Intellectual Property Litigation Research Articles

Collusive and Exclusive Settlements of Intellectual Property Litigation

During the past year, two important developments have emerged at the intersection of antitrust and intellectual property. The first is the proposed settlement in copyright litigation over the Google Books Search program, currently pending in the Southern District of New York, where the judge is considering, among other things, antitrust objections to the proposed settlement. The second is an antitrust challenge to the consummated settlement of patent litigation between two drug makers. The appeal of that case was recently decided by the Second Circuit. These cases renew some interesting questions about the relationship between intellectual property and antitrust. It is a major principle of intellectual property law that innovators should retain the fruits of their labor, i.e., the profits from innovation. However, antitrust defendants have tried to turn this principle into a complete defense from liability. The argument is that creation of a new product, especially one covered by a patent, may offer protection against antitrust liability. The Article argues that claims of a complete antitrust defense go too far. The key question in antitrust cases is whether the innovator has acted in a way that is likely to limit competition and harm consumers, relative to feasible alternatives. The Article explores the answers to this question in the context of the two cases above, reaching different conclusions for each case.

Lawyers Acting Badly, or Not? Misconduct in IP Litigation: Recent Examples and the Issues They Raise

Misconduct in civil litigation is not a new phenomenon. Nor is it confined to particular types of cases. Because of their characteristic intensity. however, intellectual property cases may be more likely to inspire bad behavior than other types of cases. The associated pressures seem, on occasion, to lead litigants and trial lawyers to succumb to the temptation to step outside the bounds of vigorous advocacy.Trial and appellate judges in a number of recent IP cases have wrestled with the issue of whether certain litigation tactics crossed the line between advocacy and abuse. For example, trial judges have recently rebuked counsel for:• trying to prejudice jurors against the plaintiff patentee by asking them if they had “a problem with a company that puts its headquarters offshore on a Caribbean island in order to avoid paying U.S. taxes”, in violation of an order in limine;• “prolong[ing] the proceedings unnecessarily (thus unduly imposing upon the jury’s time), [seeking] to mislead both the jury and the Court, and [flouting] the governing claim construction as set forth by the Federal Circuit”;• “persist[ing] in improperly trying to equate [the patentee’s] infringement case with the current national banking crisis implying that [the patentee] was a banker seeking a ‘bailout’” • knowingly pursuing a meritless lawsuit; and• contributing to a “massive discovery failure”.In several of these and other cases, however, sanctions awards have been subsequently reversed or modified, including because the conduct at issue was viewed as insufficiently egregious, as not unreasonable, or even as entirely within the rights of the sanctioned firm or attorney. These reversals raise a number of issues, including whether reviewing courts are too tolerant, how trial judges are affected by litigation misconduct, sanctions proceedings, and reversals, what motivates aggressive litigation behavior, and the collateral consequences of litigation misconduct. Whatever the outcome, these decisions serve as sobering examples of how even intelligent, experienced counsel can get caught up in the heat of the battle that is modern intellectual property litigation, and the potentially devastating consequences of that conduct.

Collusive and Exclusive Settlements of Intellectual Property Litigation

This essay considers antitrust objections to recent settlements of intellectual property litigation. Part I examines the Google Book Search settlement, which resolves a copyright dispute between Google and a class of authors and publishers, including the creators of so-called orphan works. It focuses on one term of the agreement, the license granted to Google to distribute orphan works. Settlement opponents have objected on the ground that rival distributors will find it difficult to secure similar licenses. Proponents, for their part, defend on the ground that “one is better than none” - that this joint venture raises welfare compared to a world without the settlement. Part I evaluates these arguments and explains why neither is a correct approach to the antitrust inquiry. The debate to this point has assumed that antitrust objections are relevant to the approval of this class-action settlement. As Part I also demonstrates, that premise is doubtful. Under the applicable law, the district judge must determine whether the settlement is “fair, reasonable, and adequate” for class members, not consumers. Even accepting arguendo that the settlement raises the cost of future entry, approval is appropriate if, as seems likely, this effect does no harm to authors and publishers. Part II considers patent suits in which a brand-name drug maker seeks to prevent entry by a competing generic firm. In some cases, the brand-name firm makes a large payment to the generic firm to induce settlement and delay generic entry. Some courts considering antitrust objections to these settlements have adopted a rule of effective per se legality. As Part II explains, such a rule overstates the exclusionary force of a patent, ignores precedent that encourages judicial tests of patents, and leads to absurd results - for example, by removing the difference between strong and weak patents, since either can delay competitive entry until patent expiration, provided the payment is large enough.

Where Do Conflictual Ties Come From? Exploring the Role of Spatial Distribution of Principals and Mediating Agents.

Using data on patent infringement litigation in biopharmaceuticals, this study investigates the origins of conflictual interorganizational relationships. It explores the role of spatial distribution of principals (firms) and mediating agents (intellectual property litigation firms) in facilitating and sustaining the conflictual relationships. Spatial propinquity is hypothesized to determine the nature of social relationships between the principal's and the mediating agent's employees, subsequently affecting the mediating agent's involvement in identification of opportunities for conflictual interactions by the principal. Propinquity is also predicted to decrease principal's communication and transportation costs while maintaining a professional relationship with the mediating agent, hence proving a more positive economic outlook of entering into and sustaining conflictual ties. The context of this study is the patterns of spatial distribution of 405 U.S. firms in biotechnology and pharmaceuticals (the principals) and 57 leading intellectual property litigation firms (the mediating agents). It relates these patterns to the involvement in patent infringement disputes by the biopharmaceutical firms in 1998-2006. The study additionally utilizes evidence from thirty-five semi-structured interviews with business executives, in-house legal counsel, patent attorneys, and litigators. Results suggest that, for a litigious firm, both proximity to and the concentration of proximate IP law firms increase the number of lawsuits the firm files and the number of litigation days the firm has in a given year.

Science Communication in Intellectual Property Litigation: from Lab Bench to Judiciary Bench

I began my current position as a scientific advisor in intellectual property litigation two years ago after more than 15 years of conducting research in academia and the pharmaceutical industry. While lawyers specializing in intellectual property litigation are well versed in the many legal aspects of each case, they rely on advice from scientists like myself to evaluate the very detailed technical background related to each case. As such, my job involves providing a strategic analysis of the finer scientific points to the legal team. This may require the review of scientific articles, expert witness affidavits, laboratory notebooks and relevant patents. The goal is to develop an opinion in light of these documents that can be helpful in the overall strategy as it relates to the scientific and technical matters of a case. As such, I have found utility for many of the transferrable skills I developed as a research scientist.

Towards a World IP Court

One of this year’s April Fool japes was an intercontinental ploy by a group of bloggers based around the world to convince readers that the G20 leaders, meeting in London at the beginning of that month, had agreed to establish a World Intellectual Property Litigation Court by 2012—just in time for the London Olympics. Clothed by the respectability of Genevabased Intellectual Property Watch weblog and information service, the conspirators sketched out an otherwise barely plausible fantasy relating to the Court’s location, operation and governance. Responses varied. Some, including seasoned watchers of the international scene, were fooled. Others emailed to say that they were not. A third group, consisting of bloggers who had not been let into the secret, asked if they could be brought into next year’s. But it was the fourth group who generated the response with which this Editorial deals, in short: we know it’s not going to happen, but sincerely wish it were true. Is this view the seed of misplaced sentiment, never to germinate on the unforgiving soil of reality, or does it have a justification and hence a future? The resolution of this question depends on the answers to at least three further questions. Is a World IP Litigation Court desirable? In an ideal world in which IP laws are the same in each jurisdiction, where legal representation is either equally accessible or dispensable, where a single currency prevails and commercial values are shared, such a court may be imagined either as a final appellate body to guarantee consistency or as a trial court for disputes (particularly those with international dimensions to them). If those conditions are not fulfilled, there is a risk that the court will be perceived as a mechanism for imposing a set of prevailing standards and legal machinery over others, possibly also promoting more of the very inconsistency the notion seeks to remove. Is a World IP Litigation Court politically acceptable? It all depends. Intellectual property law as we have it today is a complex web of rights and remedies. Enforcement is seen as the prerogative of the ‘haves’ while defences and exceptions are the haven of the ‘have nots’. A court should ideally strike a fair, consistent and predictable balance between the two, but it is difficult even for a parochial court within a single jurisdiction to demonstrate that this is so. If a court hears three patent cases in a year and throws out two of them, the bald and inadequate statistic shouts that it is ‘anti-patent’—and a World IP Court’s decisions would be deeply scrutinized for signs that it favours not so much a successful litigant as that for which the litigant is just a symbol (thus a win for Microsoft or Macdonald’s would be ‘a win for big business’, regardless of the merits of the case). Is the tendency towards political and economic symbolism a reason for rejecting a court of this nature, or a reason for making such a court the very best possible arbiter? Is a World IP Litigation Court feasible? At least the answer to this question permits some consideration of empirical evidence. While no court of this nature exists, the arbitral and mediation bodies patiently promoted by the World Intellectual Property Organization (WIPO) for the voluntary resolution of, initially, regular IP disputes and latterly domain name disputes have demonstrated the ability to reach decisions, for the most part, relatively swiftly, cheaply and consistently. Whether the respect and goodwill generated by this consensual framework are capable of being converted into a coercive machine for the trial of disputed issues and the making of enforcement orders is however a matter of speculation. Not only is a World IP Litigation Court not a matter for current discussion; its appearance of the agenda of the G20 leaders and the leading international trade enforcement and standards-setting bodies is not even a distant spot on the agenda’s horizon. Yet, by keeping this distant and unlikely goal in sight, we may be able to at least achieve at regional level, within Europe, the Americas, Africa and the Asia-Pacific, a greater degree of cooperation and consistency than we have achieved to date.

Principles on Transactional Intellectual Property Litigation: From Korean Perspectives

Principles on Transactional Intellectual Property Litigation: From Korean Perspectives

Managing legal risks associated with intellectual property on the web

Intellectual Property (IP) has taken a prominent place on the web. Today's organisations need to know the ways in which their websites can be the target of costly IP litigation. Organisations also need to know how to manage and protect their own IP that they expose through their web presence. This paper provides an overview of the legal risks associated with IP on the web. Managing such risks begins with gaining a clear understanding of how to address the salient issues related to IP that any organisation has to take into account when it has a web presence or provides a service using the web. Towards this end, a comprehensive survey of existing IP case law in the context of web content is provided. The survey focuses on three essential IP areas: copyright, patents, and trademarks.

Intellectual Property Litigation Clearinghouse: Data Overview

The Intellectual Property Litigation Clearinghouse (IPLC) will be a comprehensive online information source on IP lawsuits. Modeled on the renowned Stanford Securities Class Action Clearinghouse, the IPLC will host general statistical information, as well as text-searchable dockets, complaints, select motions, judicial opinions, and related data.

Intellectual Property Right Abuses in the Patent Licensing of Technology Standards from Developed Countries to Developing Countries: A Study of Some Typical Cases from China

While Western countries continually criticize developing countries, especially China, for a lack of effective protection of intellectual property rights (IPRs), the IPR abuses of developed countries in developing countries are also worth paying attention to. This article takes several representative cases that have occurred in recent years in China and discusses the IPR abuses in the licensing of technology standards from developed countries to developing countries. Under de facto standards, the IPR abuses of western enterprises are mainly conducted through blocking competitors by taking advantage of the status of controlling the standards. Under de jure standards, the most urgent antitrust concerns for developing countries are being charged an excessively high patent royalty and being refused independent licensing in practice by the western patent pools under the standards. In addition, this article also shows China's responses, such as improving its legal system to restrict IPR abuses and commonweal intellectual property litigation filed by IPR scholars. A brief analysis on categories of commonweal relative to IPR abuses is also presented.

INTELLECTUAL PROPERTY LITIGATION ACTIVITY IN THE USA

Abstract Brand names or trademarks carry incredible economic power and prestige. There is increasing recognition by world bodies that intellectual property (IP), whether manifested in patents, trademarks, copyrights or trade secrets, is highly valuable and must be protected through robust IP enforcement. The USA is an interesting natural laboratory as patent, trademark and copyright litigation battles have been raging domestically for some time. The paper discusses the four main forms of IP assets, the legal remedies that are available to enforce the property rights inherent in each type of IP asset, the basic damages theory relating to each form of IP, and how damages may be calculated when each type of asset is presumed to be infringed. The increased recognition of the value of IP has led to stronger enforcement of IP protection, an increase in IP litigation, and growing policy actions that are focused on how that protection should be manifested. An empirical analysis of how the IP litigation activity in the USA has changed over time is also presented.

The role of protective orders in intellectual property litigation

The role of protective orders in intellectual property litigation

Commercializing Open Source Software: Do Property Rights Still Matter?

TABLE OF CONTENTS I. INTRODUCTION II. THE LANDSCAPE A. The Proprietary Software Model 1. Formation and Maturation of the Proprietary Software Industry 2. Software Licensing Under Proprietary Models 3. Cross-Licensing: the Proprietary Equilibrium B. The Open Source Development Model 1. The Current State of Open Source: Commercialization 2. Software Products Licenses Under Open Source Models III. MOTIVATIONS FOR THE COMMERCIALIZATION OF OPEN SOURCE A. Open Source as a Viable Business Model 1. Predatory Motive: the Kill Microsoft Approach 2. Traditional Profit Motive: the Value Chain Approach B. Open Source as a Market Correction IV. THE EFFECT OF COMMERCIALIZED OPEN SOURCE A. Effect on Industry Organization and Innovation B. Effect on Intellectual Property Rights V. CONCLUSION I. INTRODUCTION For several years now, open source software products have been gaining prominence and market share. Yet the products themselves are not as provocative as the way in which they are developed and distributed. Two related features of the open source model are distinctive: the use of collaborative development structures that extend beyond the boundaries of a single firm, and the lack of reliance on intellectual property (IP) rights as a means of appropriating the value of the underlying technologies. Firm-level control of intellectual property is replaced by a complex set of relations, both informal and sometimes contractual, among strategic partners not joined by firm boundaries. I argue here that those relations reflect not coalescence towards industry norms driven solely by superior output, but rather a series of strategic moves and countermoves that have had the effect of opening some markets while closing others, substantially reducing profit margins, and fostering consolidation of a traditionally fragmented industry. I have written elsewhere about the role of intellectual property rights in proprietary models of software development, where intellectual property rights are used (albeit somewhat ineffectively) by firms to exploit the value of their internal research and development (R&D) investments. In that work, I generally reject the idea that the sheer number of patents is creating a thicket that deters innovation, largely because of the evidence of a robust startup market and of investors' lack of concern about patents held by competitors. More generally, I argue that many of the criticisms of software patents fail to account for the potential benefits those patents provide to smaller firms and focus much too heavily on the transaction costs associated with the massive patent portfolios that the larger industry participants have acquired (the so-called arms race build up). (1) Open source development models work differently. Because open source development proceeds on the premise that no individual or firm will have proprietary control of the software, the firms participating in those development projects might have little need for patents. The cooperative nature of development obviates any need for the actual and implicit cross licensing that provides access to technology throughout the proprietary software sector. The problem, however, is that the open source community does not exist in a vacuum. It exists in a world in which participants in the industry are building up large portfolios of patents, portfolios that pose a serious threat to open source development. Therefore, any thorough analysis of the role of patents in the industry must take account of the effects of the current property rights system on all participants. This Article takes up that issue. In essence, the problem is that open source developers can and often do operate outside of the IP licensing framework that dominates the software industry. Thus, many participants have no patents of their own with which they might protect themselves in IP litigation. …

Summary judgment in intellectual property litigation--the three of Harts

Summary judgment in intellectual property litigation--the three of Harts

Peer-to-Peer Networks, Technological Darwinism, and Intellectual Property Reverse Private Attorney General Litigation

This paper analyzes private attorney by intellectual property owners against individuals, using the RIAA file sharing as a model. In this article, I coin the phrase private attorney general litigation to refer to aggregated claims by well-resourced plaintiffs against multiple individual defendants. There are numerous cultural, technological, and legal factors that suggest that reverse private attorney general will become and increasingly important for enforcing intellectual property rights. In fact, in the recent Grokster decision, Justice Bryer noted that RIAA's against end-users serves as a teaching tool concerning intellectual property rights. My reading of the Supreme Court's Grokster decision suggests that this statement is more prescient than Justice Breyer likely realized: Grokster's intent-based standard will not inhibit P2P technology over the long term, and RIAA and other content providers will continue to sue end users directly. My review of the RIAA includes an empirical analysis of the litigation's effect on file sharing norms, including a regression analysis of P2P connectivity data. This analysis strongly suggests that the RIAA has failed to change file sharing norms. Instead, file sharers have been steadily migrating to less centralized networks, resulting in a significant overall increase in file sharing activity. I argue that these data reflect how the norms of file sharing exist in symbiosis with the norms of open source file coding. This relationship results in a technology that evolves resistance to threats. After describing the RIAA litigation, I discuss whether any of the traditional justifications for private attorney general actions support reverse private attorney general in the intellectual property context. These justifications include the advocacy of important social causes, balancing the interests of minority groups against well-funded majorities, aggregating small claims that would not otherwise have been filed, and providing a fail-safe against regulatory capture. I conclude that none of these justifications support the RIAA or other forms of reverse private attorney general intellectual property litigation. I then discuss several alternatives to such litigation, and conclude that a mixed market, levy, and private utility model would better reflect public norms about intellectual property.

Toywars

Toywars

Draft Convention on Jurisdiction and Recognition of Judgments in Intellectual Property Matters

Draft Convention on Jurisdiction and Recognition of Judgments in Intellectual Property Matters

An Alert to the Intellectual Property Bar: The Hague Judgments Convention

This paper takes a hard look at the relationship between international intellectual property litigation and the proposed Hague Convention on Jurisdiction and the Recognition of Foreign Judgments. The Convention is mainly aimed at creating a way for a civil judgment rendered in one member state to be assured enforcement in all other member states. Toward that end, it defines a series of agreed bases of personal jurisdiction; when a judgment is predicated on one of these bases, other member states are obliged to enforce it. The Convention also determines where particular claims can be litigated-certain claims are within the exclusive jurisdiction of particular states, others can be litigated where ever the Convention permits the assertion of adjudicatory authority over the defendant. After briefly describing the terms of the Convention, its application to intellectual property is analyzed. One question is whether the territorial nature of intellectual property rights means that no nation should be permitted to adjudicate intellectual property claims arising under the laws of another jurisdiction. If some extraterritorial adjudication is permissible, the next question is, in what kind of cases. The Convention distinguishes between registered rights cases, where issues of validity-and perhaps even infringement-can only be resolved at the place of registration, and all other intellectual property cases. This article takes the position that the line should be drawn between patent cases on the one hand and copyright and trademark cases on the other. Patent cases require a level of technical expertise that is not as necessary for resolving copyright and trademark cases. Moreover, copyright and trademark cases often involve products that are digitally transmitted and thus can be infringed in many states simultaneously. Consolidated adjudication of such multinational copyright and trademark disputes can save judicial and litigant resources, avoid inconsistent outcomes, and provide fora for developing law for the new borderless market that the creative industries now encounter. The paper ends with a series of proposals to facilitate consolidation and adjudication of intellectual property disputes. In that respect, it acts as background material for a draft judgments convention focusing exclusively on intellectual property litigation, which will be offered by the author and Professor Jane Ginsburg should the Hague efforts be frustrated or culminate in the exclusion of intellectual property from coverage.

International Intellectual Property Litigation: A Vehicle for Resurgent Comparativist Thought?

Journal Article International Intellectual Property Litigation: A Vehicle for Resurgent Comparativist Thought? Get access Graeme B. Dinwoodie Graeme B. Dinwoodie 1Graeme B. Dinwoodie is Professor of Law, Chicago-Kent College of Law. Copyright 2001, Graeme B. Dinwoodie. This essay is based upon a presentation at the Annual Meeting of the Association of American Law Schools, Section on Conflict of Laws, in San Francisco in January 2001. My thanks to my fellow panelists, Bénédicte Fauvarque- Cosson, Mathias Reimann, and Michael Traynor, for the positive effect that their contributions have undoubtedly had on the development of many of the thoughts articulated herein. Thanks also to Brian Havel for helpful comments on an earlier draft of this essay. The late Fritz Juenger forced me to consider many of these issues anew, both through personal urging and through the power of his scholarship. I will always be grateful. The views expressed in this essay are, however, mine alone Search for other works by this author on: Oxford Academic Google Scholar The American Journal of Comparative Law, Volume 49, Issue 3, Summer 2001, Pages 429–453, https://doi.org/10.2307/840900 Published: 01 July 2001

Jurisdiction in International Intellectual Property Litigation: The Courts Start Struggling with the Brussels Convention

Jurisdiction in International Intellectual Property Litigation: The Courts Start Struggling with the Brussels Convention