Copyright (c) 2009 All rights reserved. http://works.bepress.com/timothy_holbrook Recent documents in Timothy R. Holbrook en-us Mon, 05 Jan 2009 13:53:18 PST 3600 http://works.bepress.com/timothy_holbrook/25 http://works.bepress.com/timothy_holbrook/25 Fri, 11 Apr 2008 06:19:15 PDT Timothy R. Holbrook Patent Law http://works.bepress.com/timothy_holbrook/24 http://works.bepress.com/timothy_holbrook/24 Fri, 02 Nov 2007 15:22:09 PDT Timothy R. Holbrook http://works.bepress.com/timothy_holbrook/23 http://works.bepress.com/timothy_holbrook/23 Fri, 02 Nov 2007 15:17:40 PDT Timothy R. Holbrook Patent Law http://works.bepress.com/timothy_holbrook/22 http://works.bepress.com/timothy_holbrook/22 Fri, 02 Nov 2007 15:11:26 PDT Globalization has created increasing pressure on, and erosion of, traditional territorial limits on intellectual property laws. This trend was first seen in trademark and copyright law, but recent decisions have shown the change in patent law as well. Indeed, the Supreme Court is set to review the extraterritorial scope of U.S. law in the case AT&T v. Microsoft. The Federal Circuit's approach to these issues, however, has been inconsistent and lacks a consistent theoretical underpinning. In this paper, I reject both a strict territorial and a broad, effects-based approach to the extraterritorial application of U.S. patent law. Instead, I articulate a balanced approach that would consider not only whether the patent would be infringed under U.S. law but also whether the acts would constitute infringement in the relevant foreign countries. This balanced approach would require courts to transparently address potential conflicts of law and comity concerns, which is currently absent in the Federal Circuit's approach to these issues. The method presented in the Article is a step-by-step process that provides courts with a structured methodology to address and weigh these difficult questions. Timothy R. Holbrook Intellectual Property Law Patent Law http://works.bepress.com/timothy_holbrook/18 http://works.bepress.com/timothy_holbrook/18 Tue, 27 Mar 2007 10:23:47 PDT In KSR International v. Teleflex, Inc., the U.S. Supreme Court is currently considering the appropriate standard for determining whether the invention claimed in a patent is obvious. Particularly, the Court is evaluating the Federal Circuit's requirement for a teaching, suggetion, or motivation to combine the prior art. This requirement stems from the Federal Circuit's attempts to create formalistic, bright-line rules in patent law. At oral argument, the Supreme Court was quite critical of this standard. The Court is faced, however, with answering the question of what is the appropriate standard. A review of recent Supreme Court precedent provides an answer - the use of rebuttable presumptions. In other areas where the Supreme Court has expressed concern with balancing certainty with fairness, the Court has eschewed the Federal Circuit's formalism and has offered presumptions instead. This trend can be seen in both Warner-Jenkinson and Festo. In the obviousness context, a presumption-based approach would serve to enhance certainty in the area of obviousness. The presence of a motivation to combine, along with the presence of each claim limitation in the prior art, would create a presumption of obviousness. This presumption could be rebutted by a number of factors, including relevant secondary considerations that suggest the patent is non-obvious. Similarly, if there is a teaching away in the prior art, in other words some reason not to make the combination, then there should be presumption that the claimed invention is not obvious. This presumption could also be rebutted by the use of secondary considerations. In the absence of either a motivation to combine or a teaching away, no presumption arises and the courts would resort to the familiar Graham framework. Timothy R. Holbrook Intellectual Property Law http://works.bepress.com/timothy_holbrook/17 http://works.bepress.com/timothy_holbrook/17 Tue, 27 Feb 2007 13:12:44 PST Timothy R. Holbrook Intellectual Property Law http://works.bepress.com/timothy_holbrook/16 http://works.bepress.com/timothy_holbrook/16 Tue, 27 Feb 2007 13:10:25 PST Timothy R. Holbrook Patent Law http://works.bepress.com/timothy_holbrook/15 http://works.bepress.com/timothy_holbrook/15 Tue, 27 Feb 2007 13:08:01 PST Section 102(b) of Title 35 precludes an inventor from receiving a patent if the invention was on sale in the United States more than one year prior to filing a patent application. The statutory structure of the on-sale bar has left the term "invention" ill-defined, leading to considerable uncertainty in the courts. Hoping to add predictability to this unsettled area of law, the Supreme Court in Pfaff v. Wells Electronics, Inc. articulated a new standard that requires an invention be "ready for patenting" in order for the bar to apply.This new test, as applied by the lower courts, has effected no real change in the law as district courts are diverging significantly from the Supreme Court's test and holding that the offer for sale of the mere conception of the invention is sufficient for the bar to apply. The courts also have conflated the two versions of the on-sale bar: the anticipatory version, where what is offered for sale is precisely the same as what is later claimed in the patent, and the obviousness version, where what is offered for sale varies from what is later claimed, but that variation would be obvious to one skilled in the relevant technological art. This approach further undermines predictability and the other policies that underlie the on-sale bar.This article posits a two prong approach to the on-sale bar. First, for the anticipatory version, the courts should expressly incorporate the law of enablement under 35 U.S.C. § 112 and of utility under 35 U.S.C. § 101 into the on-sale bar, thus providing a well-known body of law to promote predictability. Procedurally, the courts should establish a hierarchy of evidence, similar to the approach used in claim construction, that considers certain, more readily available information as the most pertinent while eschewing the use of expert testimony and other litigation-based evidence. Second, for the obviousness version of the on-sale bar, there should not be a "ready for patenting" test. Instead, whatever is offered for sale should be considered within the public knowledge and useable to determine whether the inventor has claimed something more than a simple variation of what she offered for sale. This approach would better serve the policies underlying the on-sale bar and comports more readily with the concepts of "prior art" in patent law without impeding the predictability sought in this area. Timothy R. Holbrook Intellectual Property Law http://works.bepress.com/timothy_holbrook/14 http://works.bepress.com/timothy_holbrook/14 Tue, 27 Feb 2007 13:06:37 PST Congress created the United States Court of Appeals for the Federal Circuit in 1982 to bring greater uniformity to the country's patent laws. Drawing on this purpose, the Federal Circuit has expanded this call for uniformity by also emphasizing the need for predictability and certainty in the law. The court thus has articulated fairly formalistic approaches to a number of issues. However, the Federal Circuit increasingly has articulated rules of law to promote certainty, at the expense of fairness. The root of this bias likely derives from the court's Congressional mandate to promote uniformity and certainty in patent law. This rules-based approach, however, is not without critics. This Essay posits that not all of the blame should fall on the Federal Circuit's shoulders. The Supreme Court has expressly encouraged this approach in its recent patent jurisprudence. This essay will first identify the various ways in which the Federal Circuit has opted for the "certainty" side of the Fair Protection-Certainty Conundrum. Next, the Essay surveys recent Supreme Court cases which show that the Supreme Court has enabled this shift, making the Court complicit in the Federal Circuit's formalism agenda. Timothy R. Holbrook Intellectual Property Law http://works.bepress.com/timothy_holbrook/13 http://works.bepress.com/timothy_holbrook/13 Tue, 27 Feb 2007 12:55:15 PST Timothy R. Holbrook Intellectual Property Law