Patent Eligibility of Molecules: “Product of Nature” Doctrine After Myriad

Apr 20, ’11 3:58 PM

ABSTRACT: In March 2010, the U.S. District Court in the Southern District of New York held in the Myriad case that patent claims directed to isolated DNA molecules were invalid under 35 U.S.C. § 101 for failing to claim patent-eligible subject matter, relying heavily on the so-called “product of nature” doctrine.  Instead of a chronological order, this Note reviews the legal history of the “product of nature” doctrine in a brand new analytical framework, analyzing the application of the “product of nature” doctrine to relevant cases based on whether the claimed subject matter is an element, a molecule, or a microorganism.  This Note then proposes an appropriate test for applying the doctrine to patent claims directed to molecules.  Retroactive application of the proposed test to molecule-claim case law would have yielded results consistent with the vast majority of relevant cases.  Application of the proposed test to the DNA-molecule claims-in-suit in Myriad leads to a legal conclusion that the claimed DNA molecules are patent-eligible, contrary to the conclusion of the Myriad court.  This Note also makes an effort to address certain issues in the court’s opinion, and to provide some practical tips to patent practitioners in drafting DNA molecule claims.

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Substantial Disparity: Copyright Chaos in the Second Circuit

Apr 20, ’11 3:58 PM

ABSTRACT: The test for substantial similarity is a doctrinal mess.  In response, recent commentators have called for the inclusion of expert testimony at this stage of an infringement analysis.  Graham Ballou, however, argues that judicial latitude in the framing of the inquiry is more responsible for jury confusion than a lack of expert witnesses.  After surveying three years of summary judgment opinions on substantial similarity from district courts in the Second Circuit, Ballou concludes that copyright law should discourage summary judgment on and de novo review of substantial similarity, therefore re-empowering the jury on the inherently subjective question of improper appropriation.

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You May Not “Like” This Title: Everything Stored On Facebook Is Discoverable

Apr 20, ’11 3:58 PM

ABSTRACT: Facebook has revolutionized the way that people communicate and do business by providing an open and connected environment for individuals and businesses alike. This openness has largely contributed to both its popularity and success. However, enjoying the openness of this revolutionary platform may come at an unexpected cost, especially for those who do not understand how the website’s content may be used as evidence in a lawsuit. Darren Heitner demonstrates how content published on a person’s Facebook account may be discoverable for the purposes of litigation, even when the information sought is unavailable through Facebook’s privacy settings.

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What Are The Constitutional Limits On Awards Of Statutory Damages?

Apr 20, ’11 3:58 PM

ABSTRACT: Music piracy is a major problem in this country, robbing the economy of billions each year. Andrew Berger argues that, if piracy is to end, large verdicts of the kind awarded in Sony BMG Music Entertainment et al. v. Tenenbaum may be necessary. In Tenenbaum, the first file sharing case ever to reach an appellate court following trial, the court held that the jury’s statutory damages award violated the Due Process Clause, even though the award was within the statutory range set by Congress. Berger discusses the ways in which this decision could negatively impact copyright enforcement for years to come.

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Not Your Father’s Domain Name: How gTLD Expansion is Poised to Change the Way We Navigate the Internet

Apr 20, ’11 3:58 PM

ABSTRACT: International domain-name overseer, ICANN, has been developing plans for the dramatic expansion of available g-TLDs, the .com’s and .gov’s currently so limited in variety that we have them all committed to muscle memory. Proposed regulations allowing for the creation of new dot.possibilities present intuitive marketing opportunities for companies interested in adding sophistication to their online presence. Andy Mcneil explores this potential and the legal challenges that ICANN’s costly and untested regulatory framework present in trademark protection and other strategic marketing competition.

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“Term”inal Illness: Curing the Patent Term Using Empirical Analysis of Patent Globalization

Apr 20, ’11 3:58 PM

ABSTRACT: As patent protection afforded outside the United States becomes increasingly lucrative, the time is ripe to consider recalibrating the duration of patent protection afforded within the United States. Wesley D. Markham takes an empirical approach to this policy-based issue. Specifically, he develops a new metric, the “global patent term” (GPT), and uses it to analyze the patenting strategies of three firms in three very different industries. Based on the results of these three case studies, he concludes that patent globalization is more lucrative in some industries than others. Accordingly, the United States should seriously consider technology-specific patent terms to ensure all firms receive appropriate incentives to innovate.

This Article presents the key findings of Wesley D. Markham’s empirical study and is a condensed version of a longer paper reporting his research. The full paper is available at http://ssrn.com/abstract=1796030.

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“Adapting to the Realities of 21st Century Journalism”: Keith Olbermann and an Examination of Legal and Political Constraints in an Era of Partisan News Outlets

Apr 20, ’11 3:58 PM

ABSTRACT: When NBC News suspended Keith Olbermann for donating to political campaigns and thus violating company policies, the news reporters became the news. The punditry tried to assess whether or not NBC’s decision to suspend their controversial commentator made sense from both journalistic and legal perspectives. Benjamin Kabak argues (i) that newsroom standards and practices codes do not graph accurately onto the demands of the partisan nature of television news commentary and (ii) that Keith Olbermann’s suspension, while likely a legal exercise of NBC’s powers, is highly problematic in the context of a news commentary program with a clear political bend.

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Is Facebook Killing Privacy Softly? The Impact of Facebook’s Default Privacy Settings on Online Privacy

Apr 20, ’11 3:58 PM

ABSTRACT: Facebook has rapidly become one of the most dominant websites on the planet and now boasts over 600 million active user accounts. The site provides users with a platform through which they can share large amounts of personal information, but this functionality, by its very nature, involves an erosion of personal privacy. Facebook has significantly revised its privacy policy over its six-year existence, establishing more intrusive default settings and reducing user control. In light of these changes, Michael J. Kasdan argues that users and regulators alike must continue to monitor the conduct of social networking companies and carefully weigh the benefits of increased interconnectivity against the costs of reduced privacy.

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Regulating the Film Industry in China: A New Approach

Nov 22, ’10 7:00 AM

ABSTRACT: For U.S. filmmakers, the People’s Republic of China represents a prodigious market opportunity. Yet, true exploitation of the market is simply chimerical due to an obstinate web of import quotas, censorship, and government intervention, all founded upon a guise of cultural protectionism. Brian R. Byrne argues that: (i) China’s authoritarian approach to film distribution, coupled with its deficient intellectual property regime, actually promotes the dissemination of Western culture within its borders – a direct perversion of its intentions; and (ii) in order to achieve its cultural objectives, China must undertake a number of key reforms.

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How to Protect Against a Licensing Partner’s Bankruptcy: Patent Licenses and the Bankruptcy Code

Nov 22, ’10 7:00 AM

ABSTRACT: Since the financial crisis of 2008, many contractual partners who formerly looked rock solid have experienced major cash-flow problems. In addition, it has always been the case that in some fields of technology, such as biotech, a significant number of businesses are expected to fail. Thus, it is important to think through at the outset how a license might be treated by a bankruptcy court, and where possible, to structure the agreement accordingly. How to best do this will depend primarily on whether a party is the patentee or the licensee, and on the extent to which rights are transferred (i.e. whether the transaction results in a sale or merely a license agreement). As Jordan Markham argues, in the context of a bankruptcy proceeding, the patentee is generally better served by a greater, and a licensee by a lesser, transfer of rights.

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