Table of Contents

Paradise Lost or Fantasy Island? The Payment of British Authors in 19th Century America

Stan J. Liebowitz, University of Texas at Dallas - School of Management - Department of Finance & Managerial Economics

Final Report of the Berkeley Center for Law & Technology Patent Damages Workshop

Stuart J. H. Graham, Georgia Institute of Technology - Scheller College of Business
Peter S. Menell, University of California, Berkeley - School of Law
Carl Shapiro, University of California, Berkeley - Haas School of Business
Timothy Simcoe, Boston University - Questrom School of Business, NBER

A Review of Korean Competition Law and Guidelines for Exercise of Standard-Related Patents

Dae Sik Hong, Sogang University

Hatch-Waxman, Post Grant Review Procedures, and the PTAB: A New Sort of Competition

Jennifer E. Sturiale, Georgetown University Law Center


ANTITRUST: ANTITRUST LAW & POLICY eJOURNAL

"Paradise Lost or Fantasy Island? The Payment of British Authors in 19th Century America" Free Download

STAN J. LIEBOWITZ, University of Texas at Dallas - School of Management - Department of Finance & Managerial Economics
Email:

The payments to British authors by American publishers during the mid-19th century, when the works of British authors lacked American copyright protection, has been presented as evidence that copyright might have little benefit to authors. This paper reexamines the evidence that has been used to support this claim and then presents previously unexamined information on payments to British authors by leading American publishers of the period. The main finding is that payments to British authors were minimal or non-existent prior to the establishment of a no-compete agreement among leading American publishers. Even after implementation of this agreement, many British authors were not paid, and those who were paid received considerably less than they would have received under copyright. Because antitrust disallows such agreements, this 19th natural experiment indicates that the removal of copyright in modern economies would likely eviscerate payments to authors.

"Final Report of the Berkeley Center for Law & Technology Patent Damages Workshop" Free Download
Texas Intellectual Property Law Journal, Forthcoming

STUART J. H. GRAHAM, Georgia Institute of Technology - Scheller College of Business
Email:
PETER S. MENELL, University of California, Berkeley - School of Law
Email:
CARL SHAPIRO, University of California, Berkeley - Haas School of Business
Email:
TIMOTHY SIMCOE, Boston University - Questrom School of Business, NBER
Email:

The determination of patent damages lies at the heart of patent law and policy, yet it remains one of the most contentious topics in this field, particularly as regards the calculation of a reasonable royalty. In March 2016, the Berkeley Center for Law & Technology convened a workshop of leading “insiders� (in-house counsel, litigators (from both the assertion and defense sides), patent licensing professionals, and testifying expert witnesses) and academics (both law professors and economists) to clarify areas of consensus and disagreement regarding the treatment of patent damages. This report summarizes the discussion, key findings, and ramifications for patent case management.

"A Review of Korean Competition Law and Guidelines for Exercise of Standard-Related Patents" Free Download
Journal of Korean Law, Vol. 15, No. 1, pp. 117-155, 2015

DAE SIK HONG, Sogang University
Email:

The purpose and main scope of this paper is to focus on the types of specific conduct with potential issues, the standards for them, and the applicable factors to be considered that were provided with respect to the exercise of patent rights-related technology standards in the Review Guidelines on the Unfair Exercise of Intellectual Property Right (IPR Guidelines), review the methods to identify the types of such conduct and relevance of such proposed standards, and propose alternatives thereto.

This paper concludes with suggestions as follows: Firstly, the Korea Fair Trade Commission (KFTC) will use its guidelines as a primary framework to enforce the Monopoly Regulation and Fair Trade Act (MRFTA) by the KFTC officials even though it has no legislative basis; therefore, it is very important to carefully review its contents. Secondly, in order to regulate non-disclosure of relevant patent technology under the MRFTA, the IPR Guidelines needs to specifically provide that both the intent and effect of the non-disclosure on the standard setting process are required. Thirdly, provisions on imposing unreasonable or discriminatory royalties should be improved to take necessary considerations into account, provide specific factors or standards under the special circumstances where the patented technology is included in a standard. Fourthly, whether procedures for the disclosure of patent information and the ex ante negotiation for licensing terms have been complied with, which are provided as important factors to be considered in judging illegality, does not bear causation or close relationship with the violation of the MRFTA and failure to comply with such procedures should not be considered more seriously than other factors. Lastly, the standard for determining whether an FRAND-encumbered SEP holder’s filing for injunctive relief may be anti-competitive can be considered acceptable compared with the recent practical developments in other jurisdictions.

"Hatch-Waxman, Post Grant Review Procedures, and the PTAB: A New Sort of Competition" 

JENNIFER E. STURIALE, Georgetown University Law Center
Email:

In FTC v. Actavis, the Supreme Court declined to adopt a rule making reverse-payment settlements — i.e., settlements in which the plaintiff, patent holder, pays the defendant, infringer — per se unlawful under the antitrust laws. Instead, the Court concluded that lower courts considering such settlements should apply the rule of reason. The Court’s decision has given rise to a debate about how to evaluate reverse payments to determine whether they are anticompetitive. Indeed, some contend that any settlement that does more than compensate the defendant for its litigation expenses should be deemed anticompetitive. This debate suggests that the Actavis decision has not resolved the “turducken� problem presented by these sorts of cases — difficult questions of antitrust law remain contained within what ultimately began as a patent lawsuit. In addition, it suggests that settlements will not necessarily become any less likely, but instead may only become more complex in order to obfuscate the purpose and value of the settlement. As a result, the public will continue to be deprived of the benefit of having a determination as to the validity of the underlying patent claims. Consumers will continue to be harmed by sustained and illegitimate monopoly prices, as well as by retarded innovation.

This Article finds hope in the new post grant review procedures (PGR) before the Patent Trial and Appeal Board (PTAB) introduced as a part of the America Invents Act (AIA). The PGR procedure offers two benefits: First, the PGR procedure can yield a determination on the validity of the patents in as little as 18 months, which is sufficiently faster than the 30 or more months the Hatch-Waxman regulatory scheme allows for a pharmaceutical patent challenge to be completed in the federal district courts. Second, the PGR procedure can proceed in parallel to a challenge in federal district court. This has the potential to enable competition among tribunals as well as competition among ANDA filers.

But these features alone are not enough to deter settlement and effect earlier generic entry, so this Article proposes a few additional changes: First, this Article proposes that the Hatch Waxman regulatory scheme be amended so that the 180 days of market exclusivity be rewarded to the first ANDA filer that obtains a determination, whether before a federal district court or the PTAB, that the challenged patent claims are invalid (or not infringed). Because the PTAB route is generally faster than going through the federal district courts, this may incentivize first filers to choose adjudication before the PTAB, and almost definitely would incentivize subsequent challengers, particularly if the first filer chose the traditional route through the federal district courts. Second, this Article proposes that, whether through rulemaking by the PTO or statutory amendment, once a PGR is initiated, the PTAB be required to proceed to a final written decision, regardless of whether the parties settle. Finally, this Article proposes that the Hatch Waxman Act be amended so that determinations by the PTAB invalidating patent claims effect the same consequences as a federal district court determination invalidating a patent, namely immediate ANDA approval by the FDA.

^top

About this eJournal

This eJournal distributes working and accepted paper abstracts dealing with all aspects of antitrust and competition policy, including mergers, cartels, monopolies, and price discrimination.

Editor: John Shepard Wiley, Independent

Submissions

To submit your research to SSRN, sign in to the SSRN User HeadQuarters, click the My Papers link on left menu and then the Start New Submission button at top of page.

Distribution Services

If your organization is interested in increasing readership for its research by starting a Research Paper Series, or sponsoring a Subject Matter eJournal, please email: RPS@SSRN.com.

Distributed by

Legal Scholarship Network (LSN), a division of Social Science Electronic Publishing (SSEP) and Social Science Research Network (SSRN)

Directors

ANTITRUST & REGULATED INDUSTRIES EJOURNALS

BERNARD S. BLACK
Northwestern University - Pritzker School of Law, Northwestern University - Kellogg School of Management, European Corporate Governance Institute (ECGI)
Email: bblack@northwestern.edu

RONALD J. GILSON
Stanford Law School, Columbia Law School, European Corporate Governance Institute (ECGI)
Email: rgilson@leland.stanford.edu

Please contact us at the above addresses with your comments, questions or suggestions for LSN-Sub.

Advisory Board

Antitrust: Antitrust Law & Policy eJournal

JAMES R. ATWOOD
Covington & Burling

JONATHAN B. BAKER
Professor of Law, American University - Washington College of Law

MAXWELL M. BLECHER
Attorney at Law, Blecher and Collins

DENNIS W. CARLTON
Professor, University of Chicago - Booth School of Business, National Bureau of Economic Research (NBER)

FRANK H. EASTERBROOK
Senior Lecturer, University of Chicago Law School

NICHOLAS ECONOMIDES
Executive Director, Networks, Electronic Commerce, and Telecommunications Institute, Professor of Economics, New York University - Leonard N. Stern School of Business - Department of Economics

EINER R. ELHAUGE
Professor of Law, Harvard Law School

ELEANOR M. FOX
Professor of Law, New York University School of Law

HERBERT J. HOVENKAMP
Professor, University of Iowa - College of Law

LOUIS KAPLOW
Professor of Law, Harvard Law School, National Bureau of Economic Research (NBER)

DANIEL L. RUBINFELD
Professor, University of California at Berkeley - School of Law, National Bureau of Economic Research (NBER), NYU Law School

CARL SHAPIRO
University of California, Berkeley - Haas School of Business