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Quarterly Journal Volume 39, Number 2

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Reviving the Federal Circuit's Dead Letter Teaching, Suggestion, or Motivation Test for the Doctrine of Equivalents locked.gif

John Cordani
This Article provides the framework and legal basis for a novel, useful, and predictable approach to claim element vitiation, a doctrine the Supreme Court established in Warner-Jenkinson Co. v. Hilton Davis Chemical Co. as a legal limitation on the doctrine of equivalents.  The framework posits that a theory of equivalence vitiates a claim element if the defendant proves that the plaintiff’s theory of equivalence for that element is not supported by any teaching, suggestion, or motivation in the patent specification.  This approach has the advantages of uniting claim element vitiation with the Federal Circuit’s all advantages rule and harmonizing the doctrine of equivalents with enablement, obviousness, and claim construction.  This coordination of patent law doctrine ensures that a patentee’s protection is entirely commensurate with their contributions to science and engineering and provides a legal anchor for the doctrine of equivalents in the terms of the patent specification.  In this way, the doctrine of equivalents can protect the essence of innovations while ensuring adequate public notice of the metes and bounds of the invention.

Technical Experts in Patent Trials: A Psychological Perspective locked.gif

Laura Hall
In a patent trial, it is often the case that most, if not all, jurors struggle to understand the technology at issue.  To accommodate for this lack of expertise, the legal system allows “technical experts” from both sides of the bench to educate jurors on the disputed technology.  Thus, because a jury’s interpretation of the technology in part determines a patent trial’s outcome, a technical expert’s performance on the witness stand can be critically important.  In this paper, I establish practicing attorneys’ perceptions of what makes for persuasive technical expert testimony by examining publications on the topic and interviewing experienced patent litigators.  I then compare these perceptions to existing knowledge from psychological studies on the effectiveness of persuasive communication.  Finally, I make recommendations for strategies to improve the use of technical experts at trial.

Limiting Claim Construction Challenges After Ortiz v. Jordan  locked.gif

Mitchell G. Stockwell
The Federal Circuit's practice of reviewing claim construction challenges de novo has generated substantial controversy. There are valid reasons for providing more deference to claim construction challenges, especially after a full trial on the merits. Instead of changing the standard itself, however, the Federal Circuit should reassess its requirements for appellants to preserve claim construction errors following the Supreme Court's decision in Ortiz v. Johnson. In Ortiz, the Supreme Court made clear that following the procedural rules and preserving error—even legal errors—is critical to efficient working of the judicial system. However, the Federal Circuit has only loosely applied error-preservation rules and often appears to simply be reviewing the trial court's interlocutory Markman order, rather than claims of error at trial. Such an approach is improper. Enforcing procedural rules and requiring appellants properly to preserve challenges to claim construction during trial would bring the Federal Circuit in line with Supreme Court authority, provide trial courts the first opportunity to address the claims of error and provide more deference to trial courts in situations where errors were not preserved or when the trial court's assessment of the claim of error was reasonable.

Recasting Ringtones as Public Performances: A Proposal to Amend Section 110(4) of the Copyright Act locked.gif

Bryan Dean
This Note addresses the holding of In re Cellco P’ship.  Cellco correctly held that the Copyright Act does not require wireless communication companies to obtain public performance licenses to provide ringtones to their consumers.  In light of the negative consequences of the result in Cellco, this Note argues that Congress should amend section 110(4) of the Copyright Act so that ringtone renderings are subject to public performance liability.

Jodie C. Graham
As the Internet becomes an increasingly pervasive communications technology in society, public discussions and other born-digital documents of social and political importance frequently exist solely on various websites.  To fulfill their missions of preserving public knowledge, libraries seek to acquire and make accessible web documents to scholars, students, and other library patrons.  However, section 108 of the Copyright Act, which previously provided sufficient protection from liability for libraries' acquisition and reproduction activities, does not adequately map onto the technological realities of acquiring digital documents over the Internet.  As a result, libraries must accept the risk of copyright infringement liability or forgo preserving historically important online documents.  This Note proposes a set of amendments that would update section 108 to extend libraries' current limited protections from copyright liability to the acquisition, preservation, and making available of online documents.​

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