• Copyright and Tattoos: Who owns your ink?

    As of 2012, one in five adults in the United States have at least one tattoo.  While some designs are simple, many are incredibly complex, original works of art.  However, since tattoos are designed to be permanent, and often placed to be seen, the question arises – who owns the copyright to that artwork? And how can, and can’t, the owner display it? Unfortunately, there are no cases to date that definitively answer the questions around copyright infringement and tattoos.  With a new case…

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  • House Permanent Select Committee on Intelligence Holds Hearing on China’s Threat to U.S. Innovation Leadership

    On the morning of Thursday, July 19th, the House Permanent Select Committee on Intelligence held a hearing titled China’s Threat to American Government and Private Sector Research and Innovation Leadership. The day’s hearing was dedicated to discuss strategies, both legal and illicit, which are employed by the Chinese government and designed to gain a competitive advantage over the United States.

    The post House Permanent Select Committee on Intelligence Holds Hearing on China’s Threat to…

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  • 公知




    $$ FIG. 1 shows a known probe trigger circuit; / 【図1】公知のプローブトリガ回路を示す図である。(USP6941671)

    $$ Alternatively, of course, known `on-chip` transformers could be employed. / あるいは、勿論、公知の「オン・チップ」変圧器を用いることもできる。(USP6816020)

    $$ Carrier liquids for ferrofluids are known per se. / 強磁性流体の担体液体はそれ自体公知である。(USP6815063)

    $$ Suitable methods will be known to the person skilled in the art. / 適切な方法は、当業者に公知であろう。(USP6699767)

    $$ A porous support surface, for example in the form of a cylinder mould cover 10, is produced in a known way. / 例えばシリンダー型カバー10の形の多孔性支持表面は、公知の方法で製造される。(USP6616803)

    $$ Any conventionally known free radical photoinitiators may be used. / 従来公知のいずれのフリーラジカル光開始剤を使用してもよい。(USP6610762)

    $$ Switchable adhesives are known. / 転換可能な接着剤は公知である。(USP6610762)

    $$ It is conventional to bind wires and cables together using adhesive tape made from a polymeric material. / ポリマー材料から製造される接着テープを使用して、ワイヤ、ケーブルを結束することは公知である。(USP6200677)


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  • Trustees of Boston University v. Everlight: (Non)enablement of permutation #6

    By Jason Rantanen

    Trustees of Boston University v. Everlight Electronics Co., Ltd. (Fed. Cir. 2018) Download Opinion
    Panel: Prost (author), Moore, Reyna

    This opinion provides an example of how Section 112 can function as a commensurability requirement.  The court’s final lines say as much:

    “Having obtained a claim construction that included a purely amorphous
    layer within the scope of the claim, BU then needed to successfully defend against an enablement challenge as to the claim’s full scope…Put differently, if BU wanted to exclude others from what it regarded as its invention, its patent needed to teach the public how to make and use that invention. That is ‘part of the quid pro quo of the patent bargain.’”

    Slip Op. at 14 (citations omitted).

    I like the opinion because the court’s analysis fits neatly with my conceptual explanation of how enablement analyses are actually performed: it’s a two-step process, with the first step being the articulation of the relevant target and the second asking whether the patentee managed to hit that target.  Here, the court defined the target as consisting of one of six possible permutations under the claim construction the patent owner had sought. 

    Continue reading Trustees of Boston University v. Everlight: (Non)enablement of permutation #6 at Patently-O.

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  • Judge Plager’s Message to the Supreme Court on Patent Eligibility: The Emperor Has No Clothes

    Judge Plager penned a rather long and eloquent dissent in last week’s Federal Circuit decision of INTERVAL LICENSING LLC v. AOL, INC., No. 2016-2502 (Fed. Cir. July 20, 2018).  I have reproduced the dissent by the former Dean of the Indiana University School of Law below: ________________________________________________________________________ PLAGER, Circuit Judge, concurring-in-part and dissenting-in-part. Today we […]

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  • Fourth Estate Public Benefit Corp. v. Wall-Street.com

    In addition to the one patent case (Helsinn), the Supreme Court also has one Copyright case lined-up for its October 2018 term:

    Fourth Estate Public Benefit Corp. v. Wall-Street.com, No. 17-571

    Section 411(a) of the Copyright Act provides that “no civil action for infringement of the copyright in any United States work shall be instituted until” either (1) “registration of the copyright claim has been made in accordance with this title,” or (2) “the deposit, application, and fee required for registration have been delivered
    to the Copyright Office in proper form and registration has been refused.” 17 U.S.C. 411(a).

    The question presented is as follows: Whether a copyright owner may commence an infringement suit after delivering the proper deposit, application, and fee to the Copyright Office, but before the Register of Copyrights has acted on the application for registration.

    ScotusBlog has the Briefs

    Continue reading Fourth Estate Public Benefit Corp. v. Wall-Street.com at Patently-O.

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  • NBER Summer Institute 2018: Innovation

    Last week I was a discussant at the Innovation section of the 2018 NBER Summer Institute (full schedule here), which I highly recommend to scholars interested in the economics of innovation. The quality of the papers and the discussion was pretty uniformly high. There were a few examples of the insularity of economics, such as remarks about topics that “no one has studied” that have been studied by legal scholars, but I think this just illustrates the benefits of having scholars familiar with different literatures at disciplinary conferences.

    Here are links and brief summaries of the innovation-related papers. (There was also a great panel discussion on gender and academic credit, which I might post about separately at some point.)

    Janet Freilich, Prophetic Patents – This was the paper I was a discussant for, and I’ll devote a stand-alone post to it soon, so for now I’ll just note that it does a great job highlighting the problem of fictitious data in patents and demonstrating how this confuses scientists.

    Joshua Krieger, Danielle Li & Dimitris Papanikolaou, Developing Novel Drugs – Using a new measure of a drug’s novelty relative to already-approved drugs, the authors show that novel drugs are less likely to be approved by the FDA but, conditional on approval, generate higher private and social returns. Additionally, firms respond to an increased cashflow with investment in more novel drugs, suggesting that “on the margin, firms perceive novel drugs to be more valuable ex-ante investments, but that financial frictions may hinder their willingness to invest in these riskier candidates.” Lots of clever empirics, though figuring out the welfare effects is difficult.

    Yifei Mao & Jessie Jiaxu Wang, Labor Scarcity, Finance, and Innovation: Evidence from Antebellum America – Using the staggered passage of free backing laws across states from 1837 to 1860 and differences in labor scarcity between slave and free states, they find that greater access to finance “encouraged technological innovation that substituted for free labor, but discouraged technological innovation that substituted for slave labor.” The economic historians in the audience had questions about some of the data sources.

    Michaël Bikard & Matt Marx, Hubs as Lampposts: Academic Location and Firms’ Attention to Science – Interesting results on knowledge flows: Academic publications are more likely to be cited by firms when they emerge from “hubs”—geographic concentrations of patenting by firms in the same specialized technical field as the paper—even when the citing firm is not in the hub. Academics in hubs do not seem to engage in more applied research; rather, the increased attention to hub-based research seems driven by its higher quality and the use of hubs as search heuristics (in that firms are more likely to cite a hub-based paper than a “twin” paper making the simultaneous finding outside the hub).

    Lily Fang, Josh Lerner, Chaopeng Wu & Qi Zhang, Corruption, Government Subsidies, and Innovation: Evidence from China – Allocation of R&D subsidies in China was influenced equally by firms’ innovative capabilities and corruption (as measured by anomalously high “Entertainment and Travel Costs”), and the 2012 anti-corruption campaign was effective at reducing the influence of corruption and increasing the effect of subsidies on future innovation. Seems like an important input for the choice between government-set and market-set innovation incentives.

    Michael J. Andrews, The Role of Universities in Local Invention: Evidence from the Establishment of U.S. Colleges – Comparing cities that received new colleges 1839-1954 with runner-up sites suggests that new colleges caused 40% more patents per year. This effect seems primarily driven by migration: establishment of other institutions such as prisons or mental institutions had a similar effect; colleges had no independent effect after controlling for population; and most patents are by migrants to the college county rather than alumni or faculty. I thought this was a great paper that represented a tremendous amount of work, though I’m not sure that it tells us anything about the role of colleges in promoting local innovation today—a lot has changed since 1954.

    Martin Watzinger, Lukas Treber & Monika Schnitzer, Universities and Science-Based Innovation in the Private Sector – Another interesting paper about knowledge flows. Comparing newly hired professors for a German university with runner-up candidates shows the effect of professors on the local private sector: local firms start to cite the newly hired professor’s articles more and local patents become more similar to her articles. The effect seems primarily driven by PhD graduates working in the private sector.

    Enrico Berkes & Ruben Gaetani, Income Segregation and Rise of the Knowledge Economy – Using a novel instrument related to the network of patent citations, they find that “innovation intensity is responsible for 14% of the overall increase in urban segregation between 1990 and 2010.” The relationship between innovation and inequality is a growing area of scholarly interest (see, e.g., the interesting work by Raj Chetty et al.), and this is an important contribution to the field.

    Hugo Hopenhayn & Francesco Squintani, On the Direction of Innovation – Using a theoretical model and plausible assumptions, they show that “the competitive market allocates excessive innovative efforts into high returns areas.” This result is different from standard rent dissipation through patent races and from the point that private and social value can be misaligned. Instead, their point is that there is differential rent dissipation stemming from externalities imposed by marginal entrants to others focused on the same research goal. There are three sources of bias: (1) a static misallocation to high-value areas that depends on the assumption that the elasticity of discovery (i.e., the probability of solving the problem) is decreasing with the number of researchers; (2) a dynamic misallocation due to the externality a successful researcher imposes on remaining researchers who must bear the costs of switching to different research lines (which increases with the number of researchers); and (3) a second dynamic misallocation caused by individual researchers not taking into account the future option value of an unsolved problem (which is higher for high-value problems). The authors also claim that IP regimes cannot be the solution “as they grant property rights over the solutions and not the original problems,” though there are lots of ways in which patent rights are often granted over ideas rather than complete solutions—see, e.g., Janet Freilich’s paper above, or my review of some of this literature here.

    Eugenie Dugoua, International Environmental Agreements and Directed Technological Change: Evidence from the Ozone Regime – The Montreal Protocol drove a large increase in R&D on alternatives to ozone-depleting molecules. Careful empirics, though the result isn’t that surprising, and I’m not sure that this tells us much about international environmental agreements more generally. As scholars such as Cass Sunstein have explained, Montreal was much more successful than the Kyoto Protocol for a host of institutional reasons.

    Ruchir Agarwal, Talent Matters: Evidence from Mathematics – Performance on the International Mathematics Olympiad (IMO) is correlated with a number of outcomes related to mathematical success, but IMO participants from low- and middle-income countries have less mathematical success than equally talented participants from high-income countries. This reminded me of the work on Lost Einsteins, though I wasn’t sure what to take away from the results.

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  • Expectation of Success – How Much is Reasonably Needed for Obviousness

    How much is needed to reasonably prove obviousness? In UCB, the majority found UCB, Inc.’s asserted claim nonobvious under non-statutory double patenting.  The dissent, however, found overwhelming evidence in support of obviousness.  The majority determined that prior art teaching was insufficient for a skilled artisan to have a reasonable expectation of success.  To the dissent, however, the majority’s analysis was flawed because it ignored the fact that the law required only a reasonable…

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  • Some More New Papers on SEPs

    1.  Pauline Debré and Simon Corbineau-Picci have published a paper titled Brevets essentiels: «FRAND-ez-vous en terre inconnue» (“Essential Patents:  FRANDezvous in an unknown land”; the title is a pun on the name of a French reality tv show) in the April 2018 issue of Propriété Industrielle (pp. 12-18).  Here is the abstract (my translation from the French):
    The development of the Internet of Things and the increasing importance of standardization call for greater judicial and economic productivity of licenses in the domain of essential patents and of the rules that apply to them.  Even if recent case law provides some useful considerations for determining royalty rates and the availability of injunctions, several questions remain.
    2.   Vikas Kathuria and Jessica C. Lai have published an article titled Royalty Rates and Non-Disclosure Agreements in SEP Licensing:  Implications for Competition Law, 40 EIPR 357 (2018).  
    Here is the abstract:Requiring a non-disclosure agreement (NDA) is a common business practice used to safeguard the commercial interests of a licensor and a licensee in intellectual property licensing matters. The recent litigation involving standard essential patents (SEPs) has, however, raised doubts over the practice of patentees requiring NDAs before licensing SEPs to putative licensees. It has been argued that the inclusion of royalty rates in NDAs leads to discriminatory pricing of technology—a violation of the commitment to license under fair, reasonable and non-discriminatory (FRAND) terms. That is, licensees cannot know if they receive non-discriminatory terms, if they cannot compare their licences owing to NDAs. This article examines this issue from both the theoretical and practical perspectives, and concludes that the inclusion of royalty rates in NDAs may be justified in view of the technological and commercial realities involved in SEP licensing. 

    3. Sophia Oliveira Pais has posted a paper on ssrn titled The Huawei Case and Its Aftermath: A New Test for a New Type of Abuse, Yearbook of Antitrust and Regulatory Studies (YARS), Vol. 2017, 10(16).  Here is a link to the paper, and here is the abstract:
    Competition law sets limits on the exercise of intellectual property rights by dominant companies, namely in cases involving standard essential patents (SEPs). This article will examine the framework for SEP owners’ right to seek an injunction, discussing competitive problems that such situations may cause as well as the solutions adopted by the European Institutions, comparing them with the US and Japanese approach, and finally reflecting upon the opportunity for a new test for a new type of abuse. Although the three legal orders – US, EU and Japan – apply different laws establishing a general presumption against injunctions in SEPs encumbered with FRAND commitments, their goal is the same: to protect the interest of the SEP holder to obtain a remuneration without an abusive recourse to injunctions. I will argue that, in the EU, the Huawei case created a new test for a new type of abuse, improving the comprehensibility and certainty for the companies involved in standardization across Europe and allowing the harmonization of national judicial solutions regarding the seeking of injunctions in the SEPs context. In spite of some uncertainties, the new test clarifies the role that competition rules should play in cases of abuses by SEPs owners.

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