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.

Christina Bohannan: Copyright Infringement and Harmless Speech

Should copyright law be subject to the same harm requirements as other speech-regulating restrictions? In her article, Copyright Infringement and Harmless Speech, Professor Christina Bohannan persuasively argues that without a harm requirement, copyright law unnecessarily suppresses copying that would otherwise enhance democratic governance by increasing access to creative and informative works. To support this argument, Professor Bohannan methodically explains how First Amendment case law can supplant the vagaries of fair use or statutory litigation to protect important free speech values.

Rebecca Tushnet - Worth a Thousand Words: The Images of Copyright Law

Has the textual model of copyright law restricted its ability to properly govern images? In her article Worth a Thousand Words: The Images of Copyright Law, 125 Harv. L. Rev. 683 (2012), Professor Rebecca Tushnet (Georgetown University Law Center) discusses the contradiction and confusion that courts have encountered when assessing whether images are copyrightable and determining if copyrights have been infringed. She proposes that the “substantial similarity” test for determining whether a party has infringed the reproduction right of a copyright be abandoned, a true “reproduction” right that protects against exact (or near-exact) copying be adopted in its place, and an end to analyzing images as if they were text.

Guest Blogger--David Taylor on Patent Misjoinder

Many thanks to Sarah Tran for highlighting my most recent scholarship on the Written Description blog yesterday and permitting me the opportunity to post a short response.

The blog entry was particularly timely. Just this past Friday the Federal Circuit resolved the split of authority among district courts applying Federal Rule of Civil Procedure 20, which governs permissive joinder, in patent infringement cases. See In re EMC Corp., slip op. (Fed. Cir. May 4, 2012) (granting a petition for writ of mandamus). The Federal Circuit ultimately ordered the district court to reconsider the issues of severance and joinder of accused infringers using a standard articulated in the opinion.

David Taylor: Patent Misjoinder

How should district courts interpret the joinder provisions of the America Invents Act? In Patent Misjoinder (forthcoming New York University Law Review), Professor David Taylor provides a comprehensive analysis of 35 U.S.C. § 299 and offers a statutory interpretation that would maximize judicial efficiencies and avoid undue prejudice to accused infringers. To develop his interpretation, Professor Taylor considers the policy concerns of permissive joinder and how these concerns have led to divergent joinder standards.

Allison, Tiller, Zyontz, & Bligh: Patent Litigation and the Internet

Following State Street Bank and now Bilski, certain Internet business methods remain “patentable subject matter” under Section 101. Given the continued rise of the Internet and its increased role in nearly everyone’s everyday lives, it would be interesting to have a better understanding of how such Internet patents fare in litigation—especially in relation to ordinary patents that bear no relation to the Internet. Recently, a group of researchers, including John Allison of the University of Texas, Emerson Tiller of Northwestern, Samantha Zyontz of George Mason, and Tristan Bligh, published a piece in the Stanford Technology Law Review that continues this worthwhile empirical inquiry. The piece analyzed well over one thousand Internet patents, as well as several thousand non-Internet patents (NIPs).

Titled Patent Litigation and the Internet, their piece raises many intriguing empirical points. The piece generated evidence that Internet patents are far more likely to be litigated than NIPs, suggesting that Internet patent-holders may perceive their patents to have more value than the owners of NIPs perceive their patents. In absolute terms, over 10% of Internet patents were litigated, while only 1.36% of NIPs were litigated.

Sapna Kumar: The Accidental Agency?

Has the Court of Appeals for the Federal Circuit stripped the Patent Office of its administrative power? Professor Sapna Kumar’s article, The Accidental Agency (forthcoming Florida Law Review), explains how the Federal Circuit has essentially become the head of an executive agency. By interpreting the Administrative Procedure Act (“APA”) narrowly, disregarding Supreme Court precedent, and interpreting more appellate issues as questions of law, the Federal Circuit has become the de facto administrator of the Patent Act.

Ted Sichelman: Purging Patent Law of 'Private Law' Remedies

Do current patent law remedies efficiently promote innovation? In his article Purging Patent Law of ‘Private Law’ Remedies, Professor Ted Sichelman (University of San Diego School of Law) argues that patent law’s reliance on tort, contract, and property law models is conceptually flawed and proposes a regulatory model of patent law remedies that would optimize innovation. Professor Sichelman discusses the universally accepted goal of patent law, identifies deficiencies in existing remedy models, and suggests that patent law will more efficiently promote innovation by eradicating the private law moorings from patent law.

Michael Frakes & Melissa Wasserman – Does Agency Funding Affect Decision Making?: An Empirical Assessment of the PTO’s Granting Patterns

Does the Patent and Trademark Office's (PTO’s) budgetary structure influence the rate at which patents are granted? In Does Agency Funding Affect Decision Making?: An Empirical Assessment of the PTO’s Granting Patterns, 66 Vanderbilt Law Review (forthcoming 2013), Professors Melissa Wasserman and Michael Frakes analyze more than two decades of patent grant rates to identify how factors like entity size and technology affect an applicant’s ability to receive a patent. The results of this study suggest that financial incentives, and not just the merits of the invention, may be, in part, driving patentability decisions.

Christopher Buccafusco: Making Sense of Intellectual Property Law

Does the human sensory experience of a product determine whether it is copyrightable or patentable? In his forthcoming article Making Sense of Intellectual Property Law, Professor Christopher Buccafusco (Chicago-Kent College of Law) argues that intellectual property law has established a dichotomy between objects appealing to different senses and offers a novel modification of IP doctrine. He asserts that, traditionally, copyright involves works that have the aesthetic appeal associated with sight and sound, whereas the ‘functional’ connotation of touch, taste, and smell are typically classified in patent law. In this article, Professor Buccafusco suggests that traditional aesthetic theory has become outdated and proposes a change to intellectual property law that would recognize the unity of all senses.

Arti Rai – Patent Validity Across the Executive Branch: Ex Ante Foundations for Policy Development

What can the recent DNA patent controversies teach us about the role of executive agencies in shaping patent policy? In Professor Arti Rai’s essay: Patent Validity Across the Executive Branch: Ex Ante Foundations for Patent Development, Rai analyzes how systematic interagency debate can facilitate the development of beneficial patent policy ex ante. Professor Rai uses recent Supreme Court holdings to demonstrate that executive agencies like the International Trade Commission (ITC), the National Institute of Health (NIH), and the Department of Justice can work in tandem with the U.S. Patent and Trademark Office (PTO or Patent Office) to avoid some of the policy pitfalls created by the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) and Congress.