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Abstract:
As an appellate body jurisdictionally demarcated by subject matter rather than geography, the United States Court of Appeals for the Federal Circuit occupies a unique role in the federal judiciary. This controversial institutional design has had profound effects on the jurisprudential development of the legal regimes within its purview - especially the patent law, which the Federal Circuit has come to thoroughly dominate in its two decades of existence.

In this Article, we assess the court's performance against its basic premise: that, as compared to prior regional circuit involvement, centralization of legal authority will yield a clearer, more coherent, and more predictable legal infrastructure for the patent law. Using empirical data obtained from a novel study of the Federal Circuit's jurisprudence of claim construction - the interpretation of language defining a patent's scope - we conclude that, on this indicator at least, the record is decidedly mixed, though there are some encouraging signs.

Specifically, the study indicates that the court is sharply divided between two basic methodological approaches to claim construction, each of which leads to distinct results. The dominant analytic framework gained additional favor during the period of the study, and yet the court became increasingly polarized. We also find that the significantly different approaches to claim construction followed by Federal Circuit judges has led to panel-dependency; claim construction analysis is clearly affected by the composition of the three-judge panel that hears and decides the case.

While little in the results of this study would lead one to conclude that the court has been an unqualified success, we believe that the picture of the Federal Circuit that emerges is of a court in broad transition. Driven in part by new appointments and an effort to respond to its special mandate, a new Federal Circuit is emerging - one that appears to be more rules-driven and more consistent than before. It is too early to be sure, but the findings here, perhaps bolstered by the procedural and jurisprudential reform suggestions we derive from the results, suggest that the Federal Circuit's unique position in the judiciary may yet be vindicated.

Federal Circuit, patents, patent law, claim construction, judiciary, judges, statistical analysis

Abstract:
This article presents a new theory of patent value, responding to growing empirical evidence that the traditional appropriability premise of patents is fundamentally incomplete in the modern innovation environment. We find that for patents, the whole is greater than the sum of its parts: the true value of patents lies not in their individual worth, but in their aggregation into a collection of related patents, a patent portfolio.

The patent portfolio theory thus explains what is known as the patent paradox: in recent years patent intensity - patents obtained per research and development dollar - has risen dramatically even as the expected value of individual patents has diminished. We find the benefits of patent portfolios to be so significant as to suggest that firms' patenting decisions are essentially unrelated to the expected value of individual patents; because patent portfolios simultaneously increase both the scale and the diversity of available marketplace protections for innovations, firms will typically seek to obtain a large quantity of related patents, rather than evaluating their actual worth. The result - which we find widely recognized in commercial circles - is that the modern patenting environment exhibits (and requires) a high-volume, portfolio-based approach that is at odds with scholars' traditional assumptions.

The implications of the portfolio theory of patents are important and widespread. First, the explanatory power of the theory allows resolution of not only the patent paradox, but many of the otherwise-puzzling observable patterns in the modern patenting environment - such as firm-size differences in patent intensity and litigation rates. Second, the patent portfolio theory neatly complements the prior theories that have sought to explain modern patent value, strengthening their relationship with the reality of patenting behavior - and confirming that the value of patents has expanded beyond traditionalist notions. Third, the patent portfolio theory allows a number of important predictive insights into future trends in the patent system, allowing policymakers and scholars to frame their inquiry within a range of likely outcomes. In our analysis, the patent portfolio theory does not suggest a better, brighter future for the patent system, but does build a foundation for the important academic and policy-related work that springs from this initial treatment.

patents, patent value, portfolios, patent theory, patent paradox

Abstract:
This article presents a new theory of patent value, responding to growing empirical evidence that the traditional appropriability premise of patents is fundamentally incomplete in the modern innovation environment. We find that for patents, the whole is greater than the sum of its parts: the true value of patents lies not in their individual worth, but in their aggregation into a collection of related patents, a patent portfolio.

The patent portfolio theory thus explains what is known as "the patent paradox": in recent years patent intensity - patents obtained per research and development dollar - has risen dramatically even as the expected value of individual patents has diminished. We find the benefits of patent portfolios to be so significant as to suggest that firms' patenting decisions are essentially unrelated to the expected value of individual patents; because patent portfolios simultaneously increase both the scale and the diversity of available marketplace protections for innovations, firms will typically seek to obtain a large quantity of related patents, rather than evaluating their actual worth. The result - which we find widely recognized in commercial circles - is that the modern patenting environment exhibits (and requires) a high-volume, portfolio-based approach that is at odds with scholars' traditional assumptions.

The implications of the portfolio theory of patents are important and widespread. First, the explanatory power of the theory allows resolution of not only the patent paradox, but many of the otherwise-puzzling observable patterns in the modern patenting environment - such as firm-size differences in patent intensity and litigation rates. Second, the patent portfolio theory neatly complements the prior theories that have sought to explain modern patent value, strengthening their relationship with the reality of patenting behavior - and confirming that the value of patents has expanded beyond traditionalist notions. Third, the patent portfolio theory allows a number of important predictive insights into future trends in the patent system, allowing policymakers and scholars to frame their inquiry within a range of likely outcomes. In our analysis, the patent portfolio theory does not suggest a better, brighter future for the patent system, but does build a foundation for the important academic and policy-related work that springs from this initial treatment.

patents, patent value, portfolios, patent theory, patent paradox

Abstract:
It is by now a cliché to suggest that the United States Court of Appeals for the Federal Circuit has weakened the standards for obtaining patents. In this article, we empirically assess that Court's performance on the ultimate question of patentability - the requirement that a patentable invention must be nonobvious. Our findings suggest that the conventional wisdom may not be well-grounded, at least on this measure.

Nowhere is the Federal Circuit's controversial role as the locus of judicial power in the U.S. Patent system more evident than in the context of the doctrine of obviousness under 35 U.S.C. Section 103. The determination of whether an invention was obvious to a person having ordinary skill in the art at the time the invention was made is the foundation of patentability - and thus at the very core of the patent bargain. And the issue's status as a question of law, as well as the spare statutory language, means that the law of obviousness is entirely a creation of the courts.

In the study reported here, we systematically examine the Federal Circuit's doctrine of obviousness. Using empirical data collected from a novel dataset spanning over fifteen years of jurisprudential pronouncements, we suggest that the Federal Circuit has developed a doctrine in this area that is relatively stable and appears reasonably predictable. Indeed, contrary to much recent commentary, these results suggest that the Federal Circuit's doctrinal toolkit - especially the much-discussed (and oft-maligned) teaching, suggestion, or motivation test for combinations of references - has not had a significant observable effect on the results of obviousness cases at that Court.

Although this study falls short of painting a complete picture of the Federal Circuit's performance with respect to patentability, the view that emerges is of a modern jurisprudence of obviousness that is more stable, more consistent, and more flexible than has been heretofore understood. These results, then, should give pause to those who argue for a radical reshaping of the Federal Circuit's doctrine under 35 U.S.C. Section 103.

patents, obviousness, nonobviousness, patent law, innovation, Federal Circuit, content analysis

Abstract:
While Cyberspace is, by now, well-recognized as a social and commercial environment of great promise, there is considerable debate about the form of governance that will best meet the needs of this new medium. Much of the present discussion casts this debate in stark terms -- "top-down" hierarchical rules versus spontaneous "bottom-up" coordination -- with self-ordering based on contracts and private agreements rather than public laws appearing both preferable and more likely to evolve. Following up on arguments presented by Professors Fisher and Elkin-Koren in this symposium, Radin and Wagner point out that the dichotomy between top-down and bottom-up obscures that a self-ordering regime brought about by networks of contracts cannot stably exist without an established background of laws against which to enforce these agreements. They argue -- using examples of the dispute over the allocation of domain names and the advent of trusted systems -- that Cyberspace advocates should be debating the ingredients of good mixtures of private and public ordering rather than positing the choice between state control and anarcho-cyberlibertarianism. In considering these hybrid governance systems, Radin and Wagner note that the enforcement of rules in Cyberspace will depend largely upon the ultimate remedy of banishment. This remedy, they argue, will test the restraint of territorial sovereigns to whom any banishment might be appealed; unless there is considerable agreement about baseline rules among territorial sovereigns, any self-enforcement in Cyberspace may well be unstable. They therefore conclude that a necessary ingredient for self-ordering in Cyberspace is the development of global minimal background standards of due process and public policy limits on private agreements -- and that such harmony has a better chance of emerging if advocates do not forget that contractual self-ordering cannot exist without it.

Abstract:
While Cyberspace is, by now, well-recognized as a social and commercial environment of great promise, there is considerable debate about the form of governance that will best meet the needs of this new medium. Much of the present discussion casts this debate in stark terms?"top-down" hierarchical rules versus spontaneous "bottom-up" coordination?with self-ordering based on contracts and private agreements rather than public laws appearing both preferable and more likely to evolve. Following up on arguments presented by Professors Fisher and Elkin-Koren in this symposium, Radin and Wagner point out that the dichotomy between top-down and bottom-up obscures that a self-ordering regime brought about by networks of contracts cannot stably exist without an established background of laws against which to enforce these agreements. They argue?using examples of the dispute over the allocation of domain names and the advent of trusted systems?that Cyberspace advocates should be debating the ingredients of good mixtures of private and public ordering rather than positing the choice between state control and anarcho-cyberlibertarianism. In considering these hybrid governance systems, Radin and Wagner note that the enforcement of rules in Cyberspace will depend largely upon the ultimate remedy of banishment. This remedy, they argue, will test the restraint of territorial sovereigns to whom any banishment might be appealed; unless there is considerable agreement about baseline rules among territorial sovereigns, any self-enforcement in Cyberspace may well be unstable. They therefore conclude that a necessary ingredient for self-ordering in Cyberspace is the development of global minimal background standards of due process and public policy limits on private agreements?and that such harmony has a better chance of emerging if advocates do not forget that contractual self-ordering cannot exist without it.

Abstract:
Last Term, in Festo Corporation v. Shoketsu Kinzoku Kogyo Kabashuki Co., the United States Supreme Court missed perhaps the most important opportunity for patent law reform in two decades. At the core of the failure to grasp the implications of "prosecution history estoppel" - a judicially-crafted principle limiting the enforceable scope of patents based on acts occurring during their application process - is the heretofore universal (but ultimately unsupportable) view of the doctrine as an arbitrary ex post limitation on patent scope. This Article demonstrates the serious flaws in this traditionalist approach, and develops a new theory of prosecution history estoppel based on its ex ante effects. This shift of focus from the allocation of liability during infringement (ex post) to the way the rule generates incentives both during and before inventors apply for patents (ex ante) offers substantial insights into the central role that this venerable doctrine plays in the modern patent administrative system. In particular, the Article argues that prosecution history estoppel is best viewed as an information-forcing default penalty rule, where the possibility of lost patent scope induces patentees to produce socially-valuable information early in the life of the patent. Other benefits include the internalization of costs related to certain activities during patent prosecution, and increased enforcement of the institutional arrangements between the Patent Office and the Judiciary. Indeed, the considerable analytic advantages observed in this context strongly suggest that the Article's methodological approach of reconsidering the patent law in an explicitly ex ante framework has applications well beyond prosecution history estoppel.

patents, law and economics, prosecution history estoppel, doctrine of equivalents, ex ante, ex post, default rules, PTO, federal circuit, patent prosecution, patent litigation, intellectual property, patent reform, patent administration, patent office

Abstract:
This Article develops a novel analytic framework for the evaluation of regulatory policy in cyberspace, flowing from a reconceptualization of cyberlaw's central premise: software code as complementary to law rather than its substitute. This approach emphasizes the linkage between law and software; for every quantum of legal-regulatory impact, there is a corresponding equilibria of regulation-by-software. The absence of a legal right will stimulate a technological response - and such incentives will moderate with increased rights. Rather than code is law, this is code meets law.

The implications of this methodological shift are explored in the context of the emerging (and intensely controversial) cyberproperty right - defined as the right to exclude others from one's network resources. The debate over whether (and how, and why) concepts of property rights can be extended to bits stored on web servers, email systems and the like is both deeply intertwined with technology and fundamentally comparative in nature, bringing the importance of understanding the regulatory costs and benefits of software (as compared to law) into sharp relief.

The analysis that emerges suggests that, contrary to much of the relevant scholarly literature (and perhaps counterintuitively), the availability of technological mechanisms to replace legal rights likely strengthens, rather than weakens, the case for legal regulation in the form of property rights. At least in this context, a software-centric regulatory approach is dominated by regimes premised on property-backed contractual relationships.

Considering the regulatory environment of cyberspace from this perspective may have profound effects on the way we think about the form and function of law online. The nature of cyberspace as particularly sensitive to emerging concerns about the tyranny of software suggests that the online environment might be more suited for a broad property rights regime than has been recognized to date.

Regulation, cyberlaw, code, property, intellectual property, cyber property

Abstract:
This Article develops a novel analytic framework for the evaluation of regulatory policy in cyberspace, flowing from a reconceptualization of cyberlaw's central premise: software code as complementary to law rather than its substitute. This approach emphasizes the linkage between law and software; for every quantum of legal-regulatory impact, there is a corresponding equilibria of regulation-by-software. The absence of a legal right will stimulate a technological response - and such incentives will moderate with increased rights. Rather than code is law, this is code meets law.

The implications of this methodological shift are explored in the context of the emerging (and intensely controversial) cyberproperty right - defined as the right to exclude others from one's network resources. The debate over whether (and how, and why) concepts of property rights can be extended to bits stored on web servers, email systems and the like is both deeply intertwined with technology and fundamentally comparative in nature, bringing the importance of understanding the regulatory costs and benefits of software (as compared to law) into sharp relief.

The analysis that emerges suggests that, contrary to much of the relevant scholarly literature (and perhaps counterintuitively), the availability of technological mechanisms to replace legal rights likely strengthens, rather than weakens, the case for legal regulation in the form of property rights. At least in this context, a software-centric regulatory approach is dominated by regimes premised on property-backed contractual relationships.

Considering the regulatory environment of cyberspace from this perspective may have profound effects on the way we think about the form and function of law online. The nature of cyberspace as particularly sensitive to emerging concerns about the tyranny of software suggests that the online environment might be more suited for a broad property rights regime than has been recognized to date.

regulation, cyberlaw, code, property, intellectual property, cyber property

Abstract:
This article seeks to fill a critical gap in the current literature relating to the international ordering of cyberspace: the link between jurisdictional assertions by realspace sovereigns and their effects on the global effort to administer the Internet. We analyze the United States' response to disputes over domain names, the Anticybersquatting Consumer Protection Act (ACPA), which permits a trademark owner to seek cancellation or transfer of the domain name by proceeding in rem against the domain name itself, thereby expanding the scope of the ACPA to encompass disputes with little direct connection to the United States. Congress appears to have developed 15 U.S.C. s. 1125(d)(2) based on a misunderstanding of the constitutional requirements for adjudicative jurisdiction in the U.S. courts; and early court decisions interpreting the provision have perpetuated the misunderstanding. We argue that there exist no cases of foreign cybersquatting (aside from certain cases involving anonymous registrants) as to which the in rem provision will be both applicable and constitutional. In short, the ACPA is notable mainly for its aggressive approach to jurisdiction. This expansive view of jurisdiction reveals the extent to which realspace sovereigns have a critical, and yet overlooked, role in the continued viability of a global unsegmented domain name system. By mapping the logical control over the domain name system - the distributed hierarchy that is the basis of the system's design - onto realspace territory, the potential for sovereign regulation of the system becomes apparent, either under the recognized principles of prescriptive jurisdiction in international law or as a de facto result of the geographic facts of the domain name system. We contend that the ACPA exemplifies uncoordinated actions that are likely to result in segmentation of the domain name system and thus a decline in social welfare.

domain names, cybersquatting, ICANN, ACPA, anticybersquatting consumer protection act, internet, internet governance, Congress, jurisdiction, in rem, international jurisdiction, domain name segmentation

Abstract:
This Essay delves into issues surrounding the relationship between technology and the patent law. Responding to Dan Burk and Mark Lemley's Biotechnology's Uncertainty Principle, the piece notes that the basic question posed by that article - whether the patent law is "technology-specific" - is a relatively easy question, given the several doctrines that explicitly link the subject matter context of an invention to the validity and scope of related patents. This sort of technological exceptionalism (which the Essay refers to as TYPE I exceptionalism) is both extant and easily justifiable for a legal regime directed to technology policy. It is a broader sort of exceptionalism (TYPE II) that is far more troublesome, implying a role for the patent law in quite detailed policy judgments, such as the optimal breadth for biotechnological patents (as Burk and Lemley suggest). The Essay offers a variety of reasons that TYPE II exceptionalism is unwarranted, and indeed, notes that a primary claim of Burk and Lemley's - that the Federal Circuit has grossly missed the mark in its (purportedly) exceptionalist approach - previews the sort of problems created by pursuing technological exceptionalism in the patent law.

patents, patent law, technology, POSITA, exceptionalism, Federal Circuit, claim construction, obviousness, validity, biotechnology, Lourie

Abstract:
Is computer software ? code written by humans that instructs a computer to perform certain tasks ? protected by the First Amendment? The answer to this question will significantly impact the course of future technological regulation, and will affect the scope of free expression rights in new media. In this note, I attempt to establish a framework for analysis, noting at the outset that the truly important question in this context is the threshold question: what is "speech or . . . the press"? I first describe two general ways that the Supreme Court has addressed the threshold question. One is ontologically: focusing on the expressive content of the speaker?s conduct or the medium chosen. The second is teleologically: determining whether the regulation at issue implicates free expression. I argue that the teleological mode ? especially as applied to computer software and other new media ? is the more likely to be consistently speech-protective, and that the courts that have addressed computer software have mistakenly opted for an ontological medium-focused analysis. Use of a teleological approach implies that there should be no "law of software" ? a conclusion that I argue holds the most promise for extending robust First Amendment protections into new mediums of communication.

Abstract:
This article challenges a central tenet of the recent criticism of intellectual property rights: the suggestion that the control conferred by such rights is detrimental to the continued flourishing of a public domain of ideas and information. I argue that such theories understate the significance of the intangible nature of information, and thus overlook the contribution that even perfectly controlled intellectual creations make to the public domain. In addition, I show that perfect control of propertized information - an animating assumption in much of the contemporary criticism - is both counterfactual and likely to remain so. These findings suggest that increasing the appropriability of information goods may in many cases grow, rather than diminish, the quantity of open information. Further, the benefits of control in fostering coordination and enabling flexibility in arrangements are essential elements of promoting progress in a changing world.

intellectual property, copyright, patents, information wants to be free, sharing

Abstract:
This short essay critically evaluates the current proposals, most closely associated with Dan Burk and Mark Lemley, that the patent law should increasingly become technology-specific - that is, that the law should reflect different rules for different technological areas or industries. I make three points. The first is to point out that descriptive claims of a fundamental technological-exceptionalism (what I call "macro-exceptionalism") in the patent law are not well supported, once one sets aside the small factual variability ("micro-exceptionalism") built into the legal standards. Second, using empirical data from the development of claim construction jurisprudence and the patterns of en banc proceedings at the Federal Circuit, I argue that the major trends in the patent law run directly counter to macro-exceptionalist claims. Finally, in considering the public policy issues raised by the calls for a judicially created technological-exceptionalism, I conclude that the most successful approach is, indeed, exactly backwards of that suggested by the proponents of technological-specificity in the patent law.

patents, technological specificity, exceptionalism

Abstract:
This brief essay extends the analysis in On Software Regulation, 78 S. Cal. L. Rev. 457 (2005), to the anticircumvention provisions of the Digital Millennium Copyright Act. I argue that the DMCA should be reconceptualized as an effort in Congress to alter the regulatory balance between law and software rather than an effort to expand the scope of copyright protection. I suggest that this regulatory strategy, which I call legal preemption, is likely to be an emerging feature of legislation in the years ahead.

intellectual property, copyright, public values, fair use, DMCA, anticircumvention, software

Abstract:
The cry to 'improve patent quality' is heard anywhere patent lawyers gather and is a centerpiece of many of the political and academic establishments' major reform agendas. Indeed, although the modern patent system is entangled in policy disputes across a huge range of issues, the need to improve patent quality is essentially undisputed. What has largely been lost in this drumbeat for improved patent quality is that the modern patent system affirmatively encourages low patent quality - the incentives at work are such that we cannot reasonably expect anything other than very large numbers of low-quality patents. For this reason, virtually all of the proposed reforms directed to patent quality are doomed to fail; until we change the incentives (and change them quite significantly), the patent-quality problem will continue to grow. In this Article, I suggest that only by understanding the mechanisms of patent quality - the incentive structure that not only discourages 'good' patent behavior but also encourages 'bad' patent behavior - will we make any real progress in improving the situation. Low patent quality, I argue, is not simply the problem of the U.S. Patent and Trademark Office (USPTO) and its counterparts worldwide, and no patent office can 'fix' patent quality alone. Indeed, given the number of annual filings, it is hard to imagine any scenario in which enough resources could be directed toward this effort to have a meaningful impact. Instead, a serious effort to improve patent quality will need to address the reasons why patentees increasingly adopt a high-volume, low-quality patenting strategy, why litigation has become virtually the only reliable tool for determining a patent's scope and validity, and why memes such as 'patent trolls' and 'patent thickets' have become embedded in current legal-policy discourse. A patent system that yields high-quality patents is an attainable goal. But administrative reforms - although they might well help - will not alone get us there. Until patentees have strong, unequivocal incentives to seek patents that clearly meet the standards of patentability, that are explained in the context of the prior art, and that draw clear and unambiguous lines around their subject matter, we will not succeed. The tools are there -- we just need to understand which ones to use.

patents, patent quality, patent law, USPTO

Abstract:
This short conference paper considers how the contemporary discourse surrounding Intellectual property law (especially copyright) may be harming all concerned. That is, because of wildly divergent (and often objectively unsupportable) positions taken by both copyright owners and consumer advocates, the zone of uncertainty in the law has increased. And as uncertainty increases, both sides are hurt. The paper end with a call for a higher level of discourse, and a query regarding whether all concerned might be better off trading rights for certainty.

intellectual property, copyright, public values, fair use

Abstract:
The patent statutes were wisely drafted with an expansive vision of patentable subject matter. Efforts to graft judicially created limitations onto that expansive scope in the past have proven fruitless and indeed counterproductive. In deciding Bilski v. Doll, the Supreme Court should not impose a requirement that patentable inventions require a machine or the physical transformation of some material. It should instead maintain the rule that patents are available for "anything under the sun made by man," including discoveries of ideas, laws of nature, or natural phenomena, so long as they are implemented in a practical application. In short, the test should be as it has been: where an idea is claimed as applied, it is eligible for patentability, but if it is claimed merely in the abstract it is not.

patentable subject matter, Bilski, patent eligibility, business method patents, software patents

Abstract:
This Article delves into issues surrounding the relationship between technology and the patent law. Responding to Dan Burk and Mark Lemley's earlier article, Is Patent Law Technology-Specific?, the piece notes that the basic question posed by Burk and Lemley's article is a relatively easy question given the several doctrines that explicitly link the subject matter context of an invention to the validity and scope of related patents. This sort of technological exceptionalism (which this Article refers to as micro-exceptionalism) is both observable and easily justifiable for a legal regime directed to technology policy. In contrast, Burk and Lemley's identification of, and advocacy for, a broader sort of exceptionalism (macro-exceptionalism) is far more troublesome, implying a role for the patent judiciary in rather detailed policy judgments, for example the optimal breadth for biotechnological or software-based patents. The Article offers a variety of reasons that macro-exceptionalism is unwarranted, and indeed, notes that a primary claim of Burk and Lemley's - that the Federal Circuit has grossly missed the mark in its (purportedly) exceptionalist approach - previews the sort of problems created by pursuing technological exceptionalism in the patent law.

patents, Federal Circuit, patent law, innovation, exceptionalism, technology

Abstract:
Internet content filters -- promising a technological solution to the uniquely social problem of widespread availability of adults-only content on the Internet -- appear to shift the debate over control of "cyberporn" from the legislative to the technical. Yet a growing number of commentators are expressing serious reservations about the free speech implications of filters. In this Article, I note that the ever-changing relationship between technology, network economics, and legal doctrine in the new economic and ideological marketplace of Cyberspace will fundamentally impact any constitutional analysis. I argue that the existing literature's analytic reliance on expansive concepts of state action is ill-founded: both vulnerable to technological and legislative manipulation and finding little doctrinal support. Instead, I outline an approach based on First Amendment theories of association, arguing that this "associative" approach -- supported by current precedent -- is the most promising among several alternatives for providing an adaptive and powerful constitutional framework for evaluating indirect government regulation of the Internet.