Offensive Venue: The Curious Use of Declaratory Judgment to Forum Shop in Patent Litigation

Forum shopping is widespread in patent litigation because there are clear differences in outcomes among the various federal districts. An accused patent infringer that is sued in a particularly disadvantageous forum can file a motion to transfer to a more convenient forum, but the general consensus is that such motions are difficult to win. Accordingly, accused infringers often file declaratory judgment actions to forum shop. Such actions allow accused infringers to preemptively sue the patent owner in the accused infringer’s preferred forum, and are considered by many to be the best way for accused infringers to play the forum shopping game. Indeed, accused infringers file substantial numbers of declaratory judgment actions every year. This Article presents new evidence confirming that declaratory judgment actions are often filed to forum shop. But the data also demonstrate that declaratory judgment actions are 2.4 times more likely to be transferred than nondeclaratory judgment cases. This suggests that declaratory judgment plaintiffs are often unable to hold onto their chosen forum. Indiscriminate use of declaratory judgment actions to forum shop thus increases unpredictability and wasteful litigation, thereby impeding innovation. The new data presented herein regarding forum shopping by patent litigants give a richer context to the debate over forum shopping in general and serves as a basis for further investigation into its effects on judicial norms and efficiency

Assigning the Burden of Proof in Contractual Jury Waiver Challenges: How Valuable Is Your Right to a Jury Trial?

Employers have long used arbitration agreements to manage the risk associated with the resolution of employment disputes. But as dissatisfaction with arbitration increases, employers are fundamentally changing their approach to dispute resolution by incorporating jury waivers into their employment agreements as an alternative. These jury waivers are an attractive compromise between arbitration and jury trials because they offer the full procedural protections of the public judicial system at a considerably lower cost than a comparable jury trial. Some courts have invalidated such jury waivers, however, making the enforcement of such waivers uncertain. In order for pre-dispute jury waivers to be used effectively, this uncertainty must be addressed and resolved. In this Article, Chester Chuang surveys the law surrounding the use of pre-dispute jury waivers in employment agreements and traces the inconsistent judicial treatment of such waivers to a disagreement over which party bears the burden of proof when such waivers are challenged in court. Chuang argues that strong public policy considerations support placing the burden of proof on the party seeking to enforce the waiver. Chuang concludes that resolving the burden of proof question in this way will allow such waivers to be used to mitigate risk when appropriate

Is There A Doctor in the House? Using Failure-to-Warn Liability to Enhance the Safety of Online Prescribing

This Note argues that manufacturers can satisfy the duty to warn that is owed to consumers who purchase prescription medications from Internet prescribing sites by contractually obligating the websites to implement comprehensive patient information systems. Analyzing these systems under a traditional failure-to-warn liability framework will allow reputable sites to mature into reliable sources of prescription medications for consumers, while cutting off the supply of drugs to fraudulent sites without resorting to increased government regulation. Ideally, this framework wiIl force manufacturers to weigh patients\u27 health and safety with the commercial and practical advantages of Internet prescribing. Part I of this Note chronicles the rise of Internet prescribing and the increased access to prescription medications it offers the everyday consumer. Part II outlines the learned intermediary doctrine and discusses why it is inapplicable to current online prescribing practices. This Part also describes the unique difficulties pharmaceutical manufacturers face when trying to implement a direct warning system, but concludes by arguing that these difficulties should not dissuade manufacturers from exploring online prescribing. Part III presents a solution for conveying adequate patient warnings directly to the patient, taking into account the unique challenges that Internet prescribing presents. This Part proposes that the application of a traditional failure-to-warn analysis will enable manufacturers to use the Internet to create comprehensive patient information systems that satisfy manufacturers\u27 duty to warn in an online prescribing situation. There are two ways this might be accomplished: first, by enhancing the online physician-patient relationship so that it falls within the confines of the learned intermediary doctrine, or second, by implementing Individualized Patient Reports (IPRs) without increasing the physician\u27s role in the transaction, thus spurning the protection of the learned intermediary doctrine completely. Finally, this Part proposes that manufacturers, and not the government, must require web sites to implement either of these systems in order to ensure the success of these patient safety measures

The IP Law Book Review, Vol. 1 #2, February 2011

Reviews and Reviewers: THE PUBLIC DOMAIN: ENCLOSING THE COMMONS OF THE MIND by James Boyle. Reviewed by Julie Cromer Young, Thomas Jefferson School of Law GENE PATENTS AND COLLABORATIVE LICENSING MODELS: PATENT POOLS, CLEARINGHOUSES, OPEN SOURCE MODELS AND LIABILITY REGIMES edited by Geertrui Van Overwalle. Reviewed by J. Jonas Anderson, Microsoft Research Fellow Berkeley Center for Law & Technology VIRTUAL JUSTICE: THE NEW LAWS OF ONLINE WORLDS, by Greg Lastowka. Reviewed by William K. Ford, The John Marshall Law School THE SOUL OF CREATIVITY: FORGING A MORAL RIGHTS LAW FOR THE UNITED STATES, by Roberta Rosenthal Kwall. Reviewed by Shubha Ghosh, University of Wisconsin Law School INHERENT VICE: BOOTLEG HISTORIES OF VIDEOTAPE AND COPYRIGHT by Lucas Hilderbrand. Reviewed by Marc H. Greenberg, Golden Gate University School of Law BEYOND INTELLECTUAL PROPERTY: MATCHING INFORMATION PROTECTION TO INNOVATION by William Kingston. Reviewed by Kristen Osenga, University of Richmond School of Law PATENT ETHICS: LITIGATION, by David Hricik. Reviewed by David L. Schwartz, Chicago-Kent College of La

The IP Law Book Review, Vol. 2 #2, February 2012

Reviews and Reviewers: JUSTIFYING INTELLECTUAL PROPERTY, by Robert P. Merges. Reviewed by Amy L. Landers, Pacific McGeorge School of Law. TRADEMARK AND COPYRIGHT LITIGATION: FORMS AND ANALYSIS–VOLUME I: CEASE-AND-DESIST DEMANDS THROUGH ELECTRONIC DISCOVERY, by Mark V.B. Partridge and Phillip Barengolts. Reviewed by Timothy Cahn, Kilpatrick Townsend LLP. INTELLECTUAL PROPERTY, HUMAN RIGHTS AND DEVELOPMENT: THE ROLE OF NGOS AND SOCIAL MOVEMENTS, by Duncan Matthews. Reviewed by Margaret Chon, Seattle University School of Law. PATENTS AND TECHNOLOGICAL PROGRESS IN A GLOBALIZED WORLD: LIBER AMICORUM JOSEPH STRAUS, edited by Wolrad Prinz zu Waldeck und Pyrmont, Martin J. Adelman, Robert Brauneis, Josef Drexl and Ralph Nack. Reviewed by Timo Minssen, Centre for Information and Innovation Law, University of Copenhagen. PROPERTY OUTLAWS: HOW SQUATTERS, PIRATES, AND PROTESTERS IMPROVE THE LAW OF OWNERSHIP, by Eduardo Moisés Peñalver and Sonia K. Katyal. Reviewed by Ann Bartow, Pace Law School

The IP Law Book Review, vol. 2 #1, September 2011

Reviews and Reviewers: MAKING AND UNMAKING INTELLECTUAL PROPERTY: CREATIVE PRODUCTION IN LEGAL AND CULTURAL PERSPECTIVE edited by Mario Biagioli, Peter Jaszi, and Martha Woodmansee. Reviewed by Rebecca Tushnet, Georgetown University Law School COPYRIGHT LAW AND THE PUBLIC INTEREST IN THE NINETEENTH CENTURY by Isabella Alexander. Reviewed by H. Tomas Gomez-Arostegui, Lewis & Clark Law School THE GLOBAL GOVERNANCE OF KNOWLEDGE: PATENT OFFICES AND THEIR CLIENTS by Peter Drahos. Reviewed by Margo A. Bagley, University of Virginia School of Law TRADEMARK LAW AND THEORY: A HANDBOOK OF CONTEMPORARY RESEARCH edited by Graeme B. Dinwoodie and Mark D. Janis. Reviewed by Leah Chan Grinvald, Saint Louis University School of Law FIGURES OF INVENTION: A HISTORY OF MODERN PATENT LAW by Alain Pottage and Brad Sherman. Reviewed by Oren Bracha, The University of Texas School of La

The Pros and Cons of Gene Patents

The debate over human gene patents was recently reignited by New York federal Judge Robert Sweet, when he found isolated human gene sequences unpatentable in Association for Molecular Pathology v. U.S. Patent and Trademark Office , 702 F.Supp.2d 181 (S.D.N.Y. 2010). An appeal of the decision is pending, and in October, the U.S. Department of Justice filed an amicus curiae brief in the case arguing that such gene sequences should not be patentable, contradicting long-standing practices of the United States Patent and Trademark Office. Given the potent impact of a possible gene patent ban on gene-based medical therapies and the biotechnology industry at large, the arguments for and against patenting human genes must be carefully considered. Unfortunately, much of the current legal debate has centered on technical aspects of patent law doctrine and not the significant policy arguments that also need to be resolved. It is therefore important to evaluate the issue in a fuller context, taking into account health care access, scientific research and ethical concerns