Recalibrating Patent Venue

For most of patent law’s 200-plus year history, patent holders could sue only in the district inhabited by the defendant. In 1990, the United States Court of Appeals for the Federal Circuit decided that the scope of permissible venue extended to all districts with personal jurisdiction over the defendant. In recent years, patentees have flocked to certain districts, fueling the widespread perception that patentees, particularly those that do not practice their patents, called non-practicing entities (“NPEs”), are abusing forum. Responsive to these concerns, Congress and the courts have moved to reinstate a more restrictive rule, culminating in the Supreme Court’s 2017 TC Heartland LLC v. Kraft Foods Group Brands LLC decision to limit venue to locations of the defendant. Yet, incredibly, to date there has been no measure of the overall pervasiveness of forum shopping and whether TC Heartland or any other venue reform will change this phenomenon. We address this gap by estimating the differential impacts of reform on filing patterns. We find, based on an analysis of approximately 1500 patent and non-patent cases filed in 2015 that about 86% of patent cases—a striking share—were brought outside of the defendant’s home district. This practice is not limited to non-practicing entities, however; corporations, universities, and individuals all filed outside of defendant districts. Things would have been different if venue were reformed, but much depends on how reform is implemented. If the Supreme Court’s decision to restrict venue to where the defendant resides or has an established place of business were already in effect, an estimated 58% of 2015 cases would have had to have been filed in a different venue. If the Congressional proposal to change venue to include home districts with research or manufacturing connections to the case had been in effect, about half the NPE cases in our sample would have needed to be refiled in another district, but only 14% of the operating company cases would. Cases would have become less concentrated in a single district, with the top district, Delaware, capturing 20–24% of cases, but the top three districts, the District of Delaware, the Eastern District of Texas, and the Northern District of California, would still have the majority of cases. Regardless of the reform, we expect smaller defendants to get more from venue relief than larger defendants because of their relatively smaller footprints. Among NPEs, universities, individuals, and small companies should be impacted to a lesser extent than patent assertion entities (“PAEs”), considerably so if the VENUE Act were enacted

Functionality and Graphical User Interface Design Patents

Modern designers of graphical user interfaces, or GUIs, have obtained design patent protection for creative computer software displays, a realm previously limited to copyright. The difference in protection is important because design patents do not traditionally allow the same defenses - life fair use - associated with copyright. Apple\u27s nearly billion dollar judgment against Samsung, which included such a GUI patent, brought this issue to the forefront. This article answers three emerging questions: 1. Aren\u27t GUIs something that should be protected by copyright only? Why should there be a patent? The answer is relatively simple: the law has, since 1870, contemplated dual protection. The article traces the history to explain why the law could have evolved differently, but simply did not. 2. Display screens change, both before and after sale. How can someone patent an ephemeral screen design? It also turns out that ephemeral designs have been protected for some time. Even so, the article proposes some limitations on the protection of GUIs that should address the special nature of GUI design patents. 3. There are many differences between Apple\u27s patent and Samsung\u27s product. How can Apple own the idea of square icons in a grid with a dock bar at the bottom: This last question is the most intractable: determining when a design in infringing, and the role that functionality should play in that consideration. The bulk of this article is dedicated to answering this question. To answer the third question, the article draws on lessons from prior copyright disputes about GUIs. It first suggests that courts must act as gatekeepers, rather than allowing juries to determine which elements to disregard as functional. It then develops economic factors that can help the court determine whether a design element is functional, and whether to allow reuse by a competing program

A Generation of Patent Litigation

This Article builds on the very best parts of current cross-sectional work by adding a longitudinal component that finds every case that asserted a set of patents and then separately tracing the outcome of every patent asserted in each of those cases. Part II discusses the debate about patent troll litigation. It focuses on how other studies have measured patent quality through patent litigation data. Part III discusses this study’s methodology: the collection of data about highly litigious NPEs and a control group of randomly selected nonNPEs. It describes how the cases were selected and the data collected in different phases of the study. This includes collection of previously untapped data: reexamination outcomes. Part IV presents the data in a variety of formats, and follows each subpart with a discussion of potential policy implications associated with the data. Subpart IV.A shows the growth in case complexity, including defendant counts, transfers and consolidations, and selection of district court venue. This subpart includes a linear regression showing the effect of NPEs on case duration. Subpart IV.B shows how much more often the NPEs settled and all of the different ways that cases ended. For example, NonNPEs ended a large portion of their cases with consent judgments, though the NPEs used consent judgments as well. Subpart IV.C presents data about invalidity in a number of ways: in terms of adjudicated patents, all patents, and cases. This subpart presents a novel regression estimating the likelihood that an asserted patent will be invalidated and finds that NPE status is not among the factors. Subpart IV.D examines infringement findings and shows that the primary concern with NPEs may be noninfringement rather than invalidity. Both subparts C and D show that decisions on the merits of cases are so rare that it is difficult to base policies on them. This Article concludes with some thoughts about how the results might guide policy

America’s First Patents

Courts and commentators vigorously debate early American patent history because of a spotty documentary record. To fill these gaps, scholars have examined the adoption of the Intellectual Property Clause of the Constitution, correspondence, dictionaries, and British and colonial case law. But there is one largely ignored body of information—the content of early patents themselves. While many debate what the founders thought, no one asks what early inventors thought—and those thoughts are telling. This Article is the first comprehensive examination of how early inventors and their patents should inform our current thoughts about the patent system. To better understand our early patent history, we read every available patent issued prior to the institution of the ―modern‖ examination system in 1836, totaling nearly 2,500 handwritten patents. For good measure, we also read the first 1,200 patents issued after 1836, the last of which issued in the middle of 1839

Why Do We Have Trade Secrets?

Trade secrets are arguably the most important and most litigated form of intellectual property. This article explores the history of trade secret law in the United States and examines why it is that every state has opted to protect secret information, even though such protection is antithetical to the policies of access associated with patent law and non-protection of facts associated with copyright law

Functionality and Graphical User Interface Design Patents

Modern designers of graphical user interfaces, or GUIs, have obtained design patent protection for creative computer software displays, a realm previously limited to copyright. The difference in protection is important because design patents do not traditionally allow the same defenses - life fair use - associated with copyright. Apple\u27s nearly billion dollar judgment against Samsung, which included such a GUI patent, brought this issue to the forefront. This article answers three emerging questions: 1. Aren\u27t GUIs something that should be protected by copyright only? Why should there be a patent? The answer is relatively simple: the law has, since 1870, contemplated dual protection. The article traces the history to explain why the law could have evolved differently, but simply did not. 2. Display screens change, both before and after sale. How can someone patent an ephemeral screen design? It also turns out that ephemeral designs have been protected for some time. Even so, the article proposes some limitations on the protection of GUIs that should address the special nature of GUI design patents. 3. There are many differences between Apple\u27s patent and Samsung\u27s product. How can Apple own the idea of square icons in a grid with a dock bar at the bottom: This last question is the most intractable: determining when a design in infringing, and the role that functionality should play in that consideration. The bulk of this article is dedicated to answering this question. To answer the third question, the article draws on lessons from prior copyright disputes about GUIs. It first suggests that courts must act as gatekeepers, rather than allowing juries to determine which elements to disregard as functional. It then develops economic factors that can help the court determine whether a design element is functional, and whether to allow reuse by a competing program