12 Patent Articles for the Holidays

Looking for some patent-related reading for the 12 Days of Christmas (or other holidays)? Here are my tweets (or retweets) on 12 papers that caught my eye this fall. (Note that this list looks best if you view it on the blog webpage rather than in an RSS reader.) You can always check my Twitter page for more recommendations (and other IP-related news).

Christopher Beauchamp: Invented By Law

I have just obtained my copy of Christopher Beauchamp's new book, Invented by Law: Alexander Graham Bell and the Patent That Changed America, which recounts the story of Alexander Graham Bell's legal battles over his telephone patent, and in doing so reconstructs the world of nineteenth century patent litigation. The book is published by Harvard University Press and is available on Amazon.com.

Commil v. Cisco and the Tort of Patent Infringement

Guest post by Saurabh Vishnubhakat, Postdoctoral Associate at Duke Law School. Vishnubhakat is also an expert legal advisor in the USPTO's Office of Chief Economist. His scholarship is available on SSRN, and you can follow him at @emptydoors. The arguments in this writing are the author’s and should not be imputed to the USPTO or to any other organization.

Final CELS Recap: Trolls, Anticommons, M&A

I have already posted on the papers from the Intellectual Property I session at the Conference on Empirical Legal Studies (CELS) by Aghion et al., Abrams et al., and Frakes & Wasserman. There were three more papers selected for the Intellectual Property II session on the second day of CELS, which I'll briefly describe here:

Commil v. Cisco Cert Grant on Knowledge for Induced Patent Infringement

The Supreme Court granted cert today in its second patent case of the 2014 Term, Commil v. Cisco, on whether a defendant’s belief that a patent is invalid is a defense to induced infringement under 35 U.S.C. § 271(b). (The Court did not take the petition's second question, and Justice Breyer is recused.) For those who haven't been paying attention, here's a quick rundown:

Tun-Jen Chiang on Patentable Subject Matter

Patent law is usually justified on utilitarian grounds. To be sure, significant contrary views have appeared in recent scholarship. For example, Professor Robert Merges’ work provides a partly Lockean account of intellectual property. The dominant view, nonetheless, is that the rules of patent law serve consequentialist goals of inducing invention, commercialization, and disclosure. In support of this view, scholars often cite the moribund state of the “moral utility” doctrine and the Constitution itself, which empowers Congress to enact laws that would “promote the Progress of Science and Useful Arts.” Professor Tun-Jen Chiang’s forthcoming article, “Competing Visions of Patentable Subject Matter,” challenges this account as a descriptive matter insofar as it relates to the judicially recognized exclusions from patentability.

Frakes & Wasserman on Time-Crunched Patent Examiners

Next in my CELS IP recap: Melissa Wasserman (Illinois) presented Is the Time Allocated to Review Patent Applications Inducing Examiners to Grant Invalid Patents?: Evidence from Micro-Level Application Data (coauthored with Michael Frakes at Northwestern). I was delighted to serve as the discussant for this paper, which is the latest in a series of outstanding empirical projects by Frakes & Wasserman on patent examination.

Abrams et al. on Patent Value and Citations

Next up in my CELS IP recap: David Abrams (Penn) presented Patent Value and Citations: Creative Destruction or Strategic Disruption? (with Ufuk Akcigit & Jillian Popadak), for which Browyn Hall served as the discussant. This paper addresses one of the key quandaries of innovation policy: how do you measure innovation?

CELS Recap Part 1: Laboratory Experiment on the Effect of Competition on Innovation

This past weekend I was a discussant at the 9th Annual Conference on Empirical Legal Studies (CELS) at Berkeley. There were two IP sessions with three papers selected for each, and over the coming days, I'll provide short recaps. First up: Stefan Bechtold (ETH Zurich) presented The Causal Effects of Competition on Innovation: Experimental Economics (co-authored with Philippe Aghion, Lea Cassar & Holger Herz). They designed laboratory games between pairs of student subjects who could "invest" in R&D to test competing theories of the effect of competition on innovation. In the competitive environment, a subject had to be ahead to earn a payoff; in the non-competitive environment, tied subjects could also earn a payoff.

Bechtold & Tucker on Trademarks & Google AdWords

How does using a third party's trademark as a keyword to trigger Google ads affect consumer behavior? In Trademarks, Triggers, and Online Search (forthcoming in the Journal of Empirical Legal Studies), Stefan Bechtold (ETH Zurich) and Catherine Tucker (MIT Sloan), present an amazing dataset that can shed light on this question due to a fortuitous natural experiment in European trademark law. For anyone who is interested in trademark policy but who hasn't seen this, it is worth a download. In short, they find that after Google changed its policy to allow companies to select third-party trademarks as advertising keywords, it had no measurable average effect on how likely searchers were to visit the trademark owner's website, but it had a noticeable effect on the behavior of different kinds of online searchers. The authors attempt to distinguish "navigational" searchers who are likely looking for the trademark owner's website, with searches like [ iPhone ] or [ Barbie ], from "non-navigational" searchers who are using the trademark in some other way, with searches like [ iPhone battery repair Paris ] or [ Barbie working conditions workers China ] (where non-navigational searches make up about 80% of all searches). Bechtold and Tucker find that after the policy change, navigational searchers are less likely to visit the trademark owner's website, while non-navigational searchers are more likely to visit.

Teva v. Sandoz Argument Recap

This morning I attended the Supreme Court argument in Teva v. Sandoz, the case on the standard of review for patent claim construction, which I previewed on this blog. Based on the questions today (transcript here), I think that Chief Justice Roberts, Justice Alito, Justice Sotomayor, and perhaps Justice Ginsburg were inclined to affirm the current de novo approach, and that Justices Scalia, Kennedy, Breyer, and Kagan thought that claim construction involves subsidiary factual issues that must be reviewed under the clearly erroneous standard of rule 52(a). Justice Thomas, as usual, was silent. If I had to guess, I still suspect that the Court will ultimately reject the de novo approach, but I don't think the answer is at all obvious from argument. So we'll have to wait for the opinion to get a definitive (and hopefully clear!) answer. Below are my thoughts about the leaning of each Justice.

Kenney & Mowery: Public Universities and Regional Growth

I've received my new copy of Public Universities and Regional Growth: Insights from the University of California, edited by Martin Kenney and David Mowery. It is an excellent book, demonstrating the complex interactions between university, industry, and government that underlie the unmatched growth in certain sectors of the California region. The book contains numerous case studies of University of California campuses' involvement in major technological developments, including semiconductors and chip and software design at UC Berkeley, UCLA, and UC Santa Barbara, wireless at UC San Diego, and biotechnology at UCSD and UC San Francisco, and more. Each of these campuses became anchors for regional clusters that stimulated economic growth in their respective regions along with advancing science.

Teva v. Sandoz Argument Preview

On October 15, the Supreme Court will hear arguments in Teva v. Sandoz, which focuses on a seemingly simple question: What should be the standard of review for patent claim construction? (For those unfamiliar with claim construction, see Polk Wagner's introductory lecture.) The Federal Circuit reviews claim construction de novo, following its en banc decisions in Cybor (1998) and Lighting Ballast (2014). The Teva petitioners argue that claim construction involves questions of fact, and that Fed. R. Civ. P. 52(a) requires that these findings "must not be set aside unless clearly erroneous." And the de novo standard has received plenty of scholarly criticism, including in a recent article by Jonas Anderson and Peter Menell that was featured on this blog (see also their thoughtful amicus brief in Teva, with Arti Rai). Is this yet another case in which the Federal Circuit has made inappropriate patent-specific rules, or will the Supreme Court finally conclude that the specialized patent court is doing something right? And will the Court pay attention to the possibility that tinkering with deference regimes can lead to more (or fewer) deference mistakes?

Most Cited IP Law Articles over the Last 10 Years

Guest Post by Ted Sichelman, University of San Diego School of Law

Recently, I undertook a project at my law school to assess the impact of our faculty’s publications. Building off of this work, I put together lists of the most cited IP law articles over the last decade (using HeinOnline).

Below are the most cited IP articles published from 2004-2008 and 2009-2013 (with embedded HeinOnline links to the articles). I report the top 25 most-cited IP articles published in each time period as well as the top 20 most-cited articles (with a minimum of 20 citations) in copyright, patent, trademark, and trade secret law.

Patentable Subject Matter and Non-Patent Innovation Incentives

I just posted my symposium essay from U.C. Irvine's Meaning of Myriad Conference: Patentable Subject Matter and Non-Patent Innovation Incentives. Here is the abstract—comments welcome!

In four patentable subject matter cases in the past five Terms, the Supreme Court has reaffirmed the judicially created prohibitions on patenting “abstract ideas” and “nature,” but the boundaries of these exceptions remain highly contested. The dominant justification for these limitations is utilitarian: courts create exemptions in areas where patents are more likely to thwart innovation than to promote it. The resulting debates thus focus on whether patents are needed to provide adequate innovation incentives in disputed fields such as software or genetic research, or whether private incentives such as reputational gains, first-mover advantages, or competitive pressures are sufficient. These debates frequently overlook a significant fact: the absence of patents does not imply that there would be only private incentives. Rather, federal and state governments facilitate financial transfers to researchers through a host of mechanisms—including tax incentives, direct grants and contracts, prizes, and regulatory exclusivity—which already provide substantial research support in the fields where patents are the most controversial.

Paying attention to non-patent incentives could prevent courts from being misled by the concern that a lack of patents for a certain type of invention would remove all incentives for nonobvious and valuable research in that field. Non-patent innovation incentives could also help ease the tension between utilitarian and moral considerations in the current patentable subject matter debates: if many people find patents on certain inventions (such as “human genes”) morally objectionable, utilitarian goals can still be served by using other transfer mechanisms to substitute for the incentive provided by patents. Indeed, non-patent incentives may be more effective than patents in contested areas, where inventors who share moral objections find little incentive in patents, and those who do not still find the patent incentive to be dulled by the persistent uncertainty that has plagued patentable subject matter doctrine in recent years. Wider appreciation of the range of innovation incentives would help bring patentable subject matter discussions in line with the realities of scientific research, and might even make this doctrinal morass more tractable.