Rethinking Prosecution History Estoppel

Under the rule of prosecution history estoppel, patent applicants who amend their claims during the course of patent prosecution assume a significant risk: namely, the risk that a court will later construe the changes as concessions that should be read to limit patent scope. This risk is exacerbated by strong evidentiary presumptions under which courts are to assume, unless the patentee presents sufficient evidence otherwise, that every change triggers estoppel, and that the resulting estoppel forfeits everything except that which the revised language literally describes. The justification for these presumptions is that, implemented in this fashion, prosecution history estoppel makes patent scope more predictable. In this Article, I argue that the benefit comes at too high a price. Drawing on a large empirical study of patent prosecution, I show that, because of these evidentiary presumptions, estoppel is dangerously sensitive to differences between patent examiners and differences across technology categories. That is, estoppel treats similar applications in dissimilar ways, not because of differences on the merits, but instead because of the personal characteristics of the examiners involved and because of differences inherent to the types of technology at issue. A better rule, I argue, would minimize the significance of examiner and technology disparities by reversing the current evidentiary presumptions and thus recognizing estoppel only where there is clear evidence that the applicant and the examiner intended to forfeit a given scope of coverage

Irreparable Benefits

The conventional approach to preliminary relief focuses on irreparable harm but neglects entirely irreparable benefits. That is hard to understand. Errant irreversible harms are important because they distort incentives and have lasting distributional consequences. But the same is true of errant irreversible gains. When a preliminary injunction wrongly issues, then, there are actually two distinct errors to count: the irreparable harm wrongly imposed on the nonmoving party, and the irreparable benefit wrongly enjoyed by the moving party. Similarly, when a preliminary injunction is wrongly denied, there are again two errors, not one: the irreparable harm wrongly imposed on the moving party, and the irreparable benefit errantly accorded the nonmoving party. The conventional approach to preliminary relief mistakenly accounts for only half the problem

Holding Internet Service Providers Accountable

Internet service providers are today largely immune from liability for their role in the creation and propagation of worms, viruses, and other forms of malicious computer code. In this Essay, we question that state of affairs. Our purpose is not to weigh in on the details—for example, whether liability should sound in negligence or strict liability, or whether liability is in this instance best implemented by statute or via gradual common law development. Rather, our aim is to challenge the recent trend in the courts and Congress away from liability and toward complete immunity for Internet service providers. In our view, such immunity is difficult to defend on policy grounds, and sharply inconsistent with conventional tort law principles. Internet service providers control the gateway through which Internet pests enter and reenter the public computer system. They should therefore bear some responsibility for stopping these pests before they spread and for helping to identify individuals who originate malicious code in the first place

Strategic Disclosure in the Patent System

Patent applications are evaluated in light of the prior art. What this means is that patent examiners evaluate a claimed invention by comparing it with what in a rough sense corresponds to the set of ideas and inventions already known to the public. This is done for three reasons. First, the comparison helps to ensure that patents issue only in cases where an inventor has made a non-trivial contribution to the public’s store of knowledge. Second, it protects a possible reliance interest on the part of the public since, once an invention is widely known, members of the public might reasonably assume that the invention is free for all to use. And third, it pressures inventors to file their patent applications promptly lest some other inventor disclose a related invention or the applicant himself inadvertently let slip some fraction of his own research result. The prior art inquiry has a fourth policy implication, however, and while this one might not have been one of the motivating factors for establishing the inquiry in the first place, it is just as important when it comes to designing and interpreting sensible prior art rules. That additional wrinkle is simply this: the fact that patent applications are evaluated in light of the prior art gives firms a strategic incentive to create prior art. A firm can publish a journal article or engage in a public demonstration and in that way affect both a rival’s ability to patent a related invention and the rival\u27s incentive to do so. Perhaps surprisingly, this can make the disclosing firm better off even though, by revealing information, the firm is likely helping its rival and, worse, narrowing or even fully preempting the very patent it seeks. In this Article, then, we explain the incentive for strategic disclosure. We show that a firm trailing in a given patent race has an incentive to disclose information in the hopes of preempting a rival\u27s patent, but only if the laggard itself has little chance of leapfrogging the leader and winning the race. We show that a firm leading a patent race similarly has an incentive to disclose, this time in an effort to reduce its rival\u27s expected payoff and in that way encourage the rival to quit the race. We consider the possibility that private negotiations will displace public disclosures, for example with the laggard agreeing not to disclose and in exchange receiving from the ultimate patentee some form of favorable licensing agreement. Lastly, we consider the implications all this might have for the patent system overall