Generally speaking, the Supreme Court of the United States is a tribunal with the final say on what the law is. But the desirability of the Supreme Court's acting as final law sayer is questionable in patent law, where the Court primarily reviews the work of the Federal Circuit, a comparatively expert body having virtually exclusive jurisdiction over initial appeals. Nonetheless, in recent years, the Supreme Court has spoken repeatedly and forcefully on questions of substantive patent law. I argue that such Supreme Court activity is best justified and conceived not as directed toward final law saying, but instead as involving limited interventions to stimulate new or renewed judicial examination of important legal questions. Centralized appellate review in the Federal Circuit makes patent law unusually susceptible to doctrinal ossification. By engaging in periodic merits review of patent law doctrines that the Federal Circuit may have locked into place either too quickly or for too long, the Supreme Court can help initiate escapes from suboptimal legal equilibria. But the Court's competence is limited. Consequently, when intervening in substantive patent law, the Court should generally leave primary responsibility for developing precise legal formulas to the Patent and Trademark Office, district courts, and the Federal Circuit.
In a series of recent cases, the U.S. Supreme Court has made clear that there are substantial constraints on the categories of actions and materials for which patent protection may be afforded. But the Court has not provided clear instruction on how to implement these constraints. The Court can do better, and this Essay describes how the Court can perform judicial housecleaning that improves the state of the law on patentable subject matter. The Essay indicates the plausibility of judicial adoption of these proposals by showing how they comport with reasonable understandings of recent Supreme Court opinions and with concerns that Supreme Court Justices have voiced during oral argument.
For decades, the relationship between the U.S. Court of Appeals for the Federal Circuit and patent law’s doctrine of inequitable conduct has resembled that between Shakespeare’s Prince Hal and John Falstaff. The former recognizes the excess, the deservedly ill repute, even the at least occasional wickedness of the latter, but cannot tear away from his close companion. Likewise, for decades, Federal Circuit judges have criticized the excesses of the defense of inequitable conduct, which can render a patent unenforceable as a result of misrepresentation or nondisclosure to the U.S. Patent and Trademark Office. Nevertheless, U.S. patent law remains wedded to the defense’s existence. Without a real option of repudiating the defense, the Federal Circuit has instead sought to guide and confine the defense’s application in hopes of advancing legitimate aims at acceptable social cost. In this effort, the opinion for the en banc Federal Circuit written by Chief Judge Randall Rader in Therasense, Inc. v. Becton, Dickinson & Co. figures prominently. The background, content, and prospects for the Federal Circuit’s legal rulings in Therasense are the focus of this article.
This foreword for a symposium issue of the Texas Law Review discusses the evolution of intellectual property law scholarship, with particular attention to developments in empirically oriented IP scholarship. Over the past few decades, IP scholarship, outlets for its publication, and the IP academic community have grown remarkably, increasing not only in volume but also in diversity and interdisciplinary reach. IP empirical studies have featured substantially in this story of growth and diversification. The range and breadth of resulting scholarship can be disorienting but also provides hope for a new policy-oriented synthesis grounded in a multitude of discrete and methodologically diverse studies.
In Creation Without Restraint, Christina Bohannan and Herbert Hovenkamp add to the growing body of books on what academics have commonly come to call a “crisis” — namely, the current state of United States’ intellectual property (IP) laws and their interaction with policies of promoting both innovation and free-market competition. Bohannan and Hovenkamp suggest a variety of ways in which our modern patent, copyright, and antitrust laws might be improved to better promote the creation and distribution of new matter. Drawing on the example of U.S. antitrust law, they argue that private plaintiffs seeking to enforce IP rights should have to show “IP injury” — i.e., “likely interfere[nce] with IP holders’ decisions to create or distribute their works.” In this and other proposals, Bohannan and Hovenkamp might not have hit on a cure-all. Further, in the wake of the “new textualism,” their contentions might benefit from more extended and forceful argument for the purposive approach to statutory and constitutional interpretation that they embrace. At the very least, however, Bohannan and Hovenkamp’s discussion, analysis, and prescriptions add rich perspective to debates about how to manage what Robert Merges has characterized as the “sprawling, chaotic megacit[y]” of IP law.
To understand how to shape United States patent law to further the development and dissemination of biotechnology, it is necessary to understand the nature of the American biotechnology enterprise as a scientific, governmental, and industrial whole. Publicly funded research still plays a dominant role in fostering the basic scientific and technological advances that drive biotechnology forward. Consequently, over-emphasis on patent protection risks displacing public sector values that have played key roles in biotechnology's development. Although patent law appears to have facilitated innovation by small firms, the importance of publicly funded research and public sector values suggests the desirability of robust enforcement of basic requirements for patentability, including that of utility.
The patent system is commonly justified as a way to promote social welfare and, more specifically, technological progress. For years, however, there has been concern that patent litigation is undermining, rather than furthering, these goals. Particularly in the United States, the time, cost, and complications of patent suits provide openings for opportunistic assertions of infringement.
This Article proposes a way to address information problems that facilitate opportunistic assertion: an automatic process of administrative review at the threshold of infringement lawsuits in U.S. district courts. The results of this review would be non-binding but admissible in later court proceedings. Whether conducted by an independent Patent Litigation Review Board or a division of the U.S. Patent and Trademark Office, such review would: (1) help discourage -- or bring to an earlier and less costly end -- relatively weak patent-infringement lawsuits; (2) strengthen the litigation and bargaining positions of patentees with especially robust cases; (3) flag weaknesses in litigation positions to the benefit of private parties and the courts; and (4) provide policymakers with information that facilitates evaluation and adjustment of patent system performance. This Article uses multiple economic models to show the likely benefits of early-stage administrative review. Nonetheless, because of the fluid and complex nature of the patent litigation landscape, this Article proposes that the review process initially be adopted on a pilot basis.
In Bilski v. Kappos,1 U.S. Supreme Court made it official: we live in the Information Age.2 Information's paramount economic significance is now undeniable. In century's first decade, intangible assets were estimated to account for [a]s much as three-quarters of value of publicly traded companies.3 Related to this predominance of conceptual assets,4 public policymakers and private actors now widely recognize innovation-a form of in action-as vital to economic growth.5 Moreover, in an age of drone warfare,6 Stuxnet computer virus,7 panopticon-like electronic surveillance,8 cheap gene sequencing,9 and massive computer-related breaches of privacy,10 information and innovation have assumed unprecedented prominence even in noneconomic policy areas such as national security, liberty, and personal health. Although world events can still turn on Bismarck's iron and blood,11 knowledge and bits increasingly determine wealth, power, and everyday life.Focus on information and innovation inevitably leads to concern with intellectual property.12 Intellectual or is an umbrella term for a menagerie of legal regimes, such as copyright, patent, trademark, and trade secrets, that provide or fortify private rights in information.13 Although a variety of rationales for IP regimes have been posited, dominant rationales, particularly in United States, have been instru- mental, viewing IP rights as means to ends.14 Despite this instrumental outlook, however, good empirical evidence about IP regimes' operation and potential for reform has typically been frustratingly sparse. Some of this sparseness has reflected difficulty of assembling such information, but much has reflected a lack of heavy investment in serious IP empirical studies. The Information Age, an age that empowers people with new capacities to perform statistical analyses,15 has caused this last worm to turn. IP legal studies have entered a new period of very substantial empirical scholarship, a period that might enable more precise and accurate policy prescriptions than ever before.This symposium issue presents scholarship that aspires to push forward understanding of how IP functions and how it might improve. In view of complex, diverse, and ever changing environments in which new information develops, definitive answers on IP's performance and design cannot be expected anytime soon. But we can hope to take what this symposium terms Steps Toward Evidence-Based IP. Some steps might be largely promissory in nature, providing greater insight or understanding that might lead to practical results down road. Some steps might suggest more immediate, discrete reforms. In any event, perhaps greatest hope for this symposium is that it will herald ever greater commitment to more systematic and sophisticated studies of intellectual property's normative justifications, empirical context, and actual and potential practical performance. In this sense, publication of this sym- posium issue should be more of a hopeful beginning than an accomplished end.On other hand, talk of this issue as a beginning should not obscure fact that today's intellectual property studies themselves build on decades of work that have already transformed IP studies from one of legal academy's more minor eddies into one of academy's most rapidly broadening streams. Just as current Information Age reflects decades of relentless development of communications and computing technologies, very existence of this symposium issue reflects decades of growth in IP scholarship and IP scholarly community itself. As we think about where present empirically oriented intellectual property studies might take us, we should take brief note of trajectory on which IP studies and IP community have already traveled.A few decades ago, a leading general law review's dedication of an entire issue to largely empirically oriented IP studies would have been inconceivable. …
In recent years, the United States Patent and Trademark Office (“PTO”) sought to control results in adjudication by its Patent Trial and Appeals Board (“PTAB”) through a process commonly described as “panel stacking.” In a “strong form” of this practice, the PTO Director or Director’s delegee generated a new panel of administrative judges to conduct rehearing proceedings after an initial panel produced a decision with which the Director or delegee disagreed. This Essay contends that this strong-form practice raises constitutional concerns under the Fifth Amendment’s Due Process Clause. Consequently, the doctrine of constitutional avoidance instructs that courts should understand the Patent Act to preclude strong-form panel stacking. Judges and commentators have repeatedly erred by citing a plurality opinion on panel stacking in In re Alappat as if the plurality opinion authoritatively held that the Patent Act authorizes panel stacking. This Essay seeks to correct that misconception and shows that, once one takes account of constitutional concerns, the Alappat judges’ recognition of statutory ambiguity effectively condemns strong-form panel stacking, rather than “blessing” it.
