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Quarterly Journal 42-2

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Table of Contents

Santa Clara Best Practices in Patent Litigation Survey Members Only

Colleen Chien, Dan Dobkin, Wesley Helmholz, Coryn Millslagle, John Neal, Nicole Shanahan, and Christopher Tosetti

Over the past few years, significant strides have been made to improve patent law and litigation. Congress is now considering making more changes, to supplement ongoing tailoring by the courts. Dialogue between the bench, bar, and lawmakers is crucial for informing these efforts. To take stock of past and present reform efforts, we surveyed in-house counsel and patent litigators about the effectiveness of current and proposed case management practices and a variety of doctrinal and procedural reforms for increasing the efficiency of patent litigation. Based on over 500 responses, which we converted to percentage ratings (up to a maximum score of 100%) — about a quarter from inside counsel at technology companies and the remainder from outside (law firm) counsel — we found timely decisions on summary judgment motions to be the most effective practice of all on the survey (86%). Timely decisions on transfer motions were also rated as highly effective for increasing efficiency (71%), as was early claim construction and limiting the number of asserted claims (~ 65-68%), and fee-shifting and sanctions for prevailing parties and for discovery abuses rated most favorably (~65%). Respondents gave more mixed, and therefore relatively lower ratings, to practices like carrying out claim construction with summary judgment (34%), court-ordered mediation (37%), and heightened pleading, which rated highly among inside counsel (70%), but much less favorably among outside counsel (46%). 

Twelve Years of Surveys: How the Arising Interpretation of the Federal Trademark Dilution Statute Chills Parody Trademarks and How Courts Can Change This Members Only

Jordan T. Bergsten

The federal trademark dilution statute imposes civil liability for commercial use of another’s famous trademark but specifically exempts parodies of famous trademarks. Unfortunately, courts have interpreted this amendment to allow claims against parodies of trademarks when the parodies, themselves, take the form of trademarks. Thus, in 2010, the Second Circuit held that the parody exemption did not apply to a brew of coffee labeled “Charbucks”—a clear parody of Starbucks coffee, leading to several more years of fact-intensive litigation for these parodists. In so doing, that court allowed the regulation, or at least chilling, of formerly protected speech and did so without ever mentioning the First Amendment. This article identifies an alternative interpretation of statutory text that would protect parodies like Charbucks against dilution claims as a matter of law. It argues that the Second Circuit’s interpretation, by allowing companies to stifle criticism of themselves and their famous trademarks, creates serious First Amendment concerns, is contrary to the expressed will of Congress, and is bad as a matter of public policy. The article then urges courts to apply a second, parody-permissive, interpretation of the trademark dilution statute.

The Evolution of the Digitial Millenium Copyright Act: Changing Interpretations of the DMCA and Future Implications for Digital Copyright Holders Members Only

Hillary A. Henderson

Copyright law rewards an artificial monopoly to individual authors for their creations. This reward is based on the belief that, by granting authors the exclusive right to reproduce their works, they receive an incentive and means to create, which in turn advances the welfare of the general public by “promoting the progress of science and useful arts.” The Copyright Act of 1976 is the sole federal statute governing copyright law. It was intentionally written in a vague manner and meant to be open to evolving interpretation as technology transforms throughout history. An important (and the most recent) revision of the 1976 act was enacted in 1998, and is known as the Digital Millennium Copyright Act (“DMCA”). Its purpose is to update copyright law for the digital age. The DMCA is the foundation of every United States federal law regarding digital rights. Intentional ambiguity enables this law to remain applicable to a variety of modern court cases. However, this same ambiguity also affords courts the freedom to issue widely varying opinions and judgments regarding rapidly advancing technology. To give the reader some perspective of this ambiguity, this article discusses recent judicial applications of the DMCA. Section II outlines the main titles of the DMCA. Sections III and IV provide more detail about Title I of the DMCA, which deals with anti-circumvention implementation and evolution. Sections V and VI discuss Title II of the DMCA, which addresses safe-harbor protection from the law; this title of the DMCA currently is the most controversial. Section VII pinpoints difficulties that parties governed by the DMCA may face as technology continues to evolve, and offers alternative ideas that could help bypass some undesirable outcomes, namely greater constitutional scrutiny or simply giving the parties viable alternatives to the current process.

Student Notes

BPCIA Guarantees Savings for Consumers, at Potential Cost to Prescription Drug Manufacturers Members Only

Derrick Rowe

One of the most impactful titles of the 2009 Affordable Health Care for America Act was the Biologics Price Competition and Innovation Act (“BPCIA”). The BPCIA was enacted primarily to increase biologic drug competition and lower the cost of biological prescription drugs. To garner this cost-saving result, the BPCIA aims to increase both brand innovation and market access for bio-similar and interchangeable biologics. This Note addresses the history and structure of the BPCIA and other relevant laws, the trend toward higher litigation costs, and a proposed solution to the expected waste that will result from the enactment of the BPCIA. It also hypothesizes what would happen if the notification period in the BPCIA were extended.

Finding Historical Meaning In Functional Claim Language Through Analytical And Synthetic Proposition Categorization​ Members Only

Patrick Tool

Over-inclusiveness versus under-inclusiveness of inventions’ legal protection characterizes a general tension within the patent system. In the software arts, this tension manifests itself in means-plus-function claims, largely due to software’s functional nature. Courts have sought to limit functional claims, while Congress has promoted the use of these claims through major patent legislation, such as 35 U.S.C. § 112(f), which permits an applicant to use a “functional” claim term in an apparatus claim. This Note discusses the history and the mechanics of means-plus-function claims, and attempts to shed light on misunderstandings within § 112(f) jurisprudence. Finally, this Note suggests an additional way to view functional language through the use of analytical versus synthetic proposition analysis.