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Quarterly Journal 45-3

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Individual Articles (click the title to view the article):

Jonathan DeFosse & Jonathan Stroud
The America Invents Act of 2011 created, among other things, the popular inter partes reviews (IPRs) of issued patents.  The streamlined administrative proceedings let anyone other than the patent owner challenge an issued patent on anticipation or obviousness grounds using patents or printed publications. To date, thousands have been filed and hundreds of issued patent claims that never should have been granted have been cancelled by the Patent Trial and Appeal Board. Parties cannot raise indefiniteness challenges in IPRs.  But logically, claims can be too indefinite to construe, which can lead the Board to deny institution by effectively finding those claims indefinite under § 112(b). This has led some parties to push the issue, hoping to earn a ruling they can use in a district court to effectively prove early invalidity due to indefiniteness.  They do so at their own risk. 

By discussing the history of the definiteness requirement, analyzing all the Board’s indefiniteness decisions to date, and looking at how those panels who have denied institution due to indefiniteness have been treated in parallel district court litigation, this Article concludes that the strategy has backfired and made challenging seemingly dubious claims difficult when they present inherent indefiniteness issues. Recommending against the practice, the Article suggests ways to avoid their fate. 

Can the Government Be Sued Under the Defend Trade Secrets Act?  Members Only 
David S. Bloch
The Defend Trade Secrets Act finally created a Federal private cause of action for misappropriation of trade secrets.  But, it is silent on whether the Government itself can be sued for trade secret misappropriation.  This Article analyzes various approaches to enforcing trade secret rights against the Government.  It concludes that none of these existing approaches are entirely satisfactory, and thus that Congress should speak directly to the issue of whether the Government can be sued under the Defend Trade Secrets Act. 
Peter J. Ayers
The Federal Circuit was created in 1982 as a “generalized” appellate court in part to bring uniformity to patent law in an effort to curb rampant forum shopping among the regional circuits.  Congress vested the Federal Circuit with a diverse cross-section of other subject matters to ensure that the court did not become a “specialized” patent tribunal. That model worked remarkably well for three decades. Since the institution of the Leahy–Smith America Invents Act, however, the Federal Circuit’s docket has grown to consist of 75% patent cases between appeals from the USPTO and the district courts. The time has come to rebalance the Federal Circuit’s portfolio of cases to model those of its sister circuits.  Criminal and immigration cases make up a large percentage of the regional circuit’s caseload, but are completely absent from the Federal Circuit’s. Adding cases involving liberty to the Federal Circuit’s patent-heavy docket will help ensure that the court achieves Congress’s goal of a generalized court of appeals. This Article advocates that to achieve this end, the Federal Circuit should consider repealing the “Baldwin Rule,” and embracing technology to allow litigants and judges to appear remotely. 

Useful or Useless?: a Modern Perspective on the Protectability of Useful Articles in Domestic & Foreign Copyright Law​  Members Only 
Martin Tartre
As of today, most developed nations have conflicting standards for the protection of useful articles in copyright law due to design patent law.  Nations should allow for double protection of a useful article through copyright and design patent law by altering the remedies on the back end rather than through front-end legislation and judicial tests.  Despite potential legal redundancies, double protection for useful articles will eliminate some of the inconsistencies of foreign and domestic copyright principles.

What Is Obvious: Empirical Assessment of KSR’s Impact​ Members Only 
Brendan Seth O’Brien O’Shea
When KSR was decided, some claimed it would drastically change patent law while others argued it would have no effect at all. After reviewing empirical studies from before and after KSR, and completing an original empirical study of recent decisions by the Federal Circuit, it appears that neither position is accurate and that the ultimate result of KSR was a noticeable, but not dramatic, increase in the standard for obviousness in patent law. Generally, the Federal Circuit finds patents obvious about 10% more often than it did before. Further, appeals from the US Patent Office are more unlikely to succeed than before KSR.​  

Shana L. Olson
It is easy to believe that the functionality doctrine applied to design patent and trade dress law are the same, given the often-overlapping subject matter under each regime. To believe that the doctrines are the same, though, is legal error. Design patent rights evolved from a copyright law proposal, and the design patent functionality doctrine evolved as a court-made doctrine, with judges interpreting the statutory ornamentality requirement. Trade dress rights, on the other hand, evolved from state laws that promote competition and prevent confusion for the benefit of consumers, and its functionality doctrine seeks to prohibit any one party from controlling useful product features. This Article traces the evolution of the functionality doctrine as applied to trade dress and design patent law and demonstrates that the concept of functionality evolved from the radically different purposes and subject matter differences of each regime.​