Patent Law
Estopping Patent Harassment: A Response to Christa J. Laser
Written by: Gregory Dolin
Abstract Response to Christa J. Laser, The Scope of IPR Estoppel: A Statutory, Historical, and Normative Analysis In her article, The Scope of IPR Estoppel: A Statutory, Historical, and Normative Analysis, Christa Laser argues that the estoppel provisions of the America Invents Act (AIA) apply only to grounds that could have been raised once the petition […]
The Scope of IPR Estoppel: A Statutory, Historical, and Normative Analysis
Christa J. Laser
Abstract When Congress implemented inter partes review (IPR) and other patent post-grant proceedings through the passage of the America Invents Act (AIA) in 2011, it provided that petitioners would be estopped in later proceedings from raising grounds for invalidity that they “raised or reasonably could have raised during that inter partes review.” 35 U.S.C. § […]
The Skeleton in the Hard Drive: Encryption and the Fifth Amendment
Written by: David W. Opderbeck
Abstract In Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., the Supreme Court addressed an oft-discussed jurisprudential disconnect between itself and the U.S. Court of Appeals for the Federal Circuit: whether patent claim construction was “legal” or “factual” in nature, and how much deference is due to district court decision-making in this area. This Article closely […]
Zombie Patents and Zombie Companies with Patents
Written by: Xuan-Thao Nguyen
Introduction The word “Zombie” has its roots in the Haitian French language, referring to the reanimation of the human corpse. “Zombie” has become ubiquitous in American popular culture; zombies seem to be everywhere from films, novels, comic books, video games, and botnets to tax. Of course, science fiction reincarnates zombies as post-human, appearing in different […]
W. Keith Robinson, Economic Theory, Divided Infringement, and Enforcing Interactive Patents
Abstract High tech companies—especially in the emerging areas of the Internet of Things, wearable devices, and personalized medicine—have found it difficult to enforce their patents on interactive technologies. Enforcement is especially difficult when multiple parties combine to perform all of the steps of a claimed method, which is referred to as joint or divided infringement. […]
Alan Devlin, Antitrust Limits on Targeted Patent Aggregation
Patent-assertion entities (PAEs) are non-technology-practicing companies that aggregate and license patents under threat of suit. Their activities have drawn fire, including presidential condemnation, and spurred proposed legislation to protect operating firms against them. PAEs leverage flaws in the patent system to extort firms that independently invent and sell technological goods to consumers. Since PAEs tax […]
Jeffrey A. Lefstin, Inventive Application: A History
The Supreme Court’s recent cases on patent-eligible subject matter have struggled to draw the line between unpatentable fundamental principles, such as laws of nature and abstract ideas, and patentable inventions. In Mayo v. Prometheus, the Court suggested that only “inventive applications” of fundamental principles fall within the domain of the patent system. Both Mayo and […]
Xuan-Thao Nguyen, In the Name of Patent Stewardship: The Federal Circuit's Overreach into Commercial Law
While the U.S. Court of Appeals for the Federal Circuit has admirably commandeered its stewardship of patent law—Congress bestowed the Federal Circuit with exclusive jurisdiction over patent appeals since 1982—the court has unabashedly extended its reach, unwelcomed, into commercial law. Camouflaged in the name of patent stewardship, the Federal Circuit’s foray into commercial law has […]
William Hubbard, The Debilitating Effect of Exclusive Rights: Patents and Productive Inefficiency
Are we underestimating the costs of patent protection? Scholars have long recognized that patent law is a double-edged sword. While patents promote innovation, they also limit the number of people who can benefit from new inventions. In the past, policy makers striving to balance the costs and benefits of patents have analyzed patent law through […]
Jason Rantanen & Lee Petherbridge, Ph.D., Disuniformity
The United States Court of Appeals for the Federal Circuit is a response to a failure in judicial administration that produced a fractured, unworkable patent law—one that Congress concluded ill-served entrepreneurship and innovation. The purpose of the response—vesting exclusive jurisdiction for patent appeals in the Federal Circuit—was to permit that court to develop patent law […]
Gaia Bernstein, Incentivizing the Ordinary User
Disputes regarding the effectiveness of the patent system focus on the appropriate scope of patent rights. This Article departs from the traditional debate and looks instead at the players regulated by the patent system. This Article shows that the patent system fails to effectively encourage technological dissemination because it focuses on the patent owner and […]
Adam Mossoff, The Trespass Fallacy in Patent Law
The patent system is broken and in dire need of reform; so says the popular press, scholars, lawyers, judges, congresspersons, and even the President. One common complaint is that patents are now failing as property rights because their boundaries are not as clear as the fences that demarcate real estate—patent infringement is neither as determinate nor as efficient as trespass […]
William Hubbard, Competitive Patent Law
Can U.S. patent law help American businesses compete in global markets? In early 2011, President Barack Obama argued that, to obtain economic prosperity, the United States must “out-innovate . . . the rest of the world,”1 and that patent reform is a “critical dimension[]”2 of this innovation agenda. Soon thereafter, Congress enacted the most sweeping […]
Sapna Kumar, The Accidental Agency?
This Article presents a new model for examining the role of the Court of Appeals for the Federal Circuit (Federal Circuit) with regard to patent law, positing that the Federal Circuit behaves like an agency and serves as the de facto administrator of the Patent Act. The Federal Circuit has traditionally engaged in a form […]
Jacob D. Moore, The Forgotten Victim in the Human Gene Patenting Debate: Pharmaceutical Companies
63 Fla. L. Rev. 1277 (2011)| | | NOTE :: Scientific innovation is crucial to the prosperity, security, and health of a nation. During the founding years of the United States, political leaders realized the need for such innovation and created the patent law system 2 as a means of protecting American citizens. The major […]
Michael A. Carrier, A Real-World Analysis of Pharmaceutical Settlements: The Missing Dimension of Product Hopping
62 Fla. L. Rev. 1009 (2010) | | | | ABSTRACT :: The pharmaceutical industry plays an important role in improving human health. But it also provides the setting for some of the most concerning issues in the patent-antitrust intersection today. Two activities are particularly worrisome. First, brand-name pharmaceutical firms and generic companies have settled […]
Dana Remus Irwin, Paradise Lost in The Patent Law? Changing Visions of Technology in The Subject Matter Inquiry
60 Fla. L. Rev. 775 (2008) | | | | ABSTRACT :: In recent decades, the Patent and Trademark Office and the federal courts have dramatically expanded the scope of patentable subject matter-the set of inventions eligible for patent protection. Existing scholarship has taken a narrow view of this expansion. Scholars argue on efficiency grounds […]
Stephanie L. Varela, Damned If You Do, Doomed If You Don't: Patenting Legal Methods and its Effect on Lawyers' Professional Responsibilities
60 Fla. L. Rev. 1145 (2008) | | | | INTRODUCTION :: Imagine, before advising each client, having to confer with the U.S. Patent and Trademark Office (USPTO) to determine whether another lawyer already owns a patent to the legal strategy you wish to propose. Imagine having to pay someone so your client can follow […]
William A. Drennan, The Patented Loophole: How Should Congress Respond to this Judicial Invention?
59 Fla. L. Rev. 229 (2007) | | | | INTRODUCTION :: An IRS spokesperson “questioned whether the [Patent Office] staff has adequate background in tax law . . . to properly rule on those patent applications [for tax strategies].” In response, a Patent Office spokesperson said, “The [Patent Office] has a long tradition of […]
Kelly Casey Mullally, Patent Hermeneutics: Form and Substance in Claim Construction
59 Fla. L. Rev. 333 (2007) | | | | ABSTRACT :: The claims section of a patent performs an important public notice function in patent law. The claims inform us of the boundaries delineating the subject matter over which the inventor holds an exclusive right. Methodology for interpreting patent claims has a direct impact […]
Ted Hagelin, The Experimental Use Exemption to Patent Infringement: Information on Ice, Competition on Hold
58 Fla. L. Rev. 483 (2006) | | | | INTRODUCTION :: The U.S. patent system is built upon a delicate balance between the rights of patent owners, the rights of the public at large, and the rights of market competitors. The patentee is granted broad rights to exclude others from making, using, or selling […]
Jacqueline Lipton, Information Property: Rights and Responsibilities
56 Fla. L. Rev. 135 (2004) | | | | INTRODUCTION :: Can you own information? If so, what is the theoretical justification for ownership, and precisely what rights does ownership confer? What is the impact of ownership of information and ideas on society and on the public domain? These questions have increasingly absorbed the […]
Mark Alan Thurmon, The Rise and Fall of Trademark Law's Functionality Doctrine
56 Fla. L. Rev. 243 (2004) | | | | INTRODUCTION :: Trademark law’s functionality doctrine is a mess, and the responsibility for this mess rests squarely with the United States Supreme Court. In TrafFix Devices, Inc. v. Marketing Displays, Inc., the Supreme Court intervened to resolve a minor split on a secondary functionality issue, […]