DOCSLIB.ORG

905 - IP Year in Review

Total Page：16

File Type：pdf, Size：1020Kb

Download full-text PDF Read full-text
905 - IP Year in Review ACC’s 2010 Annual Meeting Be the Solution. Wednesday, October 27 9:00am-10:30am 905 - IP Year in Review Judy Powell Partner Kilpatrick Stockton Kelly Slavitt Counsel In Transition Lydia Cheuk General Counsel & Business Affairs Director Blue Man Productions, LLC Andrew Pham Associate General Counsel, Global Intellectual Property Verint Systems Inc. This material is protected by copyright. Copyright © 2010 various authors and the Association of Corporate Counsel (ACC). Materials may not be reproduced without the consent of ACC. Reprint permission requests should be directed to ACC’s Legal Resources Department at ACC: +1 202.293.4103, x338; [email protected] ACC's 2010 Annual Meeting Be the Solution. Session 905 Faculty Biographies Lydia Cheuk Lydia Cheuk is the general counsel and business affairs director for Blue Man Group. She works on business and legal issues relating to a variety of domestic and international creative projects, including theatrical productions, music albums, music scores for films and television, and film. She also represents and counsels various individual performers, musicians, writers, and artists. Prior to joining Blue Man Group, Ms. Cheuk was an associate at Goodwin Procter, where she worked on venture capital transactions as well as mergers and acquisitions. Ms. Cheuk received her undergraduate degree from the University of Michigan and law degree from the New York University School of Law. Andrew Pham Andrew T. Pham is the vice president and associate general counsel, global intellectual property and licensing, for Verint Systems Inc.-a leading provider of Actionable Intelligence(R) solutions for workforce optimization, IP video, communications interception, and public safety. He counsels Verint(R) on patent, trademark, copyright, open source and other intellectual property and technology issues including licensing and litigation. Mr. Pham's primary research and publication interests include the economics of patents and patenting, portfolio-based patent strategies and management, global patent protection, patent monetization, and corporate open source policy and management. Mr. Pham holds a JD from Marquette Law School, and a Bachelor of Science in Electrical Engineering and an MBA. Judy Powell Kilpatrick Stockton Kelly Slavitt Kelly M. Slavitt is a transactional intellectual property attorney. Until recently, she was in the Corporate Legal Department at General Electric counseling her lighting, appliances, energy, oil and gas, and Spanish television network clients on contract and transactional IP matters. Prior to joining GE, she was corporate counsel at The American Society for the Prevention of Cruelty to Animals (ASPCA) where she counseled the business on all corporate issues, ran the legal department and was the organizations first in-house IP counsel. Copyright © 2010 Association of Corporate Counsel 2 of 459 ACC's 2010 Annual Meeting Be the Solution. Session 905 Prior to joining the ASPCA, Ms. Slavitt was a transactional IP/IT associate at Skadden, Arps, Slate, Meagher & Flom and Thelen Reid & Priest in New York City, and a solicitor at Allens Arthur Robinson in Melbourne, Australia. Ms. Slavitt has been published numerous times in publications ranging from scholarly legal reviews to business law publications, and has spoken on panels at numerous conferences. Ms. Slavitt received her BA from The Pennsylvania State University, her Masters of Public Administration from New York University, her JD from Brooklyn Law School, and her LLM from The Benjamin N. Cardozo School of Law. Copyright © 2010 Association of Corporate Counsel 3 of 459 ACC's 2010 Annual Meeting Be the Solution. Many new issues, some we won’t have time to touch on but note: • David Kappos named as New Under Secretary of Commerce for Intellectual Property and Director of the USPTO • Litigations: In re Bose, Victoria’s Secret, Microsoft, RIM/ Visto, KSR, NFL logo licensing and antitrust, REDSKINS trademark, Citizens United • Increase in comparative advertising but not in litigation • Auction sites; keyword advertising • Social networking sites; FTC blogging regulations COPYRIGHTS Lydia Cheuk, Esq. General Counsel and Business Affairs Director Blue Man Productions, LLC Viacom v. Google “Red Flags” and “Safe Harbors” under the DMCA Copyright © 2010 Association of Corporate Counsel 4 of 459 ACC's 2010 Annual Meeting Be the Solution. YouTube claims “safe harbor” under 512(c) of DMCA, so it can’t be liable for posting users’ infringements; Viacom says YouTube can’t rely on 512 (c) because it had knowledge of “facts or circumstances from which infringing activity is apparent” “Subsection (c)(1)(A)(ii) can best be described as a ‘red flag’ test. As stated in subsection (l), a service provider need not monitor its service or affirmatively seek facts indicating infringing activity . , in order to claim this limitation on liability” Senate Report at 44-45 COURT: No “red flags” here because “The phrases ‘actual knowledge that the material or an activity’ is infringing, and ‘facts or circumstances’ indicating infringing activity, describe knowledge of specific and identifiable infringements of particular individual items. Mere knowledge of prevalence of such activity in general is not enough.” Copyright © 2010 Association of Corporate Counsel 5 of 459 ACC's 2010 Annual Meeting Be the Solution. COURT’S REASONING: the safe harbor is available to ISPs who do not monitor user postings; the safe harbor is not available to ISPs who ignore red flags; therefore ISPs who do not monitor cannot be held to have ignored red flags. The Internet and “Publication” Getaped.com v. Cangemi (2002): once a website goes “live” on the internet it is published for purposes of the Copyright Act. But WHERE is internet content “published”? Copyright © 2010 Association of Corporate Counsel 6 of 459 ACC's 2010 Annual Meeting Be the Solution. Moberg v. 33T LLC [N]o civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title. 17 U.S.C. § 411(a) [A] work is a “United States work” only if … in the case of a published work, the work is first published … simultaneously in the United States and another treaty party or parties, whose law grants a term of copyright protection that is the same as or longer than the term provided in the United States. 17 U.S.C. § 101 Copyright © 2010 Association of Corporate Counsel 7 of 459 ACC's 2010 Annual Meeting Be the Solution. “To require plaintiff to register his photographs in the United States prior to initiating suit against a United States company and the registrants of U.S.-based websites for their violation of United States law, which protects plaintiff's copyrights, would flout United States law and the international union the U.S. has joined voluntarily.” Fairey v. Associated Press PATENTS Andrew T. Pham Associate General Counsel, Global Intellectual Property Verint Systems Inc. Copyright © 2010 Association of Corporate Counsel 8 of 459 ACC's 2010 Annual Meeting Be the Solution. Notable Cases • Bilski v Kappos (subject matter)130 S. Ct. 3218 (2010) – The ‘machine or transformation’ test is not the sole test for determining patentability of an invention under 35 U.S.C. §101. – The USPTO is currently working on a new multi-factor test for patentability that considers ‘machine or transformation’ as one of the factors and are soliciting public input in the decision. • Ariad Pharmaceuticals v. Eli Lilly & Co. (written description) 598 F.3d 1336 (Fed. Cir. 2010) – The Patent Act’s written description and enablement requirements are separate and distinct requirements. – The court's decision in Ariad set a flexible standard for assessing whether the inventor had “possession as shown in the disclosure” of the patent specification. • Golden Hour Data Systems v. emsCharts (joint infringement) 2010 U.S. App. LEXIS 16455 – Joint infringement will not be found when the evidence of “control or direction” is insufficient as a matter of law. – The decision likely results in future parties testing the boundaries of infringing use of system claims. Notable Cases • Tafas v. Doll (continuation limits, claims & RCE limits) – Confirmed that the USPTO Final Rules are within the agency's rulemaking authority and that the rules regarding requests for continued examination, claims, and examination support documents are consistent with the law. The court declined to vacate a ruling that the PTO lacked substantive rulemaking authority when it tried to implement controversial patent claims and continuation practice rules. – Because the PTO voluntarily withdrew the previous rules, then implemented new ones, they could not claim the mootness necessary to vacate the rulemaking authority holding, because the implementation of new rules was within the PTO’s control. • BlackBoard v. Desire2Learn (means plus function) 368 Fed. Appx. 111 – Means-plus-function claims require disclosure in the specification even if the means are already well known in the art. – The court rejected the argument that only specifying that a general purpose computer is programmed could provide adequate structure, per the court's decision in Aristocrat Technologies Australia Pty Ltd. v. International Game Technology, 521 F.3d 1328, 86 USPQ2d 1235 (Fed. Cir. 2008) • Wyeth and ElanPharma v. Kappos (patent term extension) – The Patent Office had been under-calculating the patent term adjustments (PTA) owed to patentees because of USPTO delays during prosecution and must add together the two different “periods of delay” to allow the proper extension. – The average PTA grant has increased by six-months — jumping from 14–months to 20–months. Patent Marking - The Forest Group v. Bon Tool • Forest Group brought an infringement suit when Bon Tool switched to a foreign producer of the exact same product (construction stilts). However, Forest Group’s product did not meet their own patent’s requirements, so the product that Forest Group was selling was falsely marked as patent protected. • The Court of Appeals held that a qui tam plaintiff may collect up to $500 for each falsely-marked product distributed.
Load more

Recommended publications
  • 2016 Ncta Intx May 16Th & 17Th
    A Center for Law, 2016 NCTA INTX Technology, and Entrepreneurship ACADEMIC WORKSHOP at the University Silicon of Colorado MAY 16TH & 17TH latirons WORKSHOP PARTICIPANTS Workshop Locations Yochai Benkler, Professor of Law, Harvard University Babette E. Boliek, Associate Professor, Pepperdine University School of Law Monday, May 16, 2016 Adam Candeub, Professor, Michigan State University College of Law Samberg Conference Center - MIT David Clark, Professor, Massachusetts Institute of Technology 6th Floor, Dining Room 5 & 6 Stacey Dogan, Professor, Boston University School of Law MIT Chang Building (E52) Carolyn Gideon, Assistant Professor of International Communication and Technology 50 Memorial Drive Policy and Director of Hitachi Center for Technology and International Affairs, The Cambridge, MA 02139 Fletcher School, Tufts University Ray Gifford, Senior Fellow, Silicon Flatirons, University of Colorado Shane Greenstein, Professor, Harvard Business School Tuesday, May 17, 2016 Christiaan Hogendorn, Associate Professor of Economics, Wesleyan University Boston Convention and John B. Horrigan, Senior Researcher, Pew Research Center Expo Center Gus Hurwitz, Assistant Professor, University of Nebraska College of Law 415 Summer Street Roslyn Layton, PhD Fellow, Aalborg University Boston, MA 02210 William Lehr, Research Scientist/CSAIL, Massachusetts Institute of Technology Directions & Parking Daniel Lyons, Associate Professor, Boston College Law School Information John Mayo, Professor of Economics, Business and Public Policy, Georgetown University
    [Show full text]
  • Visions of Electric Media Electric of Visions
    TELEVISUAL CULTURE Roberts Visions of Electric Media Ivy Roberts Visions of Electric Media Television in the Victorian and Machine Ages Visions of Electric Media Televisual Culture Televisual culture encompasses and crosses all aspects of television – past, current and future – from its experiential dimensions to its aesthetic strategies, from its technological developments to its crossmedial extensions. The ‘televisual’ names a condition of transformation that is altering the coordinates through which we understand, theorize, intervene, and challenge contemporary media culture. Shifts in production practices, consumption circuits, technologies of distribution and access, and the aesthetic qualities of televisual texts foreground the dynamic place of television in the contemporary media landscape. They demand that we revisit concepts such as liveness, media event, audiences and broadcasting, but also that we theorize new concepts to meet the rapidly changing conditions of the televisual. The series aims at seriously analyzing both the contemporary specificity of the televisual and the challenges uncovered by new developments in technology and theory in an age in which digitization and convergence are redrawing the boundaries of media. Series editors Sudeep Dasgupta, Joke Hermes, Misha Kavka, Jaap Kooijman, Markus Stauff Visions of Electric Media Television in the Victorian and Machine Ages Ivy Roberts Amsterdam University Press Cover illustration: ‘Professor Goaheadison’s Latest,’ Fun, 3 July 1889, 6. Cover design: Coördesign, Leiden
    [Show full text]
  • Searchable PDF Index
    TELEPHONE COLLECTORS INTERNATIONAL Telephone Collectors International is an organization of telephone collectors, hobbyists and historians who are helping to preserve the history of the telecommunications industry through the collection of telephones and telephone related material. Our collections represent all aspects of the industry; from the very first wooden prototypes that started the industry to the technological marvels that made the automatic telephone exchange possible. If any of this interests you, we invite you to join our organization. Look around and see what we have to offer. Thanks for stopping by! Telephone Collectors International website including become a member: http://www.telephonecollectors.org/ Questions or comments about TCI? Send e-mail to [email protected] ********************************************************************************* Books Recommended by the editors: Available now ... Old-Time Telephones! Design, History, and Restoration by Ralph O. Meyer ... 264pp Soft Cover 2nd Edition, Expanded and Revised ... A Schiffer Book with Price Guide for Collectors Available at Phoneco.com or Schiffer Publishing, Ltd., 4880 Lower Valley Rd, Atglen, PA 19310 e-mail: [email protected] ********************************************************************************** Coming Soon: TELEPHONE Dials and Pushbuttons Their History, Development and Usage by Stanley Swihart ... 2 volumes, 300 pp ea. Box 2818, Dublin, CA., 94568-0818. Phone 1 (925)-829-2728, e-mail [email protected] *********************************************************************************
    [Show full text]
  • The Myth of the Sole Inventor
    Michigan Law Review Volume 110 Issue 5 2012 The Myth of the Sole Inventor Mark A. Lemley Stanford Law School Follow this and additional works at: https://repository.law.umich.edu/mlr Part of the Intellectual Property Law Commons Recommended Citation Mark A. Lemley, The Myth of the Sole Inventor, 110 MICH. L. REV. 709 (2012). Available at: https://repository.law.umich.edu/mlr/vol110/iss5/1 This Article is brought to you for free and open access by the Michigan Law Review at University of Michigan Law School Scholarship Repository. It has been accepted for inclusion in Michigan Law Review by an authorized editor of University of Michigan Law School Scholarship Repository. For more information, please contact [email protected]. THE MYTH OF THE SOLE INVENTORt Mark A. Lemley* The theory of patent law is based on the idea that a lone genius can solve problems that stump the experts, and that the lone genius will do so only if properly incented. But the canonical story of the lone genius inventor is largely a myth. Surveys of hundreds of significant new technologies show that almost all of them are invented simultaneously or nearly simultaneous- ly by two or more teams working independently of each other. Invention appears in significant part to be a social, not an individual, phenomenon. The result is a real problem for classic theories of patent law. Our domi- nant theory of patent law doesn't seem to explain the way we actually implement that law. Maybe the problem is not with our current patent law, but with our current patent theory.
    [Show full text]
  • Who Invented the Telephone?: Lawyers, Patents, and the Judgments of History
    Who Invented the Telephone?: Lawyers, Patents, and the Judgments of History Christopher Beauchamp Technology and Culture, Volume 51, Number 4, October 2010, pp. 854-878 (Article) Published by The Johns Hopkins University Press DOI: 10.1353/tech.2010.0038 For additional information about this article http://muse.jhu.edu/journals/tech/summary/v051/51.4.beauchamp.html Access Provided by Princeton University at 02/10/13 1:14PM GMT 05_51.4beauchamp 854–78:03_49.3dobraszczyk 568– 10/31/10 11:04 AM Page 854 Who Invented the Telephone? Lawyers, Patents, and the Judgments of History CHRISTOPHERBEAUCHAMP Who invented the telephone? In the United States, this question has a widely known answer. Alexander Graham Bell routinely ranks among the hundred “greatest” or “most influential” Americans, whether chosen by historians or internet polls.1 His cry of “Mr. Watson—come here—I want to see you,”al- though often misquoted, is one of the best-known exclamations in Amer- ican history.2 More than one hundred and thirty years after the event, Bell and Watson’s first telephone call remains a classroom staple: a standard de- vice for teaching Americans about the nation’s inventive past, and even for placing technological change at the center of mainstream history.3 Christopher Beauchamp is the Sharswood Fellow in Law and History at the University of Pennsylvania Law School. In an earlier form, this essay received the Levinson Prize of the Society for the History of Technology. The author is grateful for the advice of Anisha Dasgupta, Martin Daunton, Richard John, Robert MacDougall, Christine MacLeod, John Staudenmaier, and four anonymous referees for T&C.
    [Show full text]
  • Luis Rosario Albert Estado, Empresa Y
    REDES ESTADO, EMPRESA Y TELECOMUNICACIONES EN PUERTO RICO LUIS ROSARIO ALBERT JuntaREGLAMENTADORA de Telecomunicaciones DE PUERTO RICO Para ver este documento como un libro ajuste el formato en Adobe Reader realizando los siguientes pasos: Adobe Reader > Ver > Presentación de Página > Vista de Dos Páginas Adobe Reader > View > Page Display > Two Page View Importante asegúrese que las siguientes opciones no estén seleccionadas: Mostrar Espacios Entre Páginas Mostrar Página de Portada en Vista de Dos Páginas Show Gaps Between Pages Show Cover Page in Two Page View REDES: ESTADO, EMPRESA Y TELECOMUNICACIONES EN PUERTO RICO © Junta Reglamentadora de Telecomunicaciones de Puerto Rico Todos los derechos reservados. Prohibida la reproducción parcial o total de este libro. Primera edición: Noviembre 2016 Investigación/Derechos morales Luis Rosario Albert Edición/Corrección de textos Maria Eugenia Hidalgo Coordinadora de producción Karen Garnik, Beyond Branding Communications Diseño gráfico/Montaje Alberto Rigau & Edna Isabel Acosta, Estudio Interlínea Diseño de gráficas Stephanie Rodríguez, Estudio Interlínea Impresión Model Offset Printing ISBN: 978-0-9981550-0-5 Impreso y encuadernado en Humacao, Puerto Rico. Fotos páginas 1-7: AGPR Foto páginas 8-9: El Mundo, UPR AbreviAturAs en ilustrAciones El Mundo, UPR Colección del periódico El Mundo, Biblioteca Digital Puertorriqueña, Universidad de Puerto Rico AGPR Archivo General de Puerto Rico FLMM Fundación Luis Muñoz Marín FRHC Fundación Rafael Hernández Colón ACPR Autoridad de Comunicaciones de
    [Show full text]
  • Short Skirts, Telephonoscopes and Ancient Locomotives
    Junctions volume 2 issue 2 9 ! Short Skirts, Telephonoscopes and Ancient Locomotives Albert Robida’s Vision of the Twentieth Century Lotte Kremer ABSTRACT Albert Robida (1848-1926) was a French illustrator, caricaturist and novelist. In 1883 he wrote and illustrated Le Vingtième Siècle, a futuristic novel which gives us a look at twentieth-century life. This book is a science-fiction landmark, with its ambivalent attitude towards technology. In his development of such a detailed and coherent aesthetic of the future, Robida was the first true science fiction illustrator. Robida’s illustrations are an integral part of the novel and are thus worth analysing as a means of expression. I take a closer look at the illustrations, analysing their content and the way they interact with the text. I especially focus on the way they relate to Robida’s own historical context. First, the novel’s place in the science fiction genre is discussed, then its place in developments in illustration. Toward the end, the fashion, architecture, technology and general culture is taken into account. This provides the answers to the central question: how does Robida’s imagined future fit within his time? The novel acutely describes the mass effects of technological change. Robida creates a world akin to an anti-utopia. He conveys his ambivalence towards this progress and its repercussions through the fate of monuments, unthinking historicising fads and the effects of new technology on daily life. He creates a fleshed out world where his contemporary culture is mixed with a futuristic one. His illustrations contribute to this realistic world, which the reader explores from within.
    [Show full text]
  • Patent Alienability and Its Discontents
    Patent Alienability and Its Discontents Hannibal Travis* I. INTRODUCTION ................................................................................. 110 II. LEGAL AND ECONOMIC THEORIES OF ASSET ALIENABILITY .......... 114 A. The Alienability of Property in Economic History and Theory ........................................................................ 114 B. The Contemporary Importance of Patent Alienability ....................................................................... 119 III. CRITIQUES OF PATENT ALIENATION AND MONETIZATION ............. 123 A. Brief History of Patent Reform ........................................ 123 B. The America Invents Act and Efforts To Reduce Infringers’ Patent Licensing Costs ................................... 125 C. The Innovation Act as a Measure Aimed Directly at Patent Alienability ............................................................ 127 IV. ASSESSING PROPOSED REFORMS TO PATENT LAW DESIGNED TO PREVENT “ABUSE” ..................................................................... 128 A. Identifying Exaggerated Claims of Harm to Patent Infringers .......................................................................... 128 B. Highlighting the Role of Patent Licensors in the Research and Development Process ................................. 136 C. Reaffirming Settled Law and Legitimate Expectations Under the Patent Act of 1952 ..................... 139 1. Abstract Method or Process Patents .............................. 139 2. Imitative, Inevitable, or Obvious Improvements ..........
    [Show full text]
  • The Myth of the Sole Inventor]
    Lemley [THE MYTH OF THE SOLE INVENTOR] The Myth of the Sole Inventor1 Mark A. Lemley2 Any elementary-school student can recite a number of canonical American invention stories. Thomas Edison invented the light bulb from his famous home laboratory in Menlo Park, New Jersey. Alexander Graham Bell invented the telephone, again from his home invention laboratory, famously using the phone to call his assistant, saying “Come here, Watson, I need you.” Orville and Wilbur Wright invented the airplane from their bicycle shop, taking it to Kitty Hawk, North Carolina to put it in the air. The list of lone genius inventors goes on and on: Samuel Morse and his telegraph, Eli Whitney and his cotton gin, Robert Fulton and his steamboat, Philo Farnsworth and the television, etc., etc. Patent law is built around these canonical tales. First written in 1790, in the first year of Congress, the patent law betrays its individual-inventor bias at various points, from the requirement that patents always issue to individuals rather than companies to the rule that the first to invent, not the first to file, is entitled to the patent.3 More importantly, the very theory of patent law is based on the idea that a lone genius can solve problems that stump the experts, and that the lone genius will do so only if properly incented by the lure of a patent. We deny patents on inventions that are “obvious” to ordinarily innovative scientists in the field. 1 © 2011 Mark A. Lemley. 2 William H. Neukom Professor, Stanford Law School; partner, Durie Tangri LLP, San Francisco, CA.
    [Show full text]
  • March 20,1888
    ESTABLISHED JUNE 23, 1862-VOL. 26. FAVOR. there may be can be of THE NATIONAL CAPITAL. TO THE PAVEMENT. and the removal of the registry tax and IN BELL’S temporarily disposed MISCELLANEOUS. cannot about such an end, there are DASHED list, by the purchase of bonds. NFECIAL NOTICE*. milCKIXAHEOl'It. bring the for voters in government They two measures that puni- property qualification are worth as high a to the suggest themselves, Rhode Island. premium govern- tion and The means for the first Decision in the Tele* ment as to the holder. They may be sold, if Jay Oouid’s Company Must Pay Its persuasion. Fatal from Her Supreme Court are in the resolution of Congress Mrs. Westlake’s Leap needed, or held until due. If the legal ob- promised Cases. Taxes In Massachusetts. authorizing the President to inflict retaliatory Burning Home. GENERAL NEWS. phone jection really exists Congress will remove it C FINE OFFICES TO LET measures. The second is the much discussed if the administration desire it. It can plain- of commercial union. Deprive Can- ly be seen that there has been no contrac- question Over dealers in Rochester, N. Mike Burns Cets Some Attention ada of all business relations with this coun- thirty liquor Bell Entitled to Patents as a Discov- tion of the currency incident to the tariff, Life Nets Save the Lives of Her Three will 1. The enforce- in the First National to her a on a basis of un- U„ shut ud shop April for 1. 1887, there were in the banks from Persons try, or grant treaty the last erorand Inventor.
    [Show full text]
  • Reduction to Practice, Experimental Use, and the "On Sale" and "Public Use" Bars to Patentability
    St. John's Law Review Volume 63 Number 1 Volume 63, Fall 1988, Number 1 Article 1 Reduction to Practice, Experimental Use, and the "On Sale" and "Public Use" Bars to Patentability William C. Rooklidge W. Gerard von Hoffmann III Follow this and additional works at: https://scholarship.law.stjohns.edu/lawreview This Article is brought to you for free and open access by the Journals at St. John's Law Scholarship Repository. It has been accepted for inclusion in St. John's Law Review by an authorized editor of St. John's Law Scholarship Repository. For more information, please contact [email protected]. ST. JOHN'S LAW REVIEW VOLumE 63 FALL 1988 NUMBER 1 REDUCTION TO PRACTICE, EXPERIMENTAL USE, AND THE "ON SALE" AND "PUBLIC USE" BARS TO PATENTABILITYt WILLIAM C. RooKLmGE* W. GERARD VON HOFFMANN, III** Professor William Robinson introduced his 1890 treatise on patent law with the observation that: [A] period had at last been reached when the Law of Patents could be successfully treated as a department of jurisprudence whose doctrines were derived by logical processes from estab- lished principles, and not as a mere body of legislative enact- ments verbally interpreted by the decisions of the courts .... [W]henever questions of Patent Law are now presented to our courts the factors of the problem lie before them, certain and in- telligible, requiring only careful distinctions and accurate reason- ing to attain impregnable results.1 If patent law had indeed achieved jurisprudential stability in 1890, it strayed far from such stability over the next ninety years.
    [Show full text]
  • Thebaragainstpatentingo
    THE BAR AGAINST PATENTING OTHERS’ SECRETS Christopher C. Funk* CITE AS: 19 STAN. TECH. L. REV. 239 (2016) ABSTRACT In patent litigation, courts frequently allow patent holders to access an accused infringer’s trade secrets and other confidential technology. Those secrets may be relevant to claims of patent infringement. But the confidential access creates a risk that patent holders will misuse those secrets when their attorneys or experts wear two hats— litigating the patent suit in court and working on patent applications in the same field as the accused infringer’s confidential technology. These two hats allow certain attorneys and experts the opportunity to target the accused infringer’s secret technology—either inadvertently or deliberately— by patenting it as their client’s own intellectual property (IP). Several courts attempt to prevent this potential misuse of IP by imposing a patent prosecution bar, which typically forbids those with access to another party’s confidential technology from working at all on patent applications in the same field. But the U.S. Court of Appeals for the Federal Circuit has created a flawed test for determining when a district court may impose prosecution bars. As implemented by most district courts, prosecution bars apply to only those attorneys and experts who are “competitive decisionmakers” and who have a history of working on patent applications. The test is based on a vague and underinclusive term and leaves those without a similar history free of a prosecution bar and positions them to target the other side’s trade secrets with new patent claims. This targeted patenting undermines the IP system’s channeling between patents and trade secrets.
    [Show full text]