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 of patent notice principles against industry convention. This iBrief examines the licensing paradigm of enterprise software and questions whether mechanical compliance with the marking statute should qualify as constructive notice. Borrowing from analogous Federal Circuit principles, this iBrief concludes by proposing alternate notice theories that would empower patentees to seek increased remedies consistent with industry reality, case law, and fundamental statutory purpose.

Cite: 2005 Duke L. & Tech. Rev. 0002

Posted in Patents & Technology

Regulating Innovative Medicine: Fitting Square Pegs in Round Holes

By: Mark Lavender

Increasingly, innovative medical products are creating a quandary for the Food and Drug Administration (“FDA”) because they often transcend the FDA’s traditional categorical approach to regulating medical products. In a recent attempt to simplify this process, the FDA has proposed a new rule for regulating “combination products.” This iBrief discusses the FDA’s current approach and analyzes the possible affects of the proposed regulation. Because of the many shortcomings of both systems, this iBrief concludes that the FDA should instead stop assigning center jurisdiction based on a product’s “primary mode of action,” and give the Office of Combination Products internal agency jurisdiction over combination products. This alternative approach would increase consistency and efficiency while maintaining the FDA’s high standards for medical product safety and efficacy.

Cite: 2005 Duke L. & Tech. Rev. 0001

Posted in Health & Biotechnology

Canning Spam: Consumer Protection or a Lid on Free Speech?

By: Grant C. Yang

The United States Congress recently passed the first federal legislation to curb the influx of spam. However, the Controlling the Assault of Non-Solicited Pornography and Marketing Act (“CAN-SPAM Act”) left some measures to be enacted by the Federal Trade Commission (“FTC”), and some consumers are calling for the Act to have a broader reach and for the creation of a Do-Not-E-Mail registry. Conversely, the FTC decided to delay the creation of a registry and opted to assist in the development of a new technological authentication system. This iBrief looks at the current state of spam and explains that it is too early to tell whether the effects of the CAN-SPAM Act warrant new anti-spam measures. In addition, it points out that it is questionable whether the FTC’s current authentication approach will be effective, and, thus, considers the possible First Amendment challenges to a Do-Not-Call registry as well as other possible anti-spam solutions. In the end, this iBrief postulates that the most effective option might be for the FTC to implement both a Do-Not-Email registry and an authentication system.

Cite: 2004 Duke L. & Tech. Rev. 0016

Posted in eCommerce

1984 Is Still Fiction: Electronic Monitoring in the Workplace and U.S. Privacy Law

By: Christopher Pearson Fazekas

Electronic monitoring in the workplace has been the subject of relentless public criticism. Privacy advocates argue that technological advancements have given overbearing employers powerful tools to abuse employee dignity in the name of productivity and that new legislation should bolster workplace privacy rights. This iBrief contends that current U.S. legal doctrine governing electronic monitoring in the workplace is fair given the nature and purpose of the workplace, and potential employer liability for employee misconduct.

Cite: 2004 Duke L. & Tech. Rev. 0015

Posted in eCommerce

Crossed Signals in a Wireless World: The Seventh Circuit’s Misapplication of the Complete Preemption Doctrine

By: Matthew J. Kleiman

As the number of wireless telephone users continues to proliferate, so does the number of lawsuits against wireless service providers. While consumers seek to utilize various consumer-friendly state law causes of action, the wireless industry continues to push for a uniform federal regulatory regime. Ambiguous language in the Federal Communications Act of 1934 (“FCA”) and disagreement among the federal circuits has led to much confusion over whether state law claims affecting wireless rates and market entry are removable to federal court by way of “complete preemption.” This iBrief argues that FCA’s preemption power is limited by its savings clause, failure to establish a comprehensive regulatory scheme, and provision of a significant role for state regulation. Accordingly, the Seventh Circuit erred in Bastien v. AT&T Wireless Services, Inc. when it concluded that the FCA completely preempts certain state law claims against wireless service providers and thereby requires their removal to federal court.

Cite: 2004 Duke L. & Tech. Rev. 0014

Posted in Media & Communications

The Trade of Cross-Border Gambling and Betting: The WTO Dispute Between Antigua and the United States

By: James D. Thayer

The first ecommerce dispute to come before the World Trade Organization (“WTO”) was billed to be one of David and Goliath proportion. The tiny twin-island nation-state of Antigua and Barbuda challenged the United States’ ban on cross-border Internet gambling and betting. As a result of the dispute, the WTO issued a private final report against the United States finding that the ban violates the United States’ commitments under the WTO. Shortly before the public release of the final report, both parties petitioned the WTO to indefinitely postpone its release so that the parties could engage in private negotiations. The final report is said to uphold the Panel’s interim report that found against the United States by, among other things, rejecting the United States’ claim that its ban on cross-border Internet gambling and betting does not violate its WTO obligations because the ban protects public morals. On October 28, 2004, the United States announced that the negotiations had broken down, and that it planned to appeal the Panel’s decision to the WTO Appellate Body. This iBrief sets forth the basic background of the dispute and argues that the Appellate Body will have to make at least three controversial findings to uphold the Panel’s ruling.

Cite: 2004 Duke L. & Tech. Rev. 0013

Posted in International

Privacy, Free Speech & the Garden Grove Cyber Café Experiment

By: Brett Stohs

In response to gang violence at local “cyber cafés,” the City Council of Garden Grove, California, passed an ordinance requiring cyber cafés to install video surveillance systems. The constitutionality of the provision was subsequently challenged, and a California Court of Appeal determined that the video surveillance requirement did not violate free speech or privacy protections under either the federal or California Constitutions. This decision was immediately challenged, by commentators and a dissenting judge, as opening the door to Orwellian-type, government intrusions into individuals’ personal lives. This iBrief analyzes the appellate court’s decision and concludes that not only did the majority reach the correct conclusion, but that there is no merit to the dissent’s Orwellian fears.

Cite: 2004 Duke L. & Tech. Rev. 0012

Posted in eCommerce

The Medicare Prescription Drug, Improvement, & Modernization Act of 2003: Are We Playing the Lottery With Healthcare Reform?

By: Melissa Ganz

With millions of Americans unable to cope with the rising costs of prescription drugs, and many even forced to go without health insurance, the mounting pressure on Congress to enact major healthcare reform culminated in the Medicare Prescription Drug, Improvement, & Modernization Act of 2003. This iBrief examines this legislation, and concludes that it provides elusive benefits for seniors and merely creates a windfall for the pharmaceutical and insurance industries.

Cite: 2004 Duke L. & Tech. Rev. 0011

Posted in Health & Biotechnology

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 how traditional patent doctrine will be applied to nanotechnology. As it stands, the creators of nanoscale versions of traditional products might face infringement claims from traditional patent holders. The reverse doctrine of equivalents serves as a possible mechanism to equitably excuse the literal infringement of traditional patents by nanotech inventors in a way that encourages the progress of science.

Cite: 2004 Duke L. & Tech. Rev. 0010

Posted in Patents & Technology

A Manifesto on WIPO and the Future of Intellectual Property

By: James Boyle

In this Manifesto, Professor Boyle claims that there are systematic errors in contemporary intellectual property policy and that WIPO has an important role in helping to correct them.

Cite: 2004 Duke L. & Tech. Rev. 0009

Posted in International

Virtual Shareholder Meetings

By: Elizabeth Boros

Electronic communication impacts how widely-held corporations conduct shareholder meetings. For example, technology has facilitated such options as electronic proxy voting, remote electronic voting, and “virtual meetings.” This iBrief examines the idea of “virtual meetings” and argues that they should not entirely replace physical meetings unless an electronic solution can be devised which replicates the face-to-face accountability of management to retail shareholders.

Cite: 2004 Duke L. & Tech. Rev. 0008

Posted in eCommerce

Restoring a Public Interest Vision of Law in the Age of the Internet

By: Marc Rotenberg

In November 2003, Mr. Marc Rotenberg, Executive Director of the Electronic Privacy Information Center, lectured at Duke Law School on the importance of protecting individual privacy. In his remarks, Mr. Rotenberg recounted the successful campaign against the government’s Clipper Chip proposal. He argued that successful public interest advocacy in the Internet age requires the participation of experts from many fields, public engagement, and a willingness to avoid a simple “balancing” analysis. He further concluded that privacy may be one of the defining issues of a free society in the twenty-first century.

Cite: 2004 Duke L. & Tech. Rev. 0007

Posted in eCommerce

Wireless Local Number Portability: New Rules Will Have Broad Effects

By: Stephen M. Kessing

After a delay of over seven years, wireless local number portability rules (“WLNP”) finally went into effect on November 24, 2003. These rules, promulgated by the Federal Communications Commission, allow wireless subscribers to change service providers within a given location while retaining the same phone number. The rules also allow consumers to transfer a land-based telephone number to a cellular provider. These new choices will likely have a significant impact on the wireless industry and increase competition in an already intense playing field. This iBrief provides a summary of the new rules, looks at the history and litigation, and predicts how increasing wireless options will benefit consumers and promote competition in local telephony.

Cite: 2004 Duke L. & Tech. Rev. 0006

Posted in Media & Communications

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 and highlighted the roles that universities, private investors, and intellectual property law play in each model. Dr. Branscomb concluded that this intermediary process is the most important step in getting high-tech innovations to market.

Cite: 2004 Duke L. & Tech. Rev. 0005

Posted in Patents & Technology

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 a civil case if he or she feels that the issue is too complex for a jury to decide properly. This iBrief discusses the constitutionality of the complexity exception and the arguments for and against its implementation, with particular emphasis on the application of the exception to patent infringement cases. The iBrief then postulates that, while a blanket exception for patent infringement cases may not be the solution, at a minimum some restructuring of the adjudication process needs to occur in order to ensure that judicial holdings are more than a mere roll of the dice.

Cite: 2004 Duke L. & Tech. Rev. 0004

Posted in Patents & Technology

UK’s Implementation of the Anti-Circumvention Provisions of the EU Copyright Directive: An Analysis

By: Aashit Shah

The debate surrounding utilization of technological protection measures to secure copyrighted works in the digital arena has raised many an eyebrow in the past few years. Technological protection measures are broadly bifurcated into two categories: access control measures such as cryptography, passwords and digital signatures that secure the access to information and protected content, and copy control measures such as the serial copy management system for audio digital taping devices and content scrambling systems for DVDs that prevent third parties from exploiting the exclusive rights of the copyright owners. Copyright owners have been wary of the digital environment to exploit and distribute their works and therefore employ technological protection measures, whereas consumers and proponents of “free speech” favor the free and unrestricted access, use and dissemination of copyrighted works digitally.

Cite: 2004 Duke L. & Tech. Rev. 0003

Posted in Copyrights & Trademarks

Investigating Terrorism: The Role of the First Amendment

By: Amy E. Hooper

This iBrief discusses the constitutionality of a government policy enacted shortly after September 11, 2001 that denies public access to deportation hearings in cases allegedly bearing some connection to terrorism. This ibrief discusses two Circuit Courts of Appeals decisions on the issue and argues that this policy is unconstitutional.

Cite: 2004 Duke L. & Tech. Rev. 0002

Posted in Media & Communications

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 for patenting” and subject of a “commercial offer for sale.” In Minnesota Mining & Manufacturing v. Chemque, Inc., the Federal Circuit expounded on what constitutes a commercial offer for sale. This iBrief explores what is considered a “commercial offer for sale.”

Cite: 2004 Duke L. & Tech. Rev. 0001

Posted in Patents & Technology

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 for patenting” and subject of a “commercial offer for sale.” In Minnesota Mining & Manufacturing v. Chemque, Inc., the Federal Circuit expounded on what constitutes a commercial offer for sale. This iBrief explores what is considered a “commercial offer for sale.”

Cite: 2003 Duke L. & Tech. Rev. 0035

Posted in Patents & Technology

Piracy Deserves No Privacy

By: Frank Chao

The Recording Industry Association of America (“RIAA”), the music industry’s trade and lobbying group, recently initiated a controversial tactic to bring to surface previously anonymous digital pirates of the Internet. This aggressive tactic aims to make safe the digital oceans for copyright and involves identifying and bringing claims against infringing individuals who download, swap, and/or post copyrighted music illegally via the Internet. The RIAA cares not who the infringers are or whether the infringers know the illegality of their actions. Nor does the music industry concern itself with the inevitable storm of backlash bound to fall upon them for suing uninformed or unintentional infringers. Internet users and privacy advocates, however, care all too much. This i-brief attempts to alleviate the fears of privacy infringement by bringing to light certain safeguards built into the Digital Millennium Copyrights Act (“DMCA”) to deal with the possibility of both fraudulent identity subpoenas and infringement into personal privacy. In addition, case law will show that the subpoena powers of the DMCA will not be abused by those who truly wish to enforce copyright laws and legitimate claims of ownership, thereby maintaining the privacy of law abiding Internet users.

Cite: 2003 Duke L. & Tech. Rev. 0034

Posted in Copyrights & Trademarks

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 in memory) and logical (the relationships among the stored information), the Federal Circuit, in its attempts to set clear standards of the scope of patentability of data structures, has not fully appreciated their dualistic nature. This i-brief explains what data structures are, explores how courts have wrestled with setting a limiting principle to determine their patentability, and discusses the resultant impact on claim drafting.

Cite: 2003 Duke L. & Tech. Rev. 0033

Posted in Patents & Technology

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 product abroad that is later imported into the United States?

Cite: 2003 Duke L. & Tech. Rev. 0032

Posted in Patents & Technology

Lights, Camera, Lawsuit

By: A. J. Bedel

As the speed of Internet access improves, the film industry will need to explore its options for eliminating the downloading of digital movie files. After examining the successes and failures of the music industry in its battle with peer-to-peer networks, the film industry has begun to follow its predecessor. However, the nature of film as an entertainment medium is quite different than that of music. As a result, the film industry could implement creative solutions to this problem that would not have been available to the music industry. A recent study shows that most films available on the Internet have been leaked by industry insiders. By implementing an increasingly publicized use of trade secret litigation, the film industry could take a tough and effective stance against the digital dragon.

Cite: 2003 Duke L. & Tech. Rev. 0031

Posted in Copyrights & Trademarks

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 commercial offer for sale, an invention must be “ready for patenting” in order to be considered “on sale.” Since Pfaff, the Court of Appeals for the Federal Circuit has had numerous opportunities to expound upon how inventors can fulfill the latter condition. This iBrief will discuss the factors the Federal Circuit has determined are indicative of an invention’s “ready for patenting” status.

Cite: 2003 Duke L. & Tech. Rev. 0030

Posted in Patents & Technology

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 with tradition and allow patents on the three-dimensional structural information of proteins. This iBrief will discuss whether such information would constitute patentable subject matter under 35 U.S.C. §101, and how much protection patents on this information could actually confer.

Cite: 2003 Duke L. & Tech. Rev. 0029

Posted in Patents & Technology