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

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

The Hidden Transactional Wisdom of Media Discrimination in Pre-AWCPA Copyright

Media neutrality in copyright’s subject matter means that works of authorship are protected against copying, or not, regardless of the tangible medium in which they are fixed. For example, the same features of a sculptural work are protected regardless of whether they are fixed in a statue or a photograph of a statue. Media neutrality in subject matter is a fundamental and largely unquestioned copyright principle with a firm policy basis under copyright’s dominant incentive-to-create theory. Media discrimination in subject matter undermines in arbitrary ways authors’ ability to recoup their creativity costs over the sale of multiple copies. This Article identifies a situation in which departure from the copyright principle of media neutrality in subject matter is unexpectedly good policy. The rarely discussed transactional theory of copyright holds that copyright’s goal is to facilitate the market transactions through which authors refine works and commercialize them into the copies that consumers want. When transactional theory, rather than incentive-to-create theory, is copyright’s primary justification, maintaining protection for the medium in which authors develop works and eliminating it for the medium in which the public consumes them preserves copyright’s full benefits while reducing its access costs. To illustrate the argument, this Article looks to architecture as a case study. Copyright for building designs created before the enactment of the Architectural Works Copyright Protection Act (AWCPA) in 1990 employs media discrimination: it protects building designs when fixed in drawings but not when fixed in buildings. As a historical matter, the courts crafted this unusual rule of protected subject matter to accommodate concerns about copyright protection for the functionality of buildings. Yet, for architects who employ the custom design process at the core of the architectural profession, it has a sound transactional justification as well, and it would be good policy even if buildings were not functional artifacts. Copyright’s principal role in custom architectural design is to facilitate the architect–client transaction in which architects create building designs in return for fees that cover design costs. Pre-AWCPA copyright can perform this role just as well as full media-neutral copyright because it protects building designs fixed in architecture’s development medium (drawings). However, it reduces copyright’s access costs because competitor architects can borrow freely from building designs fixed in the consumption medium (buildings)

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