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Abstract:
Patent law has been missing the obvious. Tasked with advancing innovation by awarding an exclusive right to make or use certain inventions in exchange for their creation and disclosure to the public, patent law has installed certain threshold conditions as gatekeepers to ensure that the valuable patent right is granted only to worthy inventions. The Supreme Court's recent decision in KSR International Co. v. Teleflex Inc. shone a spotlight on nonobviousness and on articulating the criterion flexibly enough to guarantee that patents issue only to inventions constituting a sufficient advance in the state of the art, thereby encouraging, not stifling, innovation. Despite this overarching salutary and important purpose highlighted in KSR, neither courts nor scholars have analyzed or clearly settled on the object of the obviousness inquiry, a critical component of a nonobviousness determination. That is, what is it that must be nonobvious? Some courts have implied that the object that must be nonobvious is the concept of the invention (the complete idea as articulated in the patent's claims). Other courts have hinted that it might be some combination of the concept and the reduction to practice of a working model. As troubling as these irreconcilable judicial intimations are, they have been made by courts without any reflective analysis.

This Essay suggests that the correct object to be analyzed for obviousness is actually the union of two different aspects of invention that the courts have varyingly identified: the concept and the reduction to practice of a working model. Requiring an assessment of obviousness at each of these layers is more faithful to the nonobviousness doctrine and patent law's underlying policies than the current doctrinal state of confusion. Application of this layered inquiry indicates that obviousness is currently being assessed improperly, particularly with regard to technologies of relatively recent vintage, principally software and biotechnology, where the reduction to practice of a working model is inherently complex even once the inventive concept is fixed in the inventor's mind. A layered inquiry would advance the goals set out in KSR by properly and flexibly readjusting nonobviousness doctrine to exclude from patentability those inventions that are not significant leaps forward in the state of the art.

This exploration of the layers of invention in the context of the doctrine of obviousness has wide-reaching implications in patent law well beyond obviousness. This Essay is a first step in questioning the relative roles of an invention's conception and reduction to practice in patent law generally, by exploring it through the lens of obviousness. Until now, many areas of patent law seem to have elevated the inventive role of conception over that of actual reductions to practice, be it with regard to what must be accomplished to secure a patent, what must be contributed to an invention to be recognized as a joint inventor, or with regard to patent law's on-sale bar. But in other contexts in patent law, such as the availability of injunctive relief for patent infringement, the relative importance of reduction to practice is acknowledged. This Essay suggests that it is due time to question whether reduction to practice deserves an elevated role in patent law generally by demonstrating that it can be just as important as conception in the context of obviousness.

obviousness, nonobviousness, patent law, intellectual property, KSR, conception, reduction to practice, software, biotechnology

Abstract:
This Article explores the claiming systems of patent and copyright law. It first develops a two-dimensional taxonomy: claiming can be either peripheral or central and either by characteristic or by exemplar. Patent law has principally adopted a system of peripheral claiming, requiring patentees to articulate by the time of the patent grant their invention's bounds, usually by listing its necessary and sufficient characteristics. Peripheral claims in patent law are conventionally thought to give notice to the public of the extent of the set of protected embodiments so as to encourage efficient investment in innovation, thereby fostering patent law's overarching goal of stimulating useful innovation. And copyright law has implicitly adopted a system of central claiming by exemplar, requiring the articulation only of a prototypical member of the set of protected works - namely, the copyrightable work itself fixed in a tangible form. Copyright protection then extends beyond the exemplar to substantially similar works, a set of works to be enumerated only down the road in case-by-case infringement litigation.

Despite patent law's typical peripheral claims by characteristic and copyright law's typical central claims by exemplar, in practice, patent and copyright claiming are each heterogeneous. Patent law retains some vestiges of the central claiming under which it used to operate, through the doctrine of equivalents, statutory means-plus-function claiming, and dependent claims. And patent law encourages some claiming by exemplar through its best-mode requirement and Markush claims. By contrast, copyright law, through the approved use of licenses to permit others to make substantially similar works, encourages expression of the bounds of works permissibly created under such licenses and the delineation of characteristic features of the set of protected works and. These expressions in legally binding contracts bring forms of peripheral claiming and claiming by characteristic into copyright law.

This Article explores which forms of claiming promote intellectual property's overarching constitutional goal, "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." It considers how each sort of claiming affects the costs of drafting claims, efficacy of notice to the public of the set of protected embodiments, ascertainment of protectability, breadth of the set of protected works, and the protectability of works grounded in after-developed technologies. That the choice of claiming systems implicates the foregoing factors - factors essential to calibrating intellectual-property law to stimulate innovation - in different ways underscores the importance of choosing a claiming system with care.

Though patent law admirably incorporates all four types of claiming flexibly, its typical peripheral claims by characteristic do not provide sufficient public notice of the set of protected embodiments, which negatively affects assessments of protectability and the operational breadth of the set of protected works. I suggest that patent law can be tweaked to stimulate innovation by adding claiming elements more reminiscent of copyright law, namely central claims and claims by exemplar. Claiming in copyright law is more complicated. As it stands, copyright's central claims by exemplar provide little notice to the public, leading risk-averse third parties either to take licenses even as to works not protected by copyright or avoid them completely, a situation that grants too heavy a copyright reward at the expense of generating further creativity. From that vantage point, it would seem far more productive to require - or at least provide significant incentive to - copyright claimants ex ante to claim their works centrally by characteristic. Such claims would seem to provide significantly better ex ante notice in two ways. First, they would give a good indication as to those works that would be considered to be substantially similar to the created work and thus protected under the copyright by allowing feature-by-feature comparisons. Second, they would help explicate which substantially similar works would nonetheless be permissible uses under the doctrine of fair use, by encouraging straightforward determinations of works that borrow from the copyrighted work in ways that do not implicate too many of the claimed features or transform it significantly. But aspects integral to the copyright system-including its fine line between protecting expression but not ideas, grounded in the First Amendment; societal views on describing the artistic works copyright protects; and the ease of creating copyrightable works-give significant pause to any notion of adopting central claiming by characteristic in copyright.

intellectual property, patent, copyright, claims, peripheral claims, central claims, characteristic claims, exemplar claims, doctrine of equivalents, dependent claims, best mode, fair use, substantial similarity, innovation

Abstract:
Patent law is premised on the onward march of science and technology. Patent law encourages cumulative innovation, both by dangling the patent before the inventor as an incentive to invent in the first instance and by requiring him to disclose to the public his invention so that science can progress by building on the divulged knowledge. Patent disclosure is essential. It indirectly stimulates others' future innovation by revealing to them the invention so that they can use it fruitfully when the patent term expires and so that they can design around, improve upon, or be inspired by the invention both during and after the patent term. Judicial decisions and nearly all legal scholarship on patent law have therefore not surprisingly consistently cited disclosure's critical role in the patent system, but they do so without much theoretical or institutional analysis. The rare handful of articles addressing the issue of patent disclosure suggests that disclosure is and ought to be of almost no importance in designing the patent system. This Article disagrees and argues in favor of its centrality in the patent system. Given this deserved centrality, this Article maintains that patent disclosures should be, well, patent, so that inventors can use these disclosures to culminate scientific and technological progress more effectively, thereby fulfilling the underlying premise of the patent system-stimulating innovation. The Article contends that the disclosure function is underperforming due to four systemic reasons-the inadequacies of the writer, the index, the reader, and enforcement-and suggests how to improve them. Surely, invigoration of the patent system's disclosure function carries with it costs, which this Article explores, suggesting they might not be too significant in relation to the benefits that patent disclosure offers in terms of growth of innovation. The Article then posits how invigoration of the patent system's disclosure function bridges what has seemed to be an impassable gap between those who believe in strong patent rights and those who think instead that inventions and information about them should be freely available.

patent law, intellectual property, disclosure, innovation, invention, technology, information

Abstract:
Roald Dahl’s "Charlie and the Chocolate Factory" is well-known as a dark fantasy in which five children win a visit to a whimsical candy company. Less conspicuous is the legal issue of trade secrecy driving the novel’s plot. Secrecy is not indigenous to fictional representations of the candy industry, but is widespread throughout its real-world confectionary counterparts of today and yesteryear. An investigation of the need for secrecy in this commercial sphere raises fundamental questions about the role of legal protection for misappropriations of secrets when actual secrecy seems to be paramount and about the relationship between trade secrecy and patent law.

trade secrets, trade secrecy, Charlie and the Chocolate Factory, Roald Dahl, candy, chocolate, Hershey, Mars, patent law

Abstract:
Drawing district lines is a central and important task in a district-based election system - the principal American form - because the nature of districts often dictates the electability of candidates, if not the actual results of elections. One of the biggest debates in election law is therefore about policing redistricting to ensure that it is fair. Previous case law - including, most recently, Vieth v. Jubilerer, 124 S. Ct. 1769 (2004) - and academic literature primarily framed the debate over fairness in redistricting as a search for a substantive measure or standard of fairness. This article argues that such a search is doomed to fail, fundamentally because no one can agree on what is fair and because the proposed measures typically attempt to mask or subvert the political effects of redistricting, despite the inherent nature of politics in redistricting.

The article seeks instead to reorient the discussion toward procedural standards and measures of fairness. It sets forth a novel procedural model for constructing a fair redistricting scheme based on compromise among a virtually unlimited number of participants. In this model, the participants' goals and preferences are blended together to derive a unique districting configuration. There are a variety of ways to accomplish this blending, including configuration elimination and meta-elections. The procedural model can also be used descriptively by courts to judge the fairness of existing districting schemes. The benefits of this model include placing redistricting's political decisions in the hands of politically motivated participants by allowing each one to consider its particular preferences, which are incorporated into the ultimate districting scheme. The model also recognizes that it is impossible to ignore the political effects of redistricting, yet does not require any choice among the numerous and conflicting substantive fairness measures and standards. The article concludes by addressing further avenues of research, including the determination of who gets to participate in redistricting, strategic gaming, and opportunity costs.

democracy, election law, redistricting, gerrymandering, legal algorithms, Vieth v. Jubilerer

Abstract:
American legal texts--from contracts to statutes to patents--are rarely complete on their own terms. They may not sufficiently anticipate all future factual situations or may simply be unclear. Such incompleteness is not unique: for thousands of years, Jewish legal authorities have struggled to discern meaning from religious texts that are similarly incomplete. To determine the meaning of a particular passage, Jewish legal authorities look first to the text containing that passage and then, if necessary, to other biblical texts: the "intertext." Jewish legal authorities can look to the intertext because they treat the Bible as a perfectly harmonious unit written by one source: God. Treating various texts as a single textual unit allows for consistency in interpretation and access to additional interpretive sources--the intertext--but also risks ignoring diverse, perhaps contradictory, interpretations that the author actually intended.

Despite some qualitative differences between the Jewish and American legal systems, interpreters of American statutes can learn from the rabbinic biblical interpretive stance. This Note proposes that when the text of a statute yields no clear answers, interpreters should look to American statutory intertext: the collection of American statutes. Constitutional and jurisprudential concerns for majoritarianism and integrity provide a normative justification for an intertextual approach.

biblical interpretation, statutory interpretation, intertext

Abstract:
Increasingly pervasive and important digital technologies, because of their technical intricacy, resist easy categorization in existing legal doctrine. Whether computer source code qualifies as protected speech under the First Amendment turns on the source code's expressive and functional qualities. In April 2000, in Junger v. Daley, the Sixth Circuit held that all source code is First Amendment speech because of its expressiveness in conveying ideas about computer programming. The Sixth Circuit's classification of all source code as speech undesirably diverged from Supreme Court precedent. A more faithful analysis would instead have concluded that not all source code is speech under Spence v. Washington's test for symbolic conduct.

First Amendment, computer source code, symbolic conduct, Junger v. Daley, Spence v. Washington, protected speech

Abstract:
Traditional canons of statutory interpretation have played an unclear role in reviewing agency constructions of statutes in recent years. This uncertainty derives from the Supreme Court's holding in Chevron U.S.A. Inc. v. Natural Resources Defense Council, Inc. that courts should defer to permissible agency interpretations of ambiguous statutes. Rather than follow this holding, however, the Court has recently revived and applied several traditional canons in interpreting such statutes. One such canon--the canon of constitutional doubt--has exhibited signs of life after Chevron, although some scholars have questioned its precedence over agency interpretations. In 2001, in Solid Waste Agency of Northern Cook County v. U.S. Army Corps of Engineers (SWANCC), the Supreme Court strongly endorsed the constitutional doubt canon. To avoid the serious constitutional difficulties that it argued would result, the Court declined to defer to an agency's clearly pronounced interpretation of a statute and instead imposed its own reading. The merits of this imposition are questionable: The principles underlying both the Chevron decision and the constitutional doubt canon counsel that the Court should reach the constitutionality of clearly pronounced agency interpretations with serious constitutional problems. Instead, by effectively limiting Chevron deference to agency interpretations without serious constitutional problems, the Court frustrated the very principles it sought to uphold.

SWANCC, Clean Water Act, constitutional doubt canon, Chevron, deference, statutory interpretation, agency review