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Quarterly Journal 44-2

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

The Time Has Come to Amend 35 U.S.C. § 101 Members Only   Jorge A. Goldstein, Michelle K. Holoubek, & Krishan Y. Thakker
The most recent decisions of the U.S. Supreme Court on subject matter eligibility (Mayo v. Prometheus (2012), AMP v. Myriad Genetics (2013), and Alice Corp. v. CLS Bank (2014)) have introduced an inventiveness test into the interpretation of 35 USC §101. The test is meant to assure that patent claims not preempt the basic building blocks of human invention, the so called Exceptions to eligibility: natural laws, natural phenomena and abstract ideas. The inventiveness test requires that the claimed invention be "markedly different," "distinct in a relevant way," "more than routine or conventional" (and other such vague concepts) than the Exceptions. Decisions from the Court of Appeals for the Federal Circuit, the Federal District courts, as well as implementations by the USPTO are showing that the inventiveness test is ill-defined, impracticable, and procedurally prejudicial to patent holders; because of the uncertainty it has raised, it is also detrimental to the clarity and viability of the U.S. patent system. We propose a simple amendment to 35 USC §101 that will reverse these trends, by removing inventiveness from the statutory interpretation. We also propose the introduction of physical implementation into the statutory term "process." These proposed amendments are constitutional in that they do not eliminate the Supreme Court's concerns of not patenting the Exceptions: Preemption will be maintained by the effective use of other sections of the patent law, such as an expanded concept of absolute worldwide novelty (under the America Invents Act), non-obviousness (under KSR), and enablement, written description and clarity (under 35 USC §112).

A Study of Patent Exhaustion: AIPLA's Amicus Brien in Lexmark International Inc., v. Impression Products, Inc.  Members Only 
Kristin L. Yohannan & Douglas A. Behrens
AIPLA filed an amicus brief in Lexmark International, Inc. v. Impression Products, Inc., which was pending before the U.S. Court of Appeals for the Federal Circuit and dealt with the issue of patent exhaustion.  This Article analyzes the issue of patent exhaustion in view of the Supreme Court decisions in Kirtsaeng and Quanta.  The questions presented were whether the Federal Circuit should overrule Jazz Photo in view of Kirtsaeng and whether the Federal Circuit should overrule Mallinckrodt in view of Quanta.  In both instances AIPLA argued that the Federal Circuit should keep its precedent intact.  The Federal Circuit agreed with AIPLA’s views in its decision of the en banc appeal.

Japan Without FRAND? Recent Developments on Injunctions and FRAND-Encumbered Patents in Japan Members Only 
Yuzuki Nagakoshi & Katsuya Tamai
Whether or not owners of FRAND-encumbered standard essential patents (hereinafter SEPs) are entitled to injunctive relief is an increasingly important topic in the fields of intellectual property and antitrust law around the world. Courts and administrative authorities around the world are searching for the appropriate balancing point between an absolute right to injunction and an absolute denial of injunction. This article first introduces the Japanese approach to SEP injunctive relief by analyzing the approach taken by the courts and administrative offices in two recent cases: The Intellectual Property High Court’s May 2014 opinions in Apple v. Samsung and the Tokyo District Court’s February 2015 decision in Imation v. One Blue. The subsequent section addresses the draft revision of the Guidelines for the Use of Intellectual Property Under the Antimonopoly Act published by the Japan Fair Trade Commission in July 2015, in the wake of Apple and Imation. Following these introductions to recent developments in Japan, a comparison with Europe is made. The development of case law, administrative guidelines, and private practice to enhance more clarity in FRAND declarations and "code of conduct" for parties would have an important impact on the realization of the aim of the Patent Act through encouraging both invention and affordable access to technology.

Student Notes

An Argument Against Reinventing the Wheel: Using an Obviousness Analysis to Bring Consistency and Clarity to Patent Eligibility Determinations of Software Patents After Alice Corp.
Members Only 
Michael Gershoni
This note examines the current state of 35 U.S.C. § 101 jurisprudence and suggests that Congress codify the term “inventive concept,” used by the Supreme Court in its Alice Corp. v. CLS Bank International decision, as an innovation embodied and claimed by the invention that is not obvious to a person skilled in the art. Expressly defining “inventive concept” will stabilize the effects of uncertainty as to the issue of whether and when computer software is patentable after the Alice decision. This note further suggests secondary evidence, modeled after the secondary indicia of non-obviousness, to inject added certainty, objectivity, and predictability into §101 litigation.

Is the Lanham Act Still Consitutional? Use in Commerce After Lopez
Members Only 
Erik A. Beith
The last three decades have seen a significant expansion in the scope of federal trademark law under the Lanham Act, from broader protections for trade dress to anti-dilution statutes and intent-to-use applications. But because Congress’s authority to regulate trademarks derives from the Commerce Clause, the Lanham Act requires that a mark be used in interstate commerce in order to receive federal protection. This note begins by explaining how the historical timing of the Lanham Act’s passage in 1946—a period in which Congress’s Commerce Clause powers were dramatically expanding—established a low threshold for “use in commerce” that would have been highly suspect a decade earlier, when the Supreme Court routinely struck down attempts by Congress to expand the class of activities falling under its Commerce Clause jurisdiction. In this way, the Lanham Act is both a creature of, and highly dependent upon, a particular post-New Deal understanding of Congress’s Commerce Clause powers as plenary.

The core of this note explores how the Supreme Court’s apparent return to a more formalist interpretation of the Commerce Clause, beginning with United States v. Lopez, threatens this historical congruence. In particular, as the Supreme Court has shown a renewed willingness to reign in more than half a century of nearly unchecked expansion of Congress’s Commerce Clause power, the statutory scope of federal trademark protection continues to expand, at the same time that courts have reduced the “use in commerce” requirement to a nullity. This note concludes by arguing that the Commerce Clause should impose meaningful limits on Congress’s ability to expand federal protection for trademarks, and suggests that the lower courts should begin enforcing the “use in commerce” requirement more strictly. Congress, for its part, could aid this endeavor by clarifying the definition and scope of “use in commerce.”