are interested in blogging about twice a month, please send me an email.