Helping a Lawyer to Understand What it Means to Think Like an Architect

Professor Radin unquestionably influenced legal academia through her ideas, arguments, and scholarship. With that said, my tribute is decidedly personal. To me, Professor Radin was the mentor and role model that I sorely needed when I was figuring out what being a legal academic could mean for me

Claims to Information Qua Information and a Structural Theory of Section 101

In this article, I start from the premises that claims to inventive information qua information are not and should not be patentable, and I pursue two lines of inquiry. First, I argue that a structural theory of Section l0l of the Patent Act provides a policy-driven, conceptually coherent and statutorily justified interpretation that explains why claims to inventive information qua information should be excluded from the realm of patentable subject matter. In brief, patentable subject matter must be restricted in this manner to preserve the duality of claiming and disclosing upon which the entire patent regime is constructed. Second, I raise the line-drawing problem that I believe to be the most significant obstacle to an administrable implementation of a structural theory of Section 101. The breadth or polyvalency of the concept of information suggests that many things that we currently treat as patentable, if not all of them, are also information. We must develop a more refined taxonomy of the different types of informationality that material things possess in order to sort the patentable claims to information from the unpatentable ones. Because the immateriality of the things described by a claim is not an acceptable proxy for their informationality, the Federal Circuit\u27s recent opinion in In re Nuijten that addresses intangibility as a restriction on patentable subject matter is not a useful starting point for this project

Helping a Lawyer to Understand What it Means to Think Like an Architect

Professor Radin unquestionably influenced legal academia through her ideas, arguments, and scholarship. With that said, my tribute is decidedly personal. To me, Professor Radin was the mentor and role model that I sorely needed when I was figuring out what being a legal academic could mean for me

Patent Law\u27s Functionality Malfunction and the Problem of Overbroad, Functional Software Patents

Contemporary software patents are problematic because they are often overbroad. This Article offers a novel explanation of the root cause of this overbreadth. Patent law suffers from a functionality malfunction: the conventional scope-curtailing doctrines of patent law break down and lose their ability to rein in overbroad claims whenever they are brought to bear on technologies, like software, in which inventions are purely functional entities. In addition to identifying the functionality malfunction in the software arts, this Article evaluates the merits of the most promising way of fixing it. Courts can identify algorithms as the metaphorical structure of software inventions and limit claim scope to particular algorithms for achieving a claimed function. However, framing algorithms as the metaphorical structure of software inventions cannot put the scope of software patents on par with the scope of patents in other arts. Most importantly, the recursive nature of algorithms and Gottschalk v. Benson create to-date unappreciated problems

The Reach of Literal Claim Scope into After-Arising Technology: On Thing Construction and the Meaning of Meaning

Broadly speaking, courts and commentators have offered two theories to explain the relationship between the literal scope of a patent claim and after-arising technology (AAT), i.e. technology that is not discovered until after a claim has been filed. The fixation theory asserts that claim scope is and/or should be fixed on the date a claim is filed and that this fixation makes it impossible for the claim to encompass AA T because a claim must grow in some sense after the filing date in order to encompass AA T. In stark contrast, the growth theory argues that literal claim scope does and/or should encompass AAT on a routine basis and that literal claim scope therefore cannot be fixed on the date of filing. Finding neither of these theories satisfying, either descriptively or normatively, this Article rejects them. More specifically, it rejects a logical premise that both theories share, namely that simultaneous fixation of and growth in literal claim scope is a logical impossibility. The concept of the literal scope of a claim is ambiguous in several ways. Courts can--and routinely do-fix one concept on the date of filing to achieve certain goals, such as furthering public notice, while at the same time allowing a distinct concept to grow and absorb AA T to achieve other goals, such as providing sufficient incentives. Every time a court addresses whether AAT falls within the literal scope of a valid patent claim, it necessarily constructs the things claimed by a patent and defines the nature of the meaning that permits the claiming language to describe those things. Literal claim scope can remain fixed and yet literal claim scope can grow to encompass AA T at the same time (in different senses of the concept of literal claim scope, of course) provided that a court makes tactical decisions in the course of constructing things and defining meaning

Patent Law\u27s Authorship Screen

Intellectual property regimes frequently employ boundary screens. Boundary screens protect the different balances of competition and protection that Congress has struck in the different regimes by preventing the goods whose protectability should be determined by one regime from infiltrating into and receiving protection under another regime. Prior scholarship on boundary screens offers in-depth analyses of the functionality screens in nonpatent intellectual property that avoid upsetting patent law\u27s competition-protection balance for functional innovation. This Article turns the table, asking a previously unasked question about how pa- tent\u27s authorship screen-that is, its boundary screen that prevents infiltration by the authorial innovation that is the proper domain of copyright-does and should work. Shortcomings in patent\u27s authorship screen upset copyright\u27s competition-protection balance, allowing patents to function as abnormally thick backdoor copyrights, just as shortcomings in copyright\u27s functionality screen allow copyrights to function as abnormally long and easy-to- obtain backdoor patents. In addition to its normative assessment of the authorship screen\u27s importance as a barrier to backdoor copyrights and its descriptive analysis of the statutorily diffuse set of patent doctrines that collectively enforce the authorship screen, this Article presents case studies focusing on architectural innovation, an unstudied zone of overlap on the copyright-patent boundary that illustrates the authorship screen in action

Semiotics 101: Taking the Printed Matter Doctrine Seriously

The printed matter doctrine is a branch of the section 101 doctrine of patent eligibility that, among other things, prevents the patenting of technical texts and diagrams. The contemporary formulation of the doctrine is highly problematic. It borders on incoherency in many of its applications, and it lacks any recognized grounding in the Patent Act. Yet, despite its shortcomings, courts have not abandoned the printed matter doctrine, likely because the core applications of the doctrine place limits on the reach of the patent regime that are widely viewed as both intuitively \u27correct and normatively desirable. Instead of abandoning the doctrine, courts have marginalized it. They have retained the substantive effects of the printed matter doctrine but avoided analyzing it whenever possible. This Article adopts a different approach: it takes the printed matter doctrine seriously. It reinterprets the printed matter doctrine as the sign doctrine, revealing both the conceptual coherence hidden in the doctrine\u27s historical applications and the doctrine\u27s as-of-yet unnoticed statutory grounding. The key to this reconceptualization is recognizing that the printed matter doctrine is in effect already based on semiotic principles. The printed matter doctrine purports to be about information, but it is actually about signs. It purports to curtail the patenting of worldly artifacts, but it actually curbs the reach ofpatent protection into mental representations in the human mind. To support these arguments, this Article offers a course in Semiotics 101 : a semiotics primer strategically targeted on the principles that prove to be relevant to the section 101 doctrine ofpatent eligibility. This Article also examines one unexpected consequence of taking the printed matter doctrine seriously and adopting a semiotic framework. It reconsiders the patentability of a class of software inventions which are defined here as computer models. As a matter of semiotic logic, the routine patentability of newly invented computer models under the contemporary patent eligibility doctrine cannot be reconciled with the categorical unpatentability of mechanical measuring devices with new labels under the printed matter doctrine