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Abstract:
The United States Supreme Court unexpectedly accepted certiorari in Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc. to address whether a particular patent claim recites patentable subject matter under Section 101 of the Patent Act. However, after oral argument, the Court dismissed the writ as improvidently granted. The convoluted and truncated nature of the proceedings, combined with the notoriously murky status of contemporary Section 101 doctrine, have left the twin impressions that at least some members of the Court believe that something is wrong with patent claims like the Laboratory Corp. claim but that nobody has a good handle on what that something really is.

This article stakes out a new position, arguing that if the Laboratory Corp. claim is problematic, it is because the claim propertizes thought. Patent claims propertize thought when they recite acts of thinking about the inventive information that is revealed to the public in the disclosure of a patent. Thought-propertizing claims are conceptually problematic because they force us to confront the largely unquestioned coexistence of both claiming and disclosing regimes within patent law. Each regime vests an entitlement in a different party: claims create private rights to exclude for patentees while disclosures create privileges of access for the public. The two potentially conflicting regimes have to date persisted without significant controversy only because each has governed a distinct resource. A claimed and privatized inventive widget is intuitively something altogether different from the disclosed and freely available information that makes the widget inventive. In a thought-propertizing claim, however, the effects of the dual regimes of claiming and disclosing are focused on a single resource. Thought-propertizing claims purport to privatize acts of thinking about the very inventive information qua information traditionally made freely available to the public under the disclosure regime.

This article also explores two options for addressing the patentability of thought-propertizing claims. First, we can make a distinction between different types of thought-propertizing claims. We can attempt to identify the thought-propertizing claims that are the most subversive of the goals of the disclosure regime, and we can hold that only these claims recite unpatentable subject matter while allowing patents to issue on other claims that propertize thought. Second, we can conclude that the propertization of thought is axiomatically in conflict with the disclosure regime and categorically bar thought propertizing claims from patentable subject matter.

Patents, Intellectual Property

Abstract:
Broadly speaking, courts and commentators have offered two theories to explain the relationship between the literal scope of a patent claim and after-arising technology (AAT), i.e. technology that is not discovered until after a claim has been filed. The fixation theory asserts that claim scope is and/or should be fixed on the date a claim is filed and that this fixation makes it impossible for the claim to encompass AAT because a claim must grow in some sense after the filing date in order to encompass AAT. In stark contrast, the growth theory argues that literal claim scope does and/or should encompass AAT on a routine basis and that literal claim scope therefore cannot be fixed on the date of filing.

Finding neither of these theories satisfying, either descriptively or normatively, this Article rejects them. More specifically, it rejects a logical premise that both theories share, namely that simultaneous fixation of and growth in literal claim scope is a logical impossibility. The concept of the literal scope of a claim is ambiguous in several ways. Courts can-and routinely do-fix one concept on the date of filing to achieve certain goals, such as furthering public notice, while at the same time allowing a distinct concept to grow and absorb AAT to achieve other goals, such as providing sufficient incentives. Every time a court addresses whether AAT falls within the literal scope of a valid patent claim, it necessarily constructs the things claimed by a patent and defines the nature of the meaning that permits the claiming language to describe those things. Literal claim scope can remain fixed and yet literal claim scope can grow to encompass AAT at the same time (in different senses of the concept of literal claim scope, of course) provided that a court makes tactical decisions in the course of constructing things and defining meaning.

Patents, Intellectual Property

Abstract:
This essay reviews and extends the arguments that James Bessen and Michael J. Meurer present in Patent Failure: How Judges, Bureaucrats, and Lawyers Put Innovators at Risk. Patent Failure raises the bar for contributions to the ongoing debates over both the need for patent reform and the type of patent reform that is needed. Based on an innovative and elegant empirical analysis, Bessen and Meurer defend the counterintuitive position that, outside of the chemical and pharmaceutical industries, the contemporary patent regime functions as a tax on innovation. In other words, taking a world without any patent protection at all as the baseline, they argue that patents decrease the welfare of the very innovating firms that are today seeking and obtaining patents. To explain this phenomenon, they point to the poor notice of the existence and scope of patent rights that the contemporary patent regime provides to the public. Poor notice, in turn, means that innovating firms bear an unavoidable risk of infringing other innovating firms' patents and bearing the costs of litigation. Bessen and Meurer simply argue that the average benefit that an innovating firm receives from owning its own patents is smaller than the average cost it incurs to fend of allegations of patent infringement.

After summarizing and critiquing the book's principal arguments, this Essay extends Bessen and Meurer's analysis by exploring the import of their findings for legal scholarship on property failures. Although they do not themselves articulate this point, Bessen and Meurer enrich the literature on property failures by positing a new model for property failure: a tragedy of property. A tragedy of property is the true mirror image of the tragedy of the commons: it is a rush to ruin that is caused, rather than remedied, by property. An innovating firm receives a private welfare benefit from obtaining and enforcing each additional patent. However, each innovator's self-interested decision to increase his or her own "herd" of patents decreases the welfare of innovators as a group because the inter-innovator externalities of patents outweigh the benefits that patent owners internalize. A tragedy of the commons results from the inefficient, externality-generating overuse of a rival, scarce resource. A tragedy of property results from the inefficient, externality-generating overuse of the institution of property itself.

patents

Abstract:
In this article, I start from the premises that claims to inventive information qua information are not and should not be patentable, and I pursue two lines of inquiry.

First, I argue that a structural theory of Section 101 of the Patent Act provides a policy-driven, conceptually coherent and statutorily justified interpretation that explains why claims to inventive information qua information should be excluded from the realm of patentable subject matter. In brief, patentable subject matter must be restricted in this manner to preserve the duality of claiming and disclosing upon which the entire patent regime is constructed.

Second, I raise the line-drawing problem that I believe to be the most significant obstacle to an administrable implementation of a structural theory of Section 101. The breadth or polyvalency of the concept of information suggests that many things that we currently treat as patentable, if not all of them, are also information. We must develop a more refined taxonomy of the different types of informationality that material things possess in order to sort the patentable claims to information from the unpatentable ones. Because the immateriality of the things described by a claim is not an acceptable proxy for their informationality, the Federal Circuit's recent opinion in In re Nuijten that addresses intangibility as a restriction on patentable subject matter is not a useful starting point for this project.

Patents, Intellectual Property

Abstract:
Strict liability in patent law is too strict. A constructive-nonvolition exemption from liability for patent infringement must be recognized to prevent inefficient and unfair overprotection of patentable inventions.

Although loosely modeled on the nonvolitional conduct exemption in other strict liability regimes, constructive nonvolition does not turn solely on the defendant's lack of physiological control over his body. It focuses more broadly on the cost that a defendant must incur in order to either avoid infringing a patent or reduce the benefit that he receives from using the patented technology. If a defendant must avoid using either prior art technology or technology entirely unrelated to the patented technology in order to avoid using or benefiting from a validly patented technology, then the defendant's deliberate act of using of the patented technology should be deemed constructively nonvolitional, i.e. legally equivalent to a nonvolitional act. If the defendant's non-infringing choice set is constrained in this manner, then a strict liability regime strictly construed that allows the patentee to control all uses of a patented technology results in patent protection that is both inefficient and unfair.

Having laid out the analytical framework, this article brings the newly minted concept of constructive nonvolition to bear on claims that recite inventive, reflexive acts of thinking. The patent claim that was recently at issue before the Supreme Court in Laboratory Corp. v. Metabolite Laboratories demonstrates that the PTO allows inventors to propertize simple acts of human reasoning that the public of thinkers cannot control. This article argues that the patentee in Laboratory Corp. was the beneficiary of economically and constitutionally overbroad patent protection because the lower courts failed to implement a constructive-nonvolition exemption from strict liability for patent infringement.

Abstract:
Semiotics is the study of the sign. Printed diagrams, computer models, and medical symptoms all implicate signs: they are objects or events that stand for something else to interpreters. New signs are enormously valuable tools that promote the “Progress of [the] useful Arts,” yet, surprisingly, patent scholarship has never employed a semiotic lens to understand what can and cannot be patented. As part of a back-to-basics approach to section 101 of the Patent Act, this Article fills this void and articulates a semiotic framework for patent eligibility in the form of the sign doctrine.

One fundamental insight of semiotic analysis is that meanings are not intrinsic in worldly things: they result from active processes of interpretation that occur in the minds of interpreters. Building on this insight, the sign doctrine offers a simple rule that the PTO and the Federal Circuit Court of Appeals can use to distinguish patentable claims to signs from unpatentable ones. If a patent claim describes a meaningful article and but the only invention at issue resides in the mind of an interpreter who has been instructed that the article means something new, the claim does not describe an invention that is eligible for patent protection.

This Article considers two consequences of adopting the sign doctrine. First, the sign doctrine rehabilitates the contemporary printed matter doctrine. The sign doctrine roughly mirrors the printed matter doctrine in terms of its effects on the scope of patentable subject matter. However, by shifting courts’ focus from information to signs, it brings to light the printed matter doctrine’s otherwise difficult-to-perceive conceptual coherence and points the way to its otherwise absent statutory grounding. Second, the sign doctrine raises serious questions about the patentability of computer models under In re Bilski. Viewed from a semiotic perspective, the difficulty of obtaining patent protection for diagrams under the printed matter doctrine and the routine nature of patent protection for computer models under Bilski cannot be reconciled.

Abstract:
The enablement doctrine restricts the scope of an inventor’s patent claim so that it remains commensurate with the contribution to technological progress that the inventor has disclosed in her specification. When the Federal Circuit Court of Appeals (Federal Circuit) brings enablement to bear on claims that encompass after-arising technology (AAT), the resulting doctrine is chaotic. Distinct lines of cases recite different doctrines, and the choice among the doctrines determines whether claims encompassing AAT are enabled.

This Article searches for order in the chaos. It proposes that there are three rules that explain what the Federal Circuit does when grappling with the enablement of AAT: the foreseeability rule, the identity rule, and the complementarity rule. Courts and commentators have discussed the first two of these rules, but their effects are poorly understood and their policy justifications have not been clearly explained. The third represents an original contribution to scholarly literature on enablement. In addition, this Article examines the most plausible normative justification for each of the rules. Where the complementarity rule makes claims more commensurate with contributions to technological contributions, the foreseeability and identity rules are “second best” rules that undermine the commensurability of peripheral claims and disclosures in order to achieve other goals.