• Selected
• Entire List

Abstract:
The U.S. Court of Appeals for the Federal Circuit, in its continuing effort to develop a patent claim construction jurisprudence that yields predictable results, has turned to dictionaries, encyclopedias, and similar sources with increasing frequency. This paper explores, from both an empirical and a normative perspective, the Federal Circuit's effort to shift claim construction to a dictionary-based approach. In the empirical part, we present data showing that the Federal Circuit has, since its own in banc Markman decision in April 1995, used reference works such as dictionaries to construe claim terms with steadily increasing frequency. In addition, and contrary to what one might predict from some of the court's earlier statements justifying reliance on dictionaries in claim construction, the Federal Circuit has relied on general purpose English language dictionaries more than twice as often as it has relied on more technical or specialized reference works. Indeed, the claim construction reference work the Federal Circuit has cited most often is Webster's Third New International Dictionary, which by itself accounts for 25% of all such citations and 36% of all citations to general purpose English language dictionaries and similar sources. After demonstrating that the caprice with which judges currently may choose dictionaries effectively eliminates whatever neutrality and predictability gains the turn to dictionaries can offer, we show that the best route to a dictionary-based approach for settling a claim term's ordinary meaning is an explicit change to the Patent Office rules governing patent examination. Specifically, we propose that the Patent Office require that every patent applicant put her dictionary selections (general purpose and technical) on the record during examination, and that any resulting issued patent state the applicant's dictionary selections on its face. Only with such changes to Patent Office rules can the patent system hope to realize the neutrality and predictability goals that rightly animate the Federal Circuit's turn to dictionaries.

Patent, claim construction, Markman, dictionary

Abstract:
The U.S. Court of Appeals for the Federal Circuit, in its continuing effort to develop a patent claim construction jurisprudence that yields predictable results, has turned to dictionaries, encyclopedias, and similar sources with increasing frequency. This paper explores, from both an empirical and a normative perspective, the Federal Circuit's effort to shift claim construction to a dictionary-based approach. In the empirical part, we present data showing that the Federal Circuit has, since its own in banc Markman decision in April 1995, used reference works such as dictionaries to construe claim terms with steadily increasing frequency. In addition, and contrary to what one might predict from some of the court's earlier statements justifying reliance on dictionaries in claim construction, the Federal Circuit has relied on general purpose English language dictionaries more than twice as often as it has relied on more technical or specialized reference works. Indeed, the claim construction reference work the Federal Circuit has cited most often is Webster's Third New International Dictionary, which by itself accounts for 25% of all such citations and 36% of all citations to general purpose English language dictionaries and similar sources. After demonstrating that the caprice with which judges currently may choose dictionaries effectively eliminates whatever neutrality and predictability gains the turn to dictionaries can offer, we show that the best route to a dictionary-based approach for settling a claim term's ordinary meaning is an explicit change to the Patent Office rules governing patent examination. Specifically, we propose that the Patent Office require that every patent applicant put her dictionary selections (general purpose and technical) on the record during examination, and that any resulting issued patent state the applicant's dictionary selections on its face. Only with such changes to Patent Office rules can the patent system hope to realize the neutrality and predictability goals that rightly animate the Federal Circuit's turn to dictionaries.

Patent, claim construction, Markman, dictionary

Abstract:
Many leading voluntary standard-setting organizations (SSOs) have adopted intellectual property (IP) policies under which participants must promise to license any patents on technology that they contribute to a standard, and to do so on reasonable and nondiscriminatory terms (RAND). The standard setting literature includes a substantial focus on the widespread use of this RAND promise. A common refrain in these analyses of the RAND promise is that its meaning is dysfunctionally uncertain. We know more about the RAND promise, however, than the existing literature suggests. I show that we already know the RAND promise's core meaning, and why it remains attractive to SSOs. Specifically, I demonstrate that, although framed by reference to patent rights, the RAND promise's core function is to achieve a business organization goal that all SSOs confront - namely, removing the threat of post-adoption hold-up, thus inducing group production of a viable standards-based technology platform. One can solve the organizational problem by transferring a property right from threatener to threatenee(s). Corporate law scholars have shown that the corporate form enables group production of complex goods by giving contributors a way to lock in their capital to a separate property-holding entity, precluding both subsequent withdrawal and hold-ups from threatened withdrawal. In the IP domain, for example, patent pools usually form new companies to hold patent licensing rights centrally. Similarly, in the standards context, SSOs enable production of a standards-based technology platform by conditioning contributors' participation on making the RAND promise, i.e., on granting the whole of the adopter community a property-like access right to contributors' patented contributions to the standard. This access lock-in, whereby participants cast themselves into a common venture, makes possible post-standardization, mutually-beneficial bargaining over patent license terms by precluding both subsequent patent-based shutouts and holdups from threatened shutouts. In other words, every participating patent owner has, by making the RAND licensing promise, irrevocably waived its right to seek that most traditional of intellectual property law remedies, a court injunction against unauthorized access. The only relief a frustrated patent owner can seek against an adopter thereafter is the reasonable royalty expressly contemplated. Moreover, the RAND promise must run with the patent if the patent is sold to another party; only in this way does the RAND promise ensure that the standard can flourish without hold-up for as long as the market supports the technology.

standard setting, patents, governance, opportunism

Abstract:
In April 2007, the Supreme Court, for the first time in 41 years, decided a case about the basic contours of patent law's nonobviousness standard. The case, KSR, upends 25 years of Federal Circuit jurisprudence, and on a legal requirement that every patent must satisfy. In this essay, I show how KSR dismantles two predicates that have long shaped Federal Circuit nonobviousness cases - namely, the intertwined premises that hindsight-driven distortion is the gravest risk to an accurate nonobviousness requirement, and that the person of ordinary skill in the art (from whose perspective nonobviousness is judge) is singularly uncreative. In place of hindsight dread and the dullard artisan, the Supreme Court gives us caution against overpatenting and the creative artisan. Perhaps most important is that, consistent with these new predicates, the Supreme Court revives its holding from 1950 that a combination claim, i.e., a claim that simply remixes prior art technologies according to their established functions, must be scrutinized with great caution because it is likely unpatentable. I propose an evidentiary presumption framework to regularize KSR's mandate.

patent, nonobviousness, obviousness

Abstract:
Claim construction jurisprudence is in disarray. The U.S. Court of Appeals for the Federal Circuit reverses trial court claim construction decisions at a worryingly high rate. The proportion of Federal Circuit claim construction opinions that include separate concurrences or dissents continues to grow. And the muddled mix of issues the Federal Circuit framed for en banc review in the Phillips case suggests that the court is having trouble reaching consensus on what the central questions are, much less on how to answer them. Perhaps the path to adequately predictable claim construction is continued tinkering with the analytical constructs internal to the Federal Circuit's claim construction jurisprudence. But I doubt it. In this paper, I therefore take a sharply different approach to the question, how can we make claim construction more predictable? Inspired by the maxim garbage in, garbage out, I look to the patent system actor that has plenary power, within the broad outline set by the Patent Act, over the details of all patent disclosures - namely, the Patent Office. Specifically, I examine additional, low-cost disclosures that would assist claim construction and that the Patent Office can demand from all patent applicants. Carefully selected disclosures would make all patents far more helpful tools in their own construction, providing social benefits that far outweigh the added patent preparation costs. I explore four additional patentee disclosures, all requiring express statements on the face of the patent itself: (a) the field of art to which the claimed invention pertains; (b) all problems that the claimed invention helps solve; (c) a lexicon of all claim terms to which the applicant gives a meaning other than its accustomed meaning to people having ordinary skill in the pertinent art (along with a supporting interpretive rule barring special meanings for any terms not in the lexicon); and (d) a list of preferred objective reference sources, such as technical treatises and dictionaries (general or specialized), to which an interested reader should refer to learn about the ordinary meaning of the remaining claim terms to a person having ordinary skill in the art. In any subsequent claim construction process, whether for licensing, design-around, or litigation purposes, parties would have the benefit of patents enriched with this new information. The patent document, enhanced in this way, would better fulfill its role as claim construction's central resource.

Patent, claim construction, Federal Circuit

Abstract:
A patent challenger who defeats a patent wins a prize that it must share with the whole world, including all its competitors. This forced sharing undermines an alleged infringer's rea-son for fighting the patent case to the finish—especially if the patent owner offers an attractive settlement. Too many settlements, and too few definitive patent challenges, are the result. A litigation-stage bounty would correct this defect in patent litigation's basic framework, for it would provide cash prizes to successful patent challengers that they alone would enjoy. After briefly describing the free rider problem with inventions that patent law attempts to solve, this article details how the Supreme Court's decision in Blonder-Tongue creates an equally troubling free rider problem in the context of patent validity challenges. It then critiques two recent pro-posals directed at solving the free rider problem that undercuts patent challenges: an examina-tion-stage bounty proposed by Professor Thomas, and a one-way fee-shifting rule more recently proposed by Professor Kesan. The article next proposes a new bounty, one that offers the bene-fits of the Thomas and Kesan proposals without their respective drawbacks. The proposed bounty would apply at the litigation stage, in an amount that varies as a function of the patentee's net profits from practicing the technology set forth in the asserted patent claims. Finally, the ar-ticle tries to answer the most likely objections to a litigation-stage bounty.

patent, intellectual property, bounty, litigation, Blonder-Tongue, patent & antitrust

Abstract:
The Supreme Court's KSR decision transforms the way we think about patent law's ordinary artisan. The ordinary artisan, the Supreme Court states, is also a person of ordinary creativity, not an automaton. This transformation, which sweeps aside a contrary precept that had informed the Federal Circuit's nonobviousness jurisprudence for a generation, raises a key question: How do we fill out the rest of our conception, in a given case, of the ordinary artisan's level of skill at the time the invention was made? Reaching back to a large vein of case law typified by Judge Learned Hand's decisions about nonobviousness, as well as an all-but-forgotten nonobviousness bill that died in committee in 1948, I show that the modern level of skill inquiry can comfortably rely on evidence of long-felt, unmet need in the art and the failure of others to meet that need. For it remains true, as Judge Hand once observed, that "the best test of what persons of routine ingenuity can do is what they have done."

patent, nonobviousness, phosita

Abstract:
This brief essay arises from my participation in an April 2006 conference at Seattle University Law School, entitled At the Intersection of Antitrust and Intellectual Property Law: Looking Both Ways to Avoid a Collision. This intersection metaphor is a common one for describing antitrust law's relationship with intellectual property law, among both courts and commentators. This essay explores a different metaphor: patent ships sail an antitrust sea, protecting those aboard from competition's harshest dangers - but only for a time. The nautical metaphor evokes three ideas that the crossroads metaphor does not. First, vigorous competition is the pervasive, baseline reality; patent protection is the temporary, partial exception. Second, we grasp both patent and antitrust policy with a common science, economics. Third, although neither patent nor antitrust law doctrines are good tools for fixing fundamental problems in the other body of law, both these bodies of law help us better understand the shortcomings of the other.

patent, antitrust, metaphor

Abstract:
Copyright's originality standard is ripe for reappraisal. Many have described how copyright exclusion claims now intrude into the everyday lives of ordinary folk - making an "infringement nation," coated in "billowing white goo." (Tehranian (2007); Litman (2008)). And many have proposed ways to cope with copyright's expansion, from strengthening the fair use privilege to trimming the derivative work right to modifying the basic "substantial similarity" infringement standard. A few have tackled the matter at the front end - putting, as it were, less goo in the billowing machine. (E.g., Hughes, Size Matters (2005); Sprigman, Reform(Aliz)ing (2004)). Virtually no one, however, has gone back to the source - copyright's originality standard. Feist, the phone book white pages case, tells us that, at least as a constitutional matter, "the requisite level of creativity is extremely low." 499 U.S. 340, 345 (1991). But the Copyright Act's statutory originality requirement can, and should, be more demanding. I pattern this exploration on patent law's rejuvenated nonobviousness requirement, which the Supreme Court's KSR decision (2007) grounds on incenting the unconventional and unexpected. We should put copyright's creativity requirement on the same footing, protecting expression in proportion to its unconventionality. Indeed, the conditions that justify a nonobviousness requirement for useful inventions - distilled to the wisdom that "[w]ith greater rights come more stringent requirements for obtaining the rights" (Duffy, Inventing Invention at 10 (2007)) - are strikingly similar to those that bear on creative expression. I also identify the critical wrong turn in Bleistein (1902), where Justice Holmes concluded that the alternative to a low creativity threshold was a stifling aesthetic orthodoxy policed by the judiciary. He was right to turn away from such orthodoxy, of course, but missed a third, and better way - rewarding, and thus encouraging, the heterodox itself. The progress at which we should aim, for copyright as much as for patent, is the new vista to which we're led by those who break through conventional boundaries.

copyright, originality, creativity, nonobviousness

Abstract:
On March 10, 2006, the Lewis & Clark Law Review sponsored a day-long symposium entitled Open Access Publishing and the Future of Legal Scholarship. That gathering led to eight papers that are forthcoming in Volume 10, Issue No. 4, of the Lewis & Clark Law Review. In this short Foreword, I offer some thoughts about why all law professors should take an interest in the movement promoting open access to scholarship. The principal reason, based in current circumstances, is the way that using an open access platform extends one's reach. The aspirational reason is that open access platforms enable us to create a new social layer of networked semantic tags that improve our grasp of scholarship by organizing and commenting on that scholarship.

open access, scholarship, publishing, law review, social bookmarking, connotea