Authors:Barbier; Janelle Abstract: Since their inception in 2013, inter partes review proceedings have steadily gained in popularity, killing patents at an astounding rate. It is no wonder that defendants flee to the PTAB when staring down costly patent infringement suits in federal court. But an IPR institution is not a right––it is at the sole discretion of the USPTO Director. And despite increased petitions for IPR over the past few years, institution rates have declined. The reason for fewer institutions seemingly lies with the PTAB’s decision to employ certain factors in determining whether public policy weighs against IPR institution. This precedential doctrine—known as the NHK-Fintiv Rule—was created by the PTAB without any formal procedure. Following the Federal Circuit’s rulings that decisions relating to IPR institution are not subject to judicial review, the Rule has resulted in a frenzy of litigation and related pleas to the Supreme Court.While IPR institution denials continue to accumulate, accused infringers are engaged in a game of Whack-a-Mole with the Rule. Instead of continuing to attack the Rule as arbitrary and capricious, litigants should explore other avenues offered by the Administrative Procedure Act and the Constitution—these attacks on procedure may be the key in whacking the Rule for good. Further, the ramifications of the Rule on patent-specific forum shopping and litigation by nonpracticing entities are profound. For these reasons, the Supreme Court should heed the call by technology companies to clarify when judicial review is permissible for acts associated with discretionary agency action. PubDate: Fri, 26 May 2023 12:05:25 PDT
Authors:Goodman; Ellen P. et al. Abstract: Calls for audits to expose and mitigate harms related to algorithmic decision systems are proliferating,3 and audit provisions are coming into force—notably in the E.U. Digital Services Act.4 In response to these growing concerns, research organizations working on technology accountability have called for ethics and/or human rights auditing of algorithms and an Artificial Intelligence (AI) audit industry is rapidly developing, signified by the consulting giants KPMG and Deloitte marketing their services.5 Algorithmic audits are a way to increase accountability for social media companies and to improve the governance of AI systems more generally. They can be elements of industry codes, prerequisites for liability immunity, or new regulatory requirements.6 Even when not expressly prescribed, audits may be predicates for enforcing data-related consumer protection law, or what U.S. Federal Trade Commissioner Rebecca Slaughter calls “algorithmic justice.” 7 The desire for audits reflect a growing sense that algorithms play an important, yet opaque, role in the decisions that shape people’s life chances—as well as a recognition that audits have been uniquely helpful in advancing our understanding of the concrete consequences of algorithms in the wild and in assessing their likely impacts.8 PubDate: Fri, 26 May 2023 12:05:22 PDT
Authors:Poirot; Nicole Abstract: The United States Court of Appeals for the Federal Circuit (“Federal Circuit”) recently issued a precedential two-to-one decision regarding patent subject matter eligibility under section 101 of the Patent Act.1 In Weisner v. Google LLC, the Federal Circuit held that U.S. Patent Nos. 10,380,202 and 10,642,910 are directed to abstract ideas of creating digital travel logs which are patent ineligible.2 Additionally, the Court held that U.S. Patent Nos. 10,394,905 and 10,642,911 are directed to both creating and using travel logs to improve computerized search results and are potentially patenteligible.3 The majority’s decision is an attempt to clarify the historically gray area of patent eligibility under section 101, but it is unclear whether the result will aid future decisions or add to the complexity.Judge Hughes’s dissent offers an interesting analysis arguing the focus of the patents’ claims does not warrant patent eligibility under section 101.4 He proposed that to be patent-eligible, the patents needed to solve a problem specific to the Internet.5 However, the majority’s decision seems to imply that courts should be more flexible and view patent eligibility as a simple threshold test, rather than halting the case in the early stages of litigation. PubDate: Fri, 26 May 2023 11:24:00 PDT
Authors:Nieh; Haley Abstract: Non-fungible Tokens (NFTs) are exploding in the marketplace and are not losing momentum anytime soon. Artists, athletes, celebrities, and even brands and luxury houses are rolling out NFTs. With this excitement, a great deal of profit is being generated; the market cap of NFTs is expected to grow from $3 billion in 2022 to $13.6 billion in 2027 (a compound annual growth rate of 35 percent).1Blockchain technologies are an empowering platform for democratization of financial instruments and transactions. Cryptocurrency has received some regulation from the United States Securities and Exchange Commission (SEC), but clarity and regulation of NFTs have yet to be developed. A key hurdle around deciding whether to regulate NFTs stems from categorization of NFTs as commodities or securities or neither. This paper is not meant to propose any substantive regulatory or legal policies; rather, to investigate the foundation of NFTs and the ecosystem it occupies in order to begin to think about whether to regulate them.With that said, I attempt to introduce a framework of factors that I utilize to analyze whether NFTs are more like stocks, less like stocks, or not at all like stocks in terms of their ability to act as a security. The factors that are weighed are: valuation strategies or ecosystems (such as social media and trading bots), platform or transactional capacity (such as blockchain as a platform, brokerages and exchanges), and finally investment potential or the expectation of investment (such as risk and profitability). This is the first part of my two-part analysis. Because I conclude NFT markets do not look like traditional markets in certain key respects, I look to analyze NFTs under the Howey Test under an investment contract catch-all instead. In sum, NFTs can be a security under the Howey Test, I analyze the Bored Ape Yacht Club NFT as a case study of this. The promise of community and buying into a community with perks, clout and influence, as well as potential profit off the NFT itself satisfies the elements of the Howey Test. PubDate: Tue, 23 May 2023 22:13:30 PDT
Authors:Condon; Eamon M. Abstract: Recently, the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) ruled on a patent case involving the application of pre-America Invents Act (“AIA”) antedation and the issue of when a genus of compounds is narrowly limited enough to anticipate an individual compound found within the genus.1 On appeal, this case generally discussed why the claimant’s anticipation and obviousness claims failed.2While the entire Federal Circuit decision will be discussed, this Comment will discuss in greater depth the reasons why antedation is no longer applicable under the AIA, and the implications of the Federal Circuit’s decision to not set a standard for what defines a “limited class” under In re Petering. PubDate: Tue, 23 May 2023 22:13:28 PDT
Authors:Villasenor; John Abstract: Artificial intelligence (AI) enables the creation of inventions that no natural person conceived, at least as conception is traditionally understood in patent law. These can be termed “AI inventions,” i.e., inventions for which an AI system has contributed to the conception in a manner that, if the AI system were a person, would lead to that person being named as an inventor. Deeming such inventions unpatentable would undermine the incentives at the core of the patent system, denying society access to the full benefits of the extraordinary potential of AI systems with respect to innovation. But naming AI systems as inventors and allowing patentability on that basis is also problematic, as it involves granting property rights to computer programs. This Article proposes a different approach: AI inventions should be patentable, with inventorship attributed to the natural persons behind the AI under a broadened view of conception. More specifically, conception should encompass ideas formed through collaboration between a person and tools that act as extensions of their mind. The “formation” of those ideas should be attributed to the person, including when the ideas underlying the invention were first expressed by a tool used to enhance their creative capacity and subsequently conveyed to them. PubDate: Thu, 23 Feb 2023 14:00:55 PST
Authors:Johnson; Walter G. et al. Abstract: Emerging technologies offer the potential to improve health and quality of life but also pose notable risks to safety, wellbeing, and equity. Law and technology scholarship posits that robust policy and regulatory strategies in the public interest are required to manage these complex benefits, risks, and uncertainties. At the same time, the Supreme Court in its recent jurisprudence appears eager to revitalize nondelegation legal norms, especially through the major questions doctrine—a shifting administrative law doctrine that increasingly appears to act as a clear statement rule when interpreting statutory grants of authority to regulatory agencies. This article argues the major questions doctrine and other aggressive implementations of nondelegation principles pose both direct and indirect challenges to the regulation of emerging technologies. These challenges often involve not only novel rulemaking but also “inherited regulation,” or the process of extending existing rules to capture emerging technologies. Particularly considering the political incapacitation of Congress, the major questions doctrine could pose significant legal challenges (and uncertainty), creating new policy and political issues in administrative agency efforts to manage emerging technologies. Empirical studies are needed to determine exactly how and where aggressive nondelegation canons, such as the major questions doctrine, impact the regulation of emerging technologies. Accordingly, the article concludes by reflecting on coming challenges and opportunities for which state and non-state regulators and stakeholders should be prepared. PubDate: Thu, 23 Feb 2023 14:00:54 PST
Authors:Noonan; Kevin E. et al. Abstract: Biotechnology has never demonstrated its benefits to society more than in 2021. The SARS-CoV-2 virus that caused the CoVID-19 pandemic met a formidable opponent in mRNA vaccines developed and supplied by Moderna and Pfizer/BioNTech. These vaccines are claimed in myriad – not Myriad – patents and patent applications, many of which are destined to be litigated over the coming years, not least inspired by the many billions of dollars that have been, and will continue to be, earned by their owners. While the world waits for this storm of patent litigation, federal courts continue to be busy with ownership, licensing, validity, and infringement disputes arising from other biotechnologies, including, perhaps, up-and-coming CAR-T therapies. For the fourth year in a row (of what has become a tradition), we discuss, in this article, the ten most consequential, important, and interesting court decisions involving biotechnology patents. Our top ten decisions may not be the same as top tens compiled by others. However, to quote an expression commonly heard in courts hearing patent cases, à chacun son goût. Patent decisions delivered during 2021 tackled a diverse group of doctrinal issues. As discussed in the article, these ranged from how much experimentation is to be considered undue à la In re Wands, to what level of detail of disclosure is sufficient to satisfy the ever- written description requirement, to which types of behavior may rise to the level of inducement to infringe, not to mention assignor estoppel. Patent litigations filed in federal district court rose to 3,798, a number not seen since 2016. In contrast, the 1,333 patent actions filed with the Patent Trial and Appeal Board (“PTAB“) represented a substantial decline from 2020. In short, despite the challenges of the CoVID- 19 pandemic, patent litigation in 2021 evinced considerable vim and vigor. Described and analyzed in this article are the vimmiest and most vigorous of 2021 patent decisions. PubDate: Mon, 06 Feb 2023 23:19:05 PST
Authors:Perez; Erik I. Abstract: With the recent proliferation of the commercialization of space, private entities are beginning to race towards the sky. Increased use of privatized money in space has greatly increased the probability of intellectual property used outside the bounds of the United States on the terrestrial Earth. Current literature has analyzed certain aspects of international space treaties but very few have proposed solutions to combatting space travel. Current literature has not proposed any solutions to the current evolution and explosion of space travel. This paper reviews the past historical analysis from previous authors, looks forward to the proliferation of privatized space travel, and tests a variety of issues coming to the future. This paper proposes a novel framework to determine what constitutes the territory of the United States for the purposes of patent infringement. This paper is broken up into four parts: Part I details the history of patent inventorship within the United States. Additionally, this part outlines the history of space exploration, certain space treaties the United States abides by, and defines characteristics associated with developing the space programs within the United States. Part II explores the United States’ jurisprudence with federal causes of action and patent infringement. Additionally, this part briefly explores international treaties the United States abides by and details the criticism of utilizing those treaties as a framework for outer space law in the context of patent infringement in outer space. Part III details solutions to bringing forth domestic causes of action for outer space patent infringement which were discussed in part II. PubDate: Mon, 06 Feb 2023 23:19:03 PST
Authors:Barbier; Janelle Abstract: FEDERAL CIRCUIT DECLINES TO FIND PATENT CLAIMS INDEFINITE FOR BROAD DESCRIPTIVE WORDS (AND AN ODE TO 1L CIVIL PROCEDURE)Niazi Licensing Corporation v. St. Jude Medical S.C., Inc., 30 F.4th 1339 (Fed. Cir. 2022)♦ PubDate: Wed, 14 Sep 2022 18:17:38 PDT
Authors:Perez; Erik I. Abstract: The Federal Circuit was created to ensure patent law consistency by reducing inter-circuit splits.1 For decades, the Federal Circuit has oscillated between two standards associated with claim construction. This Article attempts to explain, analyze, and propose a solution to the intra-court split on claim construction. Part I examines the historical overview of patent litigation. This section briefly describes patent document sections, protectable patent rights, and patent interpretation shifts, from relying on the patent’s specification, to the patent’s claim. Part II examines current patent law. This section briefly describes how patent claims are interpreted and what role the specification aids in the interpretation. Part III examines the Federal Circuit’s intra-court split regarding the role that the specification plays in determining the limitations imposed on patent claims. This section is split into four parts: (A) the exacting presumption standard is analyzed through two cases; (B) the holistic standard is analyzed through two cases and subsequently compared against the exacting presumption standard; (C) a proposed theoretical standard is explained and analyzed; and (D) the current Federal Circuit standards are evaluated and analyzed to determine which one is more likely to prevail. PubDate: Wed, 14 Sep 2022 18:17:36 PDT
Authors:Lazar; Jonathan et al. Abstract: The federal circuit courts of appeals are in conflict over whether Title III of the Americans with Disabilities Act requires public accommodations’ websites to be accessible to people with disabilities. Some courts consider websites themselves to be a covered “place of public accommodation.” Others conclude that websites are not covered at all. The predominant view is that a website must be accessible if it has a “nexus” to a physical public location. However, the “nexus” requirement has been problematic from the start and its weaknesses have been particularly exposed during the COVID-19 pandemic. The pandemic exposes a deep mismatch between the “nexus” requirement and how businesses approach their work. In this article, we present a novel reconceptualization of the website accessibility question which resolves the inter-circuit conflict and allows abandonment of the already unworkable nexus requirement. PubDate: Wed, 14 Sep 2022 18:17:35 PDT
Authors:Wennagel; Robert Abstract: Automated decision-making (“ADM”) systems, whether deploying artificial intelligence, machine learning, or other algorithmic processes, have become ubiquitous in modern life, but their use is often unnoticed or invisible to society at large. Currently no federal laws require notice or disclosure to individuals when an ADM is used to collect their data, evaluate them, or make determinations about their lives. This is particularly concerning for the employment relationship because notice and transparency are essential for personal privacy, and the surreptitious use of ADM systems deprives applicants and employees of the ability to understand employers’ decision-making processes and to seek redress under applicable antidiscrimination laws. Some state and local governments have recognized this danger and have taken initial steps to protect applicants and employees, while the European Union has proposed a sweeping AI regulation that would govern all phases of development of such systems there. This article proposes a system of regulations based on notice and transparency that takes into consideration existing laws governing the employment relationship and complements those laws in order to produce a legal framework that promotes applicant and employee rights, while also allowing flexibility for the development of ADM systems that benefits employees, employers, and society. PubDate: Wed, 14 Sep 2022 18:17:33 PDT
Authors:Wang; Michael Abstract: While China has been hearing more cases and trying to limit the “reskinning” of many popular video games published by U.S. and other foreign companies, China’s copyright law is too restrictive and does not consider the multitude of precedent as to how the industry has interpreted copyright regulation for video games. China’s copyright law sets such a high bar for originality that companies can create games with similar characters having similar abilities and mechanics, but still not violate China’s copyright laws. Chinese game companies have attempted to create mobile versions of popular games in order to make quick profits as well. These circumstances are compounded upon the fact that American companies have found limited success in domestic courts due to Chinese companies successfully raising the defense of forum non conveniens, which forces American companies to file cases in Chinese courts. However, Chinese law is far weaker in protecting video game copyright, leading this to be a detriment down the road for American video game publishers and companies.This results in American companies losing a significant portion in revenue due to these reskinned cloned video games and incurring higher legal costs from litigating in a foreign venue. In 2018, mobile game publishers had lost over $17.5 billion in revenue from video game copying.2 There is also a multitude of steps for foreign publishers to release their games in China. Foreign publishers need to partner with a Chinese publisher, adding even more barriers.However, there are other steps U.S. companies can take to alleviate these harms. While Chinese copyright law may not be suitable for U.S. companies to pursue successful lawsuits, China does have an Anti-Unfair Competition Law that is more flexible in the kinds of infringement it protects against. This is an avenue that U.S. developers can pursue if they wish to recoup their costs. Game companies can also reach out to live streaming services in China and give them exclusive rights to stream their game, which along with the Anti-Unfair Competition Law could greatly limit game cloning. Also, Chinese trademark law has given foreign companies much more success. Not all hope is lost for U.S. companies in attempting to protect their games. PubDate: Mon, 14 Mar 2022 21:57:33 PDT
Authors:Gutierrez Gaviria; Carlos Ignacio Abstract: Artificial Intelligence’s (AI) growing catalog of applications and methods has the potential to profoundly affect public policy by generating instances where regulations are not adequate to confront the issues faced by society, also known as regulatory gaps. The objective of this article is to improve our understanding of how AI influences U.S. public policy. It does so by systematically exploring, for the first time, this technology’s role in the generation of regulatory gaps. Specifically, it addresses two research questions: What U.S. regulatory gaps exist due to AI methods and applications' When looking across all of the gaps identified in the first research question, what trends and insights emerge that can help stakeholders plan for the future' These questions are answered through a systematic review of four academic literature databases in the hard and social sciences. Its implementation is guided by a protocol that identified 5,240 candidate articles. A screening process reduced this sample to 241 articles (published between 1976 and February of 2018) relevant to answering the research questions.This article contributes to the literature by adapting the work of Bennett-Moses and Calo to effectively characterize regulatory gaps caused by AI in the U.S. In addition, it finds that most gaps: do not require new regulation or the creation of governance frameworks for their resolution, are found at the federal and state levels of government, and AI applications are recognized more often than methods as their cause. PubDate: Mon, 14 Mar 2022 21:57:31 PDT
Authors:Rissberger; Emily N. Abstract: From the immune system of bacteria comes a promising new gene-editing technology, CRISPR-Cas9. Discovered in 2012, CRISPR-Cas9 has already been named one of the fastest, easiest, and cheapest gene-editing technologies. With this reputation, CRISPR-Cas9 shows promise in the research and treatments of a wide array of diseases: cancer, blood disorders, blindness, AIDS, Cystic Fibrosis, Muscular Dystrophy, Huntington’s disease, and even COVID-19 to name a few. This relatively new technology has brought hope to researchers, doctors, and patients alike; however, current biotechnology licensing practices could hinder CRISPR-Cas9’s groundbreaking potential. This article examines common biotechnology licensing practices, specifically the practices of two of the largest CRISPR-Cas9 patent holders, The University of California, Berkeley and The Broad Institute of MIT and Harvard. After each institution’s respective CRISPRCas9 discovery, a lengthy court battled ensued to determine which institution discovered CRIPR-Cas9 first, and whether patent infringement existed. Eventually, both institutions were granted their desired patents and quickly ensured the future of their technologies by creating independent companies to control the licensing of CRISPR-Cas9 patents. This article refers to such companies as “surrogate companies” and explains the function of these entities as the gatekeeper of valuable patent rights through exclusive licenses. This article offers solutions to existing exclusive licenses without losing sight of the important relationship between research institutions and surrogate companies. Providing limited field-of-use licenses, rather than over-inclusive exclusive licenses of CRISPR-Cas9 patented technology, will ensure that a wider range of the human genome can be treated. Rather than merely scratching the surface of multiple therapies, limited licenses allow companies to focus on and thoroughly develop specific gene therapies. This reduces the risk of overlooking or under developing potentially life-changing gene therapies. This article goes further, suggesting that the biotechnology industry adopt an open-source access model like the one used in the software industry. Such a model could prove beneficial for companies looking to expand product offerings while still maintaining profits. Historically low-profit diseases, like tropical diseases, could become more desirable to companies based on the collaboration and reduced R&D costs inherent in open-source practices. PubDate: Fri, 01 Oct 2021 12:31:01 PDT
Authors:Buresh; Donald L. Abstract: The issue addressed in this paper was that only a minority of states have passed privacy and biometric privacy rights laws. The collection, storage, use, and dissemination of personal information and biometric data is becoming paramount due to the public’s ever-increasing desire for security. The purpose of this study was to understand and evaluate the privacy and property issues that states confront that are inherent within the use and results of employing personal information and biometric data to enhance corporate security in their efforts to protect individual privacy. This research addressed the following questions: (1) What are the biometric privacy issues that states face regarding individual and corporate needs for security and privacy'; (2) Why do the several states continue to be vulnerable to litigation regarding biometric privacy issues'; (3) How does the State of Illinois address biometric privacy issues in its statutory effort to protect individuals against organizations that employ biometric cybersecurity procedures'; and (4) How does the Illinois Biometric Information Privacy Act benefit the federal government and other states in their efforts to create and pass biometric privacy laws that protect the privacy rights of their citizens' Four key findings are discussed in this study. The major finding was that neither the California Consumer Privacy Act as amended, the California Privacy Right Act nor Illinois’ Biometric Information Privacy Act overlap to form a far-reaching privacy law because the subject matters of both laws are different. The recommendations argue that the United States needs an all inclusive privacy law that encompasses both personal information and biometric information. PubDate: Fri, 01 Oct 2021 12:31:00 PDT
Authors:Katopis; Chris J. Abstract: The Author examines some recent trends in intellectual property (U.S. patents) in the fintech sector, summarizes this empirical data, and discusses the potential implications of these developments. PubDate: Fri, 01 Oct 2021 12:30:58 PDT
Authors:Costello-Caulkins; Michael Abstract: NANOTECHNOLOGY PATENT LAW: A CASE STUDY OF THE UNITED STATES AND EUROPEAN PATENT APPLICATIONS PubDate: Thu, 22 Apr 2021 21:20:17 PDT
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