The Supreme Court has decided many more patent cases than trademark or copyright cases. This is so not just in the past decade—the focus of the tenth annual Supreme Court IP Review at the Chicago-Kent College of Law, in September 2019, at which I presented this research—but in the past 20 decades. In gathering the entire body of the Court’s i.p. caselaw, for a study with citation-network-analysis tools, I found that patent cases greatly outnumber trademark and copyright cases. Moreover, patent cases, especially patent & antitrust cases, dominate the metrics for the most central cases in the citation network. One can, however, take the Court’s trademark and copyright cases out of the shadow of the patent cases, creating a citation network focused on those areas of i.p. law. This paper does so. Specifically, I focus on the basic citation and co-citation networks embedded in all the Supreme Court trademark and copyright cases that cite out to one or more prior Supreme Court cases in any doctrinal area. These i.p. cases run from Stevens v. Gladding, 58 U.S. (17 How.) 447 (1855), to, most recently, Mission Product Holdings, Inc. v. Tempnology, LLC, 139 S. Ct. 1652 (2019). The lesson is as clear as it is brief: trademark dominates the jurisprudence through 1972, then copyright dominates from 1973 to the present.
最高法院裁决的专利案件比商标或版权案件要多得多。这不仅是过去十年的情况——2019年9月，我在芝加哥肯特法学院(Chicago-Kent College of Law)举行的第十届年度最高法院知识产权审查(Supreme Court IP Review)的重点，也是过去20年的情况。我收集了最高法院的全部知识产权案例，用引文网络分析工具进行研究，发现专利案件的数量远远超过商标和版权案件。此外，专利案件，特别是专利和反垄断案件，在引文网络中最核心的案例中占主导地位。然而，人们可以将法院的商标和版权案件从专利案件的阴影中剥离出来，创建一个专注于知识产权法领域的引文网络。本文就是这样做的。具体来说，我关注的是所有最高法院商标和版权案件中嵌入的基本引用和共同引用网络，这些案件引用了一个或多个最高法院在任何理论领域的判例。这些知识产权案件从Stevens诉gladd, 58 U.S. (17 How.) 447(1855)，到最近的Mission Product Holdings, Inc.诉Tempnology, LLC, 139 s Ct. 1652(2019)。这个教训既简单又清晰:商标在1972年之前主导着法理学，然后版权在1973年至今主导着法理学。
{"title":"Two Centuries of Trademark and Copyright Law: A Citation-Network-Analysis Approach","authors":"Joseph Scott Miller","doi":"10.2139/ssrn.3523115","DOIUrl":"https://doi.org/10.2139/ssrn.3523115","url":null,"abstract":"The Supreme Court has decided many more patent cases than trademark or copyright cases. This is so not just in the past decade—the focus of the tenth annual Supreme Court IP Review at the Chicago-Kent College of Law, in September 2019, at which I presented this research—but in the past 20 decades. In gathering the entire body of the Court’s i.p. caselaw, for a study with citation-network-analysis tools, I found that patent cases greatly outnumber trademark and copyright cases. Moreover, patent cases, especially patent & antitrust cases, dominate the metrics for the most central cases in the citation network. One can, however, take the Court’s trademark and copyright cases out of the shadow of the patent cases, creating a citation network focused on those areas of i.p. law. This paper does so. Specifically, I focus on the basic citation and co-citation networks embedded in all the Supreme Court trademark and copyright cases that cite out to one or more prior Supreme Court cases in any doctrinal area. These i.p. cases run from Stevens v. Gladding, 58 U.S. (17 How.) 447 (1855), to, most recently, Mission Product Holdings, Inc. v. Tempnology, LLC, 139 S. Ct. 1652 (2019). The lesson is as clear as it is brief: trademark dominates the jurisprudence through 1972, then copyright dominates from 1973 to the present.","PeriodicalId":40000,"journal":{"name":"Journal of Intellectual Property","volume":null,"pages":null},"PeriodicalIF":0.0,"publicationDate":"2020-01-20","publicationTypes":"Journal Article","fieldsOfStudy":null,"isOpenAccess":false,"openAccessPdf":"","citationCount":null,"resultStr":null,"platform":"Semanticscholar","paperid":"81290819","PeriodicalName":null,"FirstCategoryId":null,"ListUrlMain":null,"RegionNum":0,"RegionCategory":"","ArticlePicture":[],"TitleCN":null,"AbstractTextCN":null,"PMCID":"","EPubDate":null,"PubModel":null,"JCR":null,"JCRName":null,"Score":null,"Total":0}
{"title":"The Confusion of Trademark Territoriality","authors":"Joseph Levy","doi":"10.2139/ssrn.3310978","DOIUrl":"https://doi.org/10.2139/ssrn.3310978","url":null,"abstract":"","PeriodicalId":40000,"journal":{"name":"Journal of Intellectual Property","volume":null,"pages":null},"PeriodicalIF":0.0,"publicationDate":"2019-01-01","publicationTypes":"Journal Article","fieldsOfStudy":null,"isOpenAccess":false,"openAccessPdf":"","citationCount":null,"resultStr":null,"platform":"Semanticscholar","paperid":"73115556","PeriodicalName":null,"FirstCategoryId":null,"ListUrlMain":null,"RegionNum":0,"RegionCategory":"","ArticlePicture":[],"TitleCN":null,"AbstractTextCN":null,"PMCID":"","EPubDate":null,"PubModel":null,"JCR":null,"JCRName":null,"Score":null,"Total":0}
Recent district court rulings regarding copyright violations using BitTorrent file-sharing protocols to illegally download pornographic films have been numerous and largely procedural. But some have casually included language challenging the established doctrine of content neutrality in copyright, noting that obscenity exceptionalism might still be within the court’s policy discretion. This article traces these recent rulings and finds little substantive argument on behalf of exceptionalism other than its long-time understanding under common law, now abandoned. It also examines the critical early nineteenth century common law rulings considered seminal in establishing content exceptionalism in copyright and finds that current court references to them in swarm cases appear willing to accept what was believed to be their governing principles without consideration of the cautions expressed by earlier courts.
{"title":"Chasing Echoes of Obscenity Exceptionalism in Copyright: Recent Swarm Cases","authors":"J. R. Alexander","doi":"10.2139/SSRN.3007741","DOIUrl":"https://doi.org/10.2139/SSRN.3007741","url":null,"abstract":"Recent district court rulings regarding copyright violations using BitTorrent file-sharing protocols to illegally download pornographic films have been numerous and largely procedural. But some have casually included language challenging the established doctrine of content neutrality in copyright, noting that obscenity exceptionalism might still be within the court’s policy discretion. This article traces these recent rulings and finds little substantive argument on behalf of exceptionalism other than its long-time understanding under common law, now abandoned. It also examines the critical early nineteenth century common law rulings considered seminal in establishing content exceptionalism in copyright and finds that current court references to them in swarm cases appear willing to accept what was believed to be their governing principles without consideration of the cautions expressed by earlier courts.","PeriodicalId":40000,"journal":{"name":"Journal of Intellectual Property","volume":null,"pages":null},"PeriodicalIF":0.0,"publicationDate":"2017-10-28","publicationTypes":"Journal Article","fieldsOfStudy":null,"isOpenAccess":false,"openAccessPdf":"","citationCount":null,"resultStr":null,"platform":"Semanticscholar","paperid":"72887910","PeriodicalName":null,"FirstCategoryId":null,"ListUrlMain":null,"RegionNum":0,"RegionCategory":"","ArticlePicture":[],"TitleCN":null,"AbstractTextCN":null,"PMCID":"","EPubDate":null,"PubModel":null,"JCR":null,"JCRName":null,"Score":null,"Total":0}
Pointing to a limited set of statistics suggesting that examiners turn in much of their work product at the end of quota periods, the Commerce Department has recently raised concerns over examiner procrastination and its consequences for examination quality. End-loading of review completions alone, however, is not dispositive evidence of procrastination. In this paper, we confirm that examiners complete a substantial percentage of reviews at the end of both bi-weekly and quarterly quotas and then proceed to test for additional markers that may separate a procrastination explanation for these findings from a range of alternative theories. Among other tests explored in this regard, we predict and find evidence of an immediate spike in end-loading upon the onset of examiner telecommuting, a change in work environments that likely exacerbates self-control problems. Our findings support a procrastination interpretation for at least some portion of the observed end-loading of reviews, with our outcomes analysis suggesting that the predominant consequence of this behavior for examination quality is an increase in examination durations.
{"title":"Procrastination at the Patent Office?","authors":"Michael D. Frakes, Melissa Wasserman","doi":"10.2139/ssrn.2888061","DOIUrl":"https://doi.org/10.2139/ssrn.2888061","url":null,"abstract":"Pointing to a limited set of statistics suggesting that examiners turn in much of their work product at the end of quota periods, the Commerce Department has recently raised concerns over examiner procrastination and its consequences for examination quality. End-loading of review completions alone, however, is not dispositive evidence of procrastination. In this paper, we confirm that examiners complete a substantial percentage of reviews at the end of both bi-weekly and quarterly quotas and then proceed to test for additional markers that may separate a procrastination explanation for these findings from a range of alternative theories. Among other tests explored in this regard, we predict and find evidence of an immediate spike in end-loading upon the onset of examiner telecommuting, a change in work environments that likely exacerbates self-control problems. Our findings support a procrastination interpretation for at least some portion of the observed end-loading of reviews, with our outcomes analysis suggesting that the predominant consequence of this behavior for examination quality is an increase in examination durations.","PeriodicalId":40000,"journal":{"name":"Journal of Intellectual Property","volume":null,"pages":null},"PeriodicalIF":0.0,"publicationDate":"2016-12-20","publicationTypes":"Journal Article","fieldsOfStudy":null,"isOpenAccess":false,"openAccessPdf":"","citationCount":null,"resultStr":null,"platform":"Semanticscholar","paperid":"78996802","PeriodicalName":null,"FirstCategoryId":null,"ListUrlMain":null,"RegionNum":0,"RegionCategory":"","ArticlePicture":[],"TitleCN":null,"AbstractTextCN":null,"PMCID":"","EPubDate":null,"PubModel":null,"JCR":null,"JCRName":null,"Score":null,"Total":0}
Digitization of 20th Century cultural heritage is severely restricted due to the real or potential subsistence of copyright and related rights. Under the laws on orphan works introduced in many countries, items whose copyright status is uncertain may possibly be lawfully digitized, on condition that a “diligent search” of the copyright owners has been performed. However, carrying out diligent searches on large collections is a lengthy and expensive process, which may discourage institutional users from embarking on large-scale digitization. While the problem of performing diligent searches has been so far approached in a “centralized” manner by individual institutions, the article suggests a de-centralized approach based on crowdsourcing certain phases of the diligent search process. The proposed solution may alleviate the problem of the high costs of diligent search, and may ultimately enable cultural heritage institutions to take full advantage of the orphan works legislation. Suitability of the crowdsourcing solution to the cultural heritage sector is discussed and challenges to implementation are identified.
{"title":"With enough eyeballs all searches are diligent: mobilizing the crowd in copyright clearance for mass digitization","authors":"M. Borghi, K. Erickson, M. Favale","doi":"10.2139/SSRN.2806145","DOIUrl":"https://doi.org/10.2139/SSRN.2806145","url":null,"abstract":"Digitization of 20th Century cultural heritage is severely restricted due to the real or potential subsistence of copyright and related rights. Under the laws on orphan works introduced in many countries, items whose copyright status is uncertain may possibly be lawfully digitized, on condition that a “diligent search” of the copyright owners has been performed. However, carrying out diligent searches on large collections is a lengthy and expensive process, which may discourage institutional users from embarking on large-scale digitization. While the problem of performing diligent searches has been so far approached in a “centralized” manner by individual institutions, the article suggests a de-centralized approach based on crowdsourcing certain phases of the diligent search process. The proposed solution may alleviate the problem of the high costs of diligent search, and may ultimately enable cultural heritage institutions to take full advantage of the orphan works legislation. Suitability of the crowdsourcing solution to the cultural heritage sector is discussed and challenges to implementation are identified.","PeriodicalId":40000,"journal":{"name":"Journal of Intellectual Property","volume":null,"pages":null},"PeriodicalIF":0.0,"publicationDate":"2016-07-07","publicationTypes":"Journal Article","fieldsOfStudy":null,"isOpenAccess":false,"openAccessPdf":"","citationCount":null,"resultStr":null,"platform":"Semanticscholar","paperid":"75886060","PeriodicalName":null,"FirstCategoryId":null,"ListUrlMain":null,"RegionNum":0,"RegionCategory":"","ArticlePicture":[],"TitleCN":null,"AbstractTextCN":null,"PMCID":"","EPubDate":null,"PubModel":null,"JCR":null,"JCRName":null,"Score":null,"Total":0}
This response to a keynote speech by Judge Margaret McKeown explores some dimensions of copyright in addition to its dominant function as a set of market-facilitating exclusive rights. The recent possible trend towards protecting privacy and other non-commercial concerns via copyright law is not necessarily inconsistent with its historical usages, does not necessarily threaten freedom of expression and may further important privacy policies. The balance of these competing policies is shifting, especially in an environment of proliferating digital content where cyber civil rights may need further development in response to cyberbullying. It examines the specific case of non-consensual pornography as a means of exploring possible doctrinal and policy directions. Ultimately it endorses a less formalistic and more flexible use of copyright to address harms currently under-recognized by our existing legal frameworks.
{"title":"Copyright's Other Functions","authors":"Margaret Chon","doi":"10.2139/SSRN.2789876","DOIUrl":"https://doi.org/10.2139/SSRN.2789876","url":null,"abstract":"This response to a keynote speech by Judge Margaret McKeown explores some dimensions of copyright in addition to its dominant function as a set of market-facilitating exclusive rights. The recent possible trend towards protecting privacy and other non-commercial concerns via copyright law is not necessarily inconsistent with its historical usages, does not necessarily threaten freedom of expression and may further important privacy policies. The balance of these competing policies is shifting, especially in an environment of proliferating digital content where cyber civil rights may need further development in response to cyberbullying. It examines the specific case of non-consensual pornography as a means of exploring possible doctrinal and policy directions. Ultimately it endorses a less formalistic and more flexible use of copyright to address harms currently under-recognized by our existing legal frameworks.","PeriodicalId":40000,"journal":{"name":"Journal of Intellectual Property","volume":null,"pages":null},"PeriodicalIF":0.0,"publicationDate":"2016-06-03","publicationTypes":"Journal Article","fieldsOfStudy":null,"isOpenAccess":false,"openAccessPdf":"","citationCount":null,"resultStr":null,"platform":"Semanticscholar","paperid":"86139564","PeriodicalName":null,"FirstCategoryId":null,"ListUrlMain":null,"RegionNum":0,"RegionCategory":"","ArticlePicture":[],"TitleCN":null,"AbstractTextCN":null,"PMCID":"","EPubDate":null,"PubModel":null,"JCR":null,"JCRName":null,"Score":null,"Total":0}
The statutory requirement that to obtain a patent an invention must not be obvious to a person having ordinary skill in the art helps maintain a balance between the incentives provided by the grant of patents and harm resulting from too many patent grants. In 2007 the Supreme Court in KSR International Co. v. Teleflex Inc. increased what would in the future constitute obvious (and thus unpatentable) inventions by: (1) expanding the types of prior art a court must consider in determining obviousness; (2) recognizing steps that are obvious to try might result in inventions that are obvious; and (3) acknowledging that persons having ordinary skill in the art are creative and exercise common sense. However, the Federal Circuit had developed its obviousness test for new pharmaceutical compounds before KSR and has not substantially modified its test since KSR. That test is inconsistent not only with KSR, but also with the obviousness statute itself (§103) and the Federal Circuit’s treatment of obviousness for other fields. This article argues that the Federal Circuit or, if the appropriate case reaches it, the Supreme Court should reject the Federal Circuit’s obviousness test for new pharmaceutical compounds and follow instead KSR and §103 to appropriately serve the gatekeeping function of patent law’s obviousness requirement.
{"title":"Federal Circuit's Obviousness Test for New Pharmaceutical Compounds: Gobbledygook?","authors":"Douglas L. Rogers","doi":"10.2139/ssrn.2486559","DOIUrl":"https://doi.org/10.2139/ssrn.2486559","url":null,"abstract":"The statutory requirement that to obtain a patent an invention must not be obvious to a person having ordinary skill in the art helps maintain a balance between the incentives provided by the grant of patents and harm resulting from too many patent grants. In 2007 the Supreme Court in KSR International Co. v. Teleflex Inc. increased what would in the future constitute obvious (and thus unpatentable) inventions by: (1) expanding the types of prior art a court must consider in determining obviousness; (2) recognizing steps that are obvious to try might result in inventions that are obvious; and (3) acknowledging that persons having ordinary skill in the art are creative and exercise common sense. However, the Federal Circuit had developed its obviousness test for new pharmaceutical compounds before KSR and has not substantially modified its test since KSR. That test is inconsistent not only with KSR, but also with the obviousness statute itself (§103) and the Federal Circuit’s treatment of obviousness for other fields. This article argues that the Federal Circuit or, if the appropriate case reaches it, the Supreme Court should reject the Federal Circuit’s obviousness test for new pharmaceutical compounds and follow instead KSR and §103 to appropriately serve the gatekeeping function of patent law’s obviousness requirement.","PeriodicalId":40000,"journal":{"name":"Journal of Intellectual Property","volume":null,"pages":null},"PeriodicalIF":0.0,"publicationDate":"2014-08-25","publicationTypes":"Journal Article","fieldsOfStudy":null,"isOpenAccess":false,"openAccessPdf":"","citationCount":null,"resultStr":null,"platform":"Semanticscholar","paperid":"83493829","PeriodicalName":null,"FirstCategoryId":null,"ListUrlMain":null,"RegionNum":0,"RegionCategory":"","ArticlePicture":[],"TitleCN":null,"AbstractTextCN":null,"PMCID":"","EPubDate":null,"PubModel":null,"JCR":null,"JCRName":null,"Score":null,"Total":0}
Trademark bullying (a.k.a. trademark extortion) is a very controversial notion in trademark litigation in the United States. There, for sure, is a lot of illegitimate trademark infringement happening. Anecdotally, we also know that trademark holders often overstep in the assertion of their otherwise legitimate rights. For the first time, this article documents how large a problem trademark bullying is and how often it happens. Trademark bullying occurs when there is evidence that a trademark holder asserts a non-famous mark against a non-competing entity on or in connection with goods or services into which the plaintiff has no reasonable expectation of expanding. Trademark bully occurs in at least 5.5% of the reported cases. This is the same rate that plaintiffs recover any money damages. In the reported cases, trademark bullying is as statistically significant and relevant as cases where the plaintiff recovers money damages. Also, 5.5% is a floor. Trademark bullying happens at least 5.5% of the time. As there is no reporting or recording requirement in the United States, trademark bullying, if it happens at all, can only be found if we use deductive reasoning. This article is based on the deductive notion that cases where summary judgment was granted for the defendants are likely to manifest trademark bullying and it is appropriate to label them as such. In trademark bullying cases, the quality of the plaintiff’s claim is declining. This conclusion is supported by regression analysis that indicates that it is accurate to over 99% certainty. That is, plaintiffs are bringing claims that are less and less likely to succeed on the merits if tried. As no data (just suppositions) was provided by Vogel and Schachter, it is difficult to claim they are wrong in their analysis. Of course, Rule 11 and the other potential sanctions do exist. With this study, we now know that no Rule 11 sanctions were ever applied to any trademark bullying case. Further, no data is relied on by the various trade organizations (simply outdated dicta from now ancient cases). The data here is the first attempt to prove or disproved trademark bullying. It is provided in the spirit of an academic inquiry. To me, the data here supports the idea that trademark bullying deserves the scrutiny that would be brought to bear if Congress elected to get involved. Clearly, the existing “safeguards” have been proven here to be anything but safe. If non-practicing entities is a matter worth the time and energy of States and Congress, then trademark bullying is as well as both involve entities which upset natural markets for and with intellectual property. As such, Congress should act. Congress could go a long way in stopping trademark bullying if it amended Section 1117 of the Lanham to make it explicit that trademark infringement defendants as well as plaintiffs should be awarded its attorney’s fees when the opposing party acts egregiously. Attorney’s fees should be liberally awarded in ca
{"title":"Trademark Extortion Revisited: A Response to Vogel and Schachter","authors":"Kenneth L. Port","doi":"10.2139/SSRN.2340560","DOIUrl":"https://doi.org/10.2139/SSRN.2340560","url":null,"abstract":"Trademark bullying (a.k.a. trademark extortion) is a very controversial notion in trademark litigation in the United States. There, for sure, is a lot of illegitimate trademark infringement happening. Anecdotally, we also know that trademark holders often overstep in the assertion of their otherwise legitimate rights. For the first time, this article documents how large a problem trademark bullying is and how often it happens. Trademark bullying occurs when there is evidence that a trademark holder asserts a non-famous mark against a non-competing entity on or in connection with goods or services into which the plaintiff has no reasonable expectation of expanding. Trademark bully occurs in at least 5.5% of the reported cases. This is the same rate that plaintiffs recover any money damages. In the reported cases, trademark bullying is as statistically significant and relevant as cases where the plaintiff recovers money damages. Also, 5.5% is a floor. Trademark bullying happens at least 5.5% of the time. As there is no reporting or recording requirement in the United States, trademark bullying, if it happens at all, can only be found if we use deductive reasoning. This article is based on the deductive notion that cases where summary judgment was granted for the defendants are likely to manifest trademark bullying and it is appropriate to label them as such. In trademark bullying cases, the quality of the plaintiff’s claim is declining. This conclusion is supported by regression analysis that indicates that it is accurate to over 99% certainty. That is, plaintiffs are bringing claims that are less and less likely to succeed on the merits if tried. As no data (just suppositions) was provided by Vogel and Schachter, it is difficult to claim they are wrong in their analysis. Of course, Rule 11 and the other potential sanctions do exist. With this study, we now know that no Rule 11 sanctions were ever applied to any trademark bullying case. Further, no data is relied on by the various trade organizations (simply outdated dicta from now ancient cases). The data here is the first attempt to prove or disproved trademark bullying. It is provided in the spirit of an academic inquiry. To me, the data here supports the idea that trademark bullying deserves the scrutiny that would be brought to bear if Congress elected to get involved. Clearly, the existing “safeguards” have been proven here to be anything but safe. If non-practicing entities is a matter worth the time and energy of States and Congress, then trademark bullying is as well as both involve entities which upset natural markets for and with intellectual property. As such, Congress should act. Congress could go a long way in stopping trademark bullying if it amended Section 1117 of the Lanham to make it explicit that trademark infringement defendants as well as plaintiffs should be awarded its attorney’s fees when the opposing party acts egregiously. Attorney’s fees should be liberally awarded in ca","PeriodicalId":40000,"journal":{"name":"Journal of Intellectual Property","volume":null,"pages":null},"PeriodicalIF":0.0,"publicationDate":"2013-10-15","publicationTypes":"Journal Article","fieldsOfStudy":null,"isOpenAccess":false,"openAccessPdf":"","citationCount":null,"resultStr":null,"platform":"Semanticscholar","paperid":"89677325","PeriodicalName":null,"FirstCategoryId":null,"ListUrlMain":null,"RegionNum":0,"RegionCategory":"","ArticlePicture":[],"TitleCN":null,"AbstractTextCN":null,"PMCID":"","EPubDate":null,"PubModel":null,"JCR":null,"JCRName":null,"Score":null,"Total":0}
Significant recent judicial and legislative developments have changed the way litigants and counsel need to plan for and litigate inequitable conduct allegations. Exergen and Therasense have heightened the standards for pleading and proving inequitable conduct, respectively, and Congress has expanded the patentee’s post-grant options for preempting or defeating inequitable conduct challenges. Without a doubt, the inequitable conduct litigation landscape has changed. Careful, thorough consideration of all of these developments and their implications is a must for any litigant or counsel faced with or considering asserting a charge of inequitable conduct.This paper discusses these significant recent inequitable conduct-related developments and their combined impact on litigating the defense. It reviews the new judicial standards for pleading and proving inequitable conduct and illustrates their application in recent Federal Circuit and district court decisions. It identifies several areas of debate among the district courts regarding the impact of Therasense and Exergen on pleading inequitable conduct, and summarizes lessons for litigators from recent cases. It discusses the legislature’s recent contribution to the inequitable conduct landscape: the supplemental examination proceeding created by the Leahy-Smith America Invents Act (“AIA”), and considers the options, post-Therasense and the AIA, for patent owners faced with a potential inequitable conduct challenge.
{"title":"Litigating Inequitable Conduct after Therasense, Exergen, and the AIA: Lessons for Litigants, Options for Owners","authors":"Lisa A. Dolak","doi":"10.2139/SSRN.2307574","DOIUrl":"https://doi.org/10.2139/SSRN.2307574","url":null,"abstract":"Significant recent judicial and legislative developments have changed the way litigants and counsel need to plan for and litigate inequitable conduct allegations. Exergen and Therasense have heightened the standards for pleading and proving inequitable conduct, respectively, and Congress has expanded the patentee’s post-grant options for preempting or defeating inequitable conduct challenges. Without a doubt, the inequitable conduct litigation landscape has changed. Careful, thorough consideration of all of these developments and their implications is a must for any litigant or counsel faced with or considering asserting a charge of inequitable conduct.This paper discusses these significant recent inequitable conduct-related developments and their combined impact on litigating the defense. It reviews the new judicial standards for pleading and proving inequitable conduct and illustrates their application in recent Federal Circuit and district court decisions. It identifies several areas of debate among the district courts regarding the impact of Therasense and Exergen on pleading inequitable conduct, and summarizes lessons for litigators from recent cases. It discusses the legislature’s recent contribution to the inequitable conduct landscape: the supplemental examination proceeding created by the Leahy-Smith America Invents Act (“AIA”), and considers the options, post-Therasense and the AIA, for patent owners faced with a potential inequitable conduct challenge.","PeriodicalId":40000,"journal":{"name":"Journal of Intellectual Property","volume":null,"pages":null},"PeriodicalIF":0.0,"publicationDate":"2013-08-08","publicationTypes":"Journal Article","fieldsOfStudy":null,"isOpenAccess":false,"openAccessPdf":"","citationCount":null,"resultStr":null,"platform":"Semanticscholar","paperid":"87405770","PeriodicalName":null,"FirstCategoryId":null,"ListUrlMain":null,"RegionNum":0,"RegionCategory":"","ArticlePicture":[],"TitleCN":null,"AbstractTextCN":null,"PMCID":"","EPubDate":null,"PubModel":null,"JCR":null,"JCRName":null,"Score":null,"Total":0}
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