Each month I post a note discussing the academic side of patent law. My on-line sources for material are the SSRN electronic library, a few hard copy journals, and several more that are freely available on-line. Most of my material, however, comes from articles directly e-mailed to me from professors and law review editors. Please feel free to e-mail articles for February's edition. (Include information on where the article is being published). -- DDC
1) In a forthcoming paper, Professor Joseph Miller provides a new solution for making claim construction more predictable. His idea is to require that patentees provide certain additional disclosures up-front -- Disclosures that will appear in express statements on the face of the patent itself.
Four additional patentee disclosures: (a) the field of art to which the claimed invention pertains; (b) all problems that the claimed invention helps solve; (c) a lexicon of all claim terms to which the applicant gives a meaning other than its accustomed meaning to people having ordinary skill in the pertinent art; and (d) a list of preferred objective reference sources, such as technical treatises and dictionaries (general or specialized), to which an interested reader should refer to learn about the ordinary meaning of the remaining claim terms to a person having ordinary skill in the art. [SSRN Link]
According to Miller's approach, in any subsequent claim construction process, whether for licensing, design-around, or litigation purposes, parties would have the benefit of patents enriched with this new information. The paper will come out in March in the Lewis & Clark Law Review.
2) I just found out that an old college friend is quickly becoming a leader in the area of Patent-Antitrust law. In the recent Issue of the Richmond Journal of Law & Technology, Aaron Rabinowitz writes on Antitrust Liability for Refusals to Deal in Patented Goods. The article highlights the circuit split between the Ninth Circuit and the Federal Circuit over whether patent holders must have a business reason for refusing to sell or license patented products. In Kodak II, 125 F.3d 1195 (9th. Cir. 1997), the California based appeals court determined "that a patentee who refuses to license his patented invention to others without legitimate business justifications for doing so has violated antitrust law." However, CSU v. Xerox, 203 F.3d 1322 (Fed. Cir. 2000), the Federal Circuit held that a patentee may refuse to license or sell a patented invention without violation of the patent laws, regardless of his business justification.
3) Bill Burgess, a 3L at Penn has written an interesting comment on the "Failed Promise of Cybor" published in the UPenn Law Review. In Cybor, the Federal Circuit held that claim construction is a matter of law that is reviewed de novo by the Appellate Court. Bill makes the arguments that (i) the 'bright-line rule' of Cybor has resulted in less rather than more consistency in how claims are construed and (ii) Cybor is actually inconsistent with the Supreme Court's Markman decision.