Category Archives: Patents & Technology

Is Kelly Shifting Under Google’s Feet? New Ninth Circuit Impact on the Google Library Project Litigation

By: Cameron W. Westin The Google Library Project presents what many consider to be the perfect fair-use problem. The legal debate surrounding the Library Project has centered on the Ninth Circuit’s Kelly v. Arriba Soft. Yet recent case law presents … Continue reading

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Where Will Consumers Find Privacy Protection From RFIDs?: A Case for Federal Legislation

By: Serena G. Stein With the birth of RFID technology, businesses gained the ability to tag products with practically invisible computer chips that relay information about consumer behavior to remote databases. Such tagging permits retailers and manufacturers to track the … Continue reading

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Does Information Beget Information?

By: Dennis S. Karjala Using the language of mathematics, Professor Polk Wagner has recently argued that the impossibility of fully appropriating the value of information in a rightsholder leads to the surprising conclusion that expanding the degree of control of … Continue reading

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Unnecessary Indeterminacy: Process Patent Protection After Kinik v. ITC

By: John M. Eden In Kinik v. International Trade Commission, the U.S. Court of Appeals for the Federal Circuit suggested in dicta that the defenses available to foreign manufacturers in infringement actions under 35 U.S.C. § 271(g) in Federal district … Continue reading

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Patent Misuse in Patent Pool Licensing: From National Harrow to “The Nine No-Nos” to Not Likely

By: Daniel P. Homiller Courts and the Justice Department’s Antitrust division have become increasingly tolerant of patent licensing practices that were previously viewed with suspicion. This trend has put pressure on the doctrine of patent misuse, which arose in the … Continue reading

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Barriers to Innovation: Intellectual Property Transaction Costs in Scientific Collaboration

By: Megan Ristau Baca The institution of university science research has evolved over the past century, from one of open science and free information to one of competition and jealously guarded intellectual property rights. This iBrief analyzes the background factors … Continue reading

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Better to Give Than to Receive: Evaluating Recent IP Donation Tax Policy Changes

By: Don Macbean Over the past decade, charitable contributions of intellectual property have grown rapidly. This growth has coincided with tremendous abuse as firms have sought inflated valuations of donated intellectual property in order to claim larger tax deductions. In … Continue reading

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From Deepsouth to the Great White North: The Extraterritorial Reach of United States Patent Law After Research in Motion

By: Daniel P. Homiller In the Internet age, complex telecommunications systems are often deployed with little regard for international borders. In NTP, Inc. v. Research in Motion, Ltd., the Federal Circuit determined that one such system infringed several U.S. patents, … Continue reading

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A New Paradigm for Intellectual Property Rights in Software

By: Mark H. Webbink A Winter 2004 article by Bradford L. Smith and Susan O. Mann of Microsoft published in The University of Chicago Law Review suggests that the development and growth of the software industry in the U.S. is … Continue reading

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Troll or No Troll? Policing Patent Usage With an Open Post-Grant Review

By: David G. Barker In December 2004, a mystery business, JGR Acquisitions Inc., purchased the patent portfolio of bankrupt Commerce One at auction. Commerce One had not previously enforced the acquired patents and many companies were using the patented technologies … Continue reading

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Willful Infringement and the Evidentiary Value of Opinion Letters After Knorr–Bremse v. Dana

By: Joshua Stowell Recently, the Federal Circuit in Knorr-Bremse v. Dana overruled almost twenty years of precedent by striking down the adverse inference doctrine, which had created a negative presumption against any alleged patent infringer for failing to obtain and … Continue reading

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Patent Damage Strategies and the Enterprise License: Constructive Notice, Actual Notice, No Notice

By: James W. Soong For the patent owner, early provision of patent notice can help maximize recoverable infringement damages during subsequent litigation. This iBrief recognizes a growing trend of infringement suits predicated on patented enterprise software technology, and analyzes application … Continue reading

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Protecting the Next Small Thing: Nanotechnology and the Reverse Doctrine of Equivalents

By: Andrew Wasson If even a fraction of the predictions about nanotechnology are realized, our society will be a dramatically different and better place than it is today. Yet, due to the infancy of the field, it is still unclear … Continue reading

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Where Do High Tech Commercial Innovations Come From?

By: Lewis Branscomb On February 19, 2004, Dr. Lewis Branscomb gave the Meredith and Kip Frey Lecture in Intellectual Property at Duke Law School. In his speech, Dr. Branscomb discussed various models for turning basic scientific inventions into high-tech innovations … Continue reading

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Should Juries Hear Complex Patent Cases?

By: Jennifer F. Miller A debate has arisen within the legal community over the existence and constitutionality of a so-called “complexity exception” to the Seventh Amendment. This exception would give a judge the discretion to deny a jury trial in … Continue reading

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The “Commercial Offer for Sale” Standard After Minnesota Mining v. Chemque

By: Campbell Chiang The Supreme Court established a two-part test for determining when an invention is “on sale” under 35 U.S.C. §102(b) in Pfaff v. Wells Electronics, Inc. For the on-sale bar to be triggered, the invention must be “ready … Continue reading

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The “Commercial Offer for Sale” Standard After Minnesota Mining v. Chemque

By: Campbell Chiang The Supreme Court established a two-part test for determining when an invention is “on sale” under 35 U.S.C. §102(b) in Pfaff v. Wells Electronics, Inc. For the on-sale bar to be triggered, the invention must be “ready … Continue reading

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Patenting Computer Data Structures: The Ghost, the Machine and the Federal Circuit

By: Andrew Joseph Hollander Courts view “data structures,” the mechanism by which computers store data in meaningful relationships, differently than do computer scientists. While computer scientists recognize that data structures have aspects that are both physical (how they are stored … Continue reading

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U.S. Infringement Liability for Foreign Sellers of Infringing Products

By: Troy Petersen With the ever-increasing international flavor of business comes an important question for United States patent holders and foreign manufacturers alike: Can a company be held liable for patent infringement in the United States for selling an infringing … Continue reading

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Pfaff Revisited: How the Federal Circuit Has Elaborated on the “Ready for Patenting” Standard

By: Jennifer F. Miller In Pfaff v. Wells Electronics, Inc., the Supreme Court established a two-part test to determine when an invention is “on sale” for purposes of Title 35 U.S.C. §102(b). In addition to being the subject of a … Continue reading

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3D Molecular Structures: Patentable Subject Matter Under 35 U.S.C. §101?

By: Ben Quarmby With the advent of protein engineering, the determination of a protein’s 3D structure has taken on a whole new importance. This has prompted some to call for the United States Patent and Trademark Office [USPTO] to break … Continue reading

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Fairplay or Greed: Mandating University Responsibility Toward Student Inventors

By: Carmen J. McCutcheon Over twenty years have passed since the enactment of The Patent and Trademark Law Amendments Act (Bayh-Dole Act) and universities continue to struggle with their technology transfer infrastructures. Lost in that struggle are those who could … Continue reading

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A Putative Inventor’s Remedies to Correct Inventorship on a Patent

By: Campbell Chiang Inventorship is a required component of patents issued in the United States, and the penalty for filing a patent with incorrect inventorship is harsh: possible invalidation of the entire patent. This iBrief explores the background on inventorship … Continue reading

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Sealing the Coffin on the Experimental Use Exception

By: Jennifer Miller In a petition for writ of certiorari, Duke University requests that the Supreme Court reverse a Federal Circuit holding that, in its view, “seals the coffin on the experimental use exception for private universities.” This iBrief discusses … Continue reading

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Software Patent Law: United States and Europe Compared

By: Michael Guntersdorfer Software is a global business. Patents are increasingly the protection of choice; as a consequence, international software patent laws are of growing importance to software vendors. This article focuses on European patent law and how it differs … Continue reading

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