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Quarterly Journal 45-2

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

Maureen Long
Utility and design patents share the same section 103 nonobviousness requirement.  In 2007, the Supreme Court decided KSR and disapproved the Federal Circuit’s teaching-suggestion-motivation test as too rigid and instead emphasized a common-sense approach to nonobviousness.  Because KSR involved a utility patent, the courts have questioned its applicability in the design patent context.  This article argues that KSR is equally applicable to design patents and the two-step test for design patent nonobviousness analysis is inappropriate in light of KSR as it is too rigid and narrows the universe of prior art on which obviousness analysis may rely.

Calculating Reasonable Royalty Damages Using Conjoint Analysis​  Members Only 
Greg Allenby
The use of conjoint analysis has become increasingly popular in patent disputes. Because the method involves a number of highly technical analyses and calculations, the authors seek to provide a user-friendly primer on how to use this approach in the determination of reasonable royalty damages. In the article, the authors review the economic framework behind the calculation of reasonable royalty damages and explain how to implement two key methods of computing these damages—referred to as the Market Share Method (“MSM”) and the Equilibrium Profit Method (“EPM”).
These two methods are particularly useful because a recent court decision has been seen by some observers as an obstacle to the use of conjoint surveys in patent damages calculations. In the Visteon case, the court disallowed the conjoint expert’s damages calculation because it only measured consumer valuations of infringing features, not defendants’ profits from them. Yet both methods the authors outline sidestep Visteon’s criticisms, since they use conjoint survey data to determine how much the patented features would have increased the defendant’s profits. MSM and EPM thus remain powerful methods of leveraging conjoint surveys to compute patent infringement damages.

Gone in a Snap?: The Effect of 17 U.S.C. § 102(a) Fixation Precedents on Ephemeral Messaging Platforms  Members Only 
Nathan C. Ranns
Snapchat and other ephemeral messaging platforms have become some of the most prominent and profitable social media outlets in our increasingly digitalized society. The unique “delete by default” model these applications employ automatically sets generated content for deletion within a period of time. The intentionally impermanent nature of these communications may appear to conflict with traditional copyright requirements, particularly with the fixation requirement. The novelty of these communications, however, should not result in the automatic denial of such valuable protection. This note discusses the different approaches to the fixation requirement in the Second and Ninth Circuits, how courts have handled other ephemeral content, and how Snapchat and similar platforms fit within that landscape. In proposing an amendment to the fixation requirement in 17 U.S.C. § 102(a), this note argues that content generated on Snapchat is both valuable and deserving of full copyright protection. Our copyright law should evolve as necessary to protect innovative content that may not perfectly resemble more traditional content that is unquestionably protected under such laws.

It Takes Two to Tango: The BPCIA’s Mandatory Patent Dance  Members Only 
Cindy Navarro
The Supreme Court granted certiorari in Amgen v. Sandoz to addresses an ambiguity arising under the BPCIA’s patent dance provisions. The patent dance provides that manufacturers “shall” exchange certain information before biosimilar products enter the commercial market. Considering the BPCIA as a whole, the Federal Circuit interpreted “shall” as an indication that the patent dance is optional rather than required. This note examines the Federal Circuit’s reasoning in light of the legislative history, concluding that a voluntary patent dance fails to serve the goals of the BPCIA. This note further argues that the patent dance should be mandatory in order to streamline biosimilar market entry and to ultimately provide a robust biomedical market to consumers.

Copyright Infringement and the Science of Music Memory: Applying Cognitive Psychology to the Substantial Similarity Test Members Only 
Isabel Corngold
In order to prevail in a copyright infringement suit, the owner of the copyright must prove that the defendant copied his or her work and that the degree of copying was enough to make the works substantial similarity to one another.  This concept of substantial similarity remains largely undefined and is left entirely for the fact finder to determine.  In the context of infringement in the music industry, substantial similarity is determined by a song-by-song analysis looking to the total concept and feel of the works.  This non-dissecting mode of analysis is inconsistent with how psychology understands listeners to perceive and remember music, which is based on a comparison of the individual elements of a musical piece of work rather than holistically.  Modifying the infringement test to more closely mirror human perception of music will lead to more accurate and just outcomes for infringement suits.