Quarterly Journal 46-2 Volume 46, Issue 2 September 2018

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The AIPLA Quarterly Journal, a publication of the American Intellectual Property Law Association, is housed at the George Washington University Law School and is edited and managed by an Editorial Board of intellectual property experts and a staff of law students under the direction of the Editor-in-Chief, Professor Joan Schaffner.

The Quarterly Journal is dedicated to presenting materials relating to intellectual property matters and is published four times per year. Editorial Board members (all of whom are lawyers) are selected based upon demonstrated interest and experience, and student staff members are selected from the students of the GWU Law School.

Do Heightened Quality Incentives Improve the Quality of Patentability Decisions?: An Analysis of Trend Divergences During the Signatory Authority Review Program

Eric D. Blatt, Lian Huang

Do Heightened Quality Incentives Improve the Quality of Patentability Decisions?: An Analysis of Trend Divergences During the Signatory Authority Review Program

Despite widespread consensus that the quality of patentability determinations must be improved, there has been no agreement as to how this objective should be pursued. A lack of understanding as to the effects of the United States Patent and Trademark Office’s (USPTO) production and quality incentive policies may have presented a barrier to such agreement. This Article aims to close this gap by (1) detailing the system of production and quality incentives under which examiners ordinarily operate and (2) analyzing divergences in examiner decision-making trends while examiners are undergoing the Signatory Authority Review Program (the “Program”) and subject to heightened quality incentives. 

The USPTO utilizes a complex system to measure and incentivize examiners’ quantitative productivity, but it has no equivalent tool to ensure that examiners maintain high-quality standards in their written patentability determinations. A lack of meaningful quality incentives may lead examiners to sacrifice quality to maximize production. Consistent with this prediction, the authors find that when examiners are on the Program and subject to heightened quality-incentives, they respond by increasing the quality of their patentability determinations, even as they must simultaneously increase their quantitative productivity. In particular, the authors find that when heightened quality incentives are applied, examiners issue fewer allowances, provoke fewer appeals, and issue more second action non-final rejections. Taken together, these findings indicate that reforming USPTO incentive policies may represent a valuable opportunity to improve patent quality and that a degree of quality gains may be achievable without substantial sacrifices to quantitative productivity.
Virtually Equivalent: Applying the Doctrine of Equivalents to Patented Inventions Depicted in Virtual Reality

Connor J. Hansen

Virtually Equivalent: Applying the Doctrine of Equivalents to Patented Inventions Depicted in Virtual Reality

Patented inventions are likely to be depicted in virtual reality (VR) at an increasing rate as VR grows in popularity and availability. Patent holders wishing to enjoin the use of their invention in virtual programs will generally be unable to prove literal infringement. The doctrine of equivalents (DoE) is their best option for showing that a virtual use or depiction of an invention infringes upon their exclusive rights. Still, patent holders will have a difficult time showing that claimed elements, necessarily limited by the laws of the physical world, are equivalent to the elements as depicted in VR.
This Note uses a hypothetical surgical training program, designed to be as realistic as possible, to determine whether virtual elements can infringe upon patented devices and methods. It ultimately concludes that infringement is possible but only if the patent claims have few or no physical limitations and the VR program accurately mimics the physics of the real world. This Note proposes a modern DoE that would include more virtual elements within the scope of the doctrine to protect patent holders from virtual infringement when the virtual device is identical to the physical device—amounting to a mere change in form of the patented device.
Limiting the Expanding Scope of Assignor Estoppel in Federal Courts

Maleena Paal

Limiting the Expanding Scope of Assignor Estoppel in Federal Courts

In recent years, the Federal Circuit’s analysis of privity for assignor estoppel seems to have expanded such that parties are rarely, if ever, found not to be in privity. This has resulted in more parties being estopped from challenging patent validity, which could have a problematic impact in economies like Silicon Valley where high-achieving employees frequently take their expertise from one company to the next. Additionally, if more parties are estopped from challenging patent validity a greater number of ‘bad patents’ could go unchallenged. Finally, Inter Partes Review (“IPR”) proceedings at the Patent Trial and Appeal Board (“PTAB”) are gaining popularity and an increasing number of federal court cases have concurrent IPR proceedings. The PTAB also considers issues of privity for IPRs with respect to collateral estoppel; however, the privity analysis applied by the PTAB differs from that applied by federal courts for assignor estoppel. This discrepancy, along with the fact that the PTAB has declined to apply assignor estoppel to IPR proceedings, could result in confusion amongst parties that have concurrent IPR and federal court cases. 
Therefore, a new test should be adopted by federal courts that not only limits the application of assignor estoppel by narrowing the scope of privies, the test should ideally echo the PTAB’s privity analysis to limit confusion. Instead of focusing on the assignor’s relationship to the accused company, federal courts should instead focus on the assignor’s relationship to the infringing activity by balancing whether 1) the assignor has control over the entity’s participation in the infringing activity, 2) the assignor funds the infringing activity, or 3) if the assignor directs the infringing activity.
The Music Industry’s Discord with the DMCA

Jessica E. Gopiao

The Music Industry’s Discord with the DMCA

The Digital Millennium Copyright Act (DMCA) has two provisions: an anti-circumvention provision in § 1201, which provides great strength to the music industry, and a safe harbor provision in § 512, which strips the music industry of fair compensation and adequate protections from infringement.  Together, the provisions have clashed in disharmony for decades.  To resolve this antiquated issue, Congress should revise § 512 to become in concordance with § 1201.  The United States Copyright Office (Copyright Office) sought answers by releasing separate studies on each provision, but the proposed amendments strike the wrong chords, leaving the DMCA in its unsettled cacophony.  Regarding the DMCA’s safe harbors, the Copyright Office explored several solutions to fairly compensate copyright owners like artists and songwriters in the music industry but failed to find ideas from foreign safe harbor provisions.  With the DMCA’s anti-circumvention provision, on the other hand, the Copyright Office sought unnecessary solutions by referring to other countries’ approaches.  
Congress needs to holistically understand the DCMA provisions and its effects on the music industry.  Taking inspiration from foreign solutions to § 512, this Note references the United Kingdom’s (UK) recent proposal and assesses its effectiveness in ameliorating the music industry’s discord with the DMCA.  This Note then hypothesizes amending § 1201 to mirror Europe’s, Brazil’s and China’s anti-circumvention provisions and proceeds with the same assessment.  This analysis shows that § 512 would benefit most from adopting foreign provisions, whereas § 1201 should remain untouched because it already serves its purpose as is.  Understanding the DMCA in its entirety and determining its effects collectively will lead to a more harmonious statute with just outcomes for online infringement suits.
Knobbe Martens

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