Category: Uncategorized

This volume includes scholarship from H. Albert Liou and Jasper L. Tran, who explore how Internet research can be used properly and reliably in law; scholarship from Megan Svedman examining issues with the use of copyrights in the world of artificial intelligence; scholarship from Kevin Ashley and Dean Alderucci, discussing the use of artificial intelligence techniques to partially automate patent claim analysis in regards to the definiteness requirement; and scholarship by Ian Schick discussing how the principles of lean production could be adapted to address issues in the patent ecosystem.

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MASTHEAD

Editor-in-Chief
Francesca Campione

Editorial Team

Publishing Editor: Carolyn Griffith
Managing Editors: Keltie Haley & Sachin Patel
Content Editors: Weichih Hsu & Joey Leonard
Audio Editor: Phil Koranteng 

Articles Editors: Garrett Derian-Toth, Payton Hoff, Anis Houssein, Sarah Kelly, Audrey Knutson, Ziyu Ma, Catherine Morgan, Emma Ng, Matthew Ritter, & Rita Xia

Faculty Advisor and Primary Contact: Professor Michael Mattioli
Faculty Advisor: Professor Mark Janis

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CONTENT

“Internet (Re)Search by Judges, Jurors, and Lawyers” by H. Albert Liou and Jasper L. Tran

“Using AI to Analyze Patent Claim Indefiniteness” by
Dean Alderucci and Kevin D. Ashley

“A Production View on Patent Procurement” by Ian C. Schick

“Artificial Creativity: A Case Against Copyright for AI-Created Visual Artwork” by Megan Svedman

“When Standards Collide with Intellectual Property: Teaching About Standard Setting Organizations, Technology, and Microsoft v. Motorola” by Cynthia L. Dahl

“Sea Change: The Rising Tide of Pro Bono Legal Services for the Creative Community” by Victoria F. Phillips

Topic: The Supreme Court’s ruling in Helsinn Healthcare v. Teva Pharmaceuticals

Hosts: Weichih Hsu & Sachin Patel

Music written and supplied by Dr. Robert L. Eoff, Associate Professor in the Department of Biochemistry and Molecular Biology at The University of Arkansas for Medical Sciences.

Topic: Helsinn v. Teva and the America Invents Act

Guest: Professor Timothy R. Holbrook of Emory University School of Law

Timothy R. Holbrook is Vice Provost for Faculty Affairs and Asa Griggs Candler Professor of Law at Emory University.  He is an internationally recognized patent law scholar whose work has explored the role of patent disclosures, the territorial limits of U.S. patent law, and the impact that various biotechnologies and additive manufacturing will have on our patent system.

Music written and supplied by Dr. Robert L. Eoff, Associate Professor in the Department of Biochemistry and Molecular Biology at The University of Arkansas for Medical Sciences.

Topic: The resurgence and history of trademarking of colors.

Hosts: Francesca Campione & Carolyn Griffith

Music written and supplied by Dr. Robert L. Eoff, Associate Professor in the Department of Biochemistry and Molecular Biology at The University of Arkansas for Medical Sciences.

by Scott Locke, Dorf & Nelson LLP

from Volume 8 (2018-2019)

Download this Article in PDF format from The Jerome Hall Law Library’s Digital Repository.

The United States Patent and Trademark Office (“USPTO”) has the privilege of reviewing hundreds of thousands of inventions each year before the public learns about them. Consequently, the USPTO is uniquely positioned as a funnel through which the Government can collect information about new technologies and determine which ones have implications for the safety and welfare of the nation. Under the Invention Secrecy Act, the Commissioner for Patents may order that an invention for which patent protection is sought be kept secret if disclosure of the invention might be detrimental to national security.

In order for the USPTO to review patent applications and then to do its part in protecting national security, while respecting the rights of inventors, the Invention Secrecy Act provides for the implementation of a framework with three primary components: (1) the screening phase, which applies to all patent applications; (2) the maintenance of secrecy phase, which applies to those inventions for which the Government has made a determination of risk to national security; and (3) the compensation phase, which is the phase during which a patent applicant or patentee can request compensation for either or both the loss due to being required to keep the invention secret and the government’s use of the invention prior to issuance of the patent. Failure of inventors to abide by the terms of and to follow the procedures promulgated under the Invention Secrecy Act can have dire consequences, and thus, applicants and persons who counsel them should be aware of its contours, how the USPTO implements it, and how courts interpret it.

Topic: Whether the “Scandalous Marks” provision of the Lanham Act can survive the First Amendment constitutional challenge presented by the owner of the clothing line, “FUCT”

Host: Alex Devilliers

Music written and supplied by Dr. Robert L. Eoff, Associate Professor in the Department of Biochemistry and Molecular Biology at The University of Arkansas for Medical Sciences.

by Perry J. Saidman, Saidman DesignLaw Group, LLC

from Volume 8 (2018-2019)

Download this Article in PDF format from The Jerome Hall Law Library’s Digital Repository.

The Supreme Court in Samsung Electronics Co. v. Apple, Inc. wrestled with the question of determining the meaning of “article of manufacture” in 35 U.S.C. § 289 when it comes to calculating the total profit of the infringer that is awarded to the patentee.

In its Petition for Certiorari, Samsung raised the novel theory that the article of manufacture could be less than the entire product sold by the infringer. The Supreme Court agreed to hear the following issue, as framed in Samsung’s Petition:

Where a design patent is applied to only a component of a product, should an award of infringer’s profits be limited to those profits attributable to the component?

Samsung argued that for a multi-component product, such as a smartphone, the article of manufacture needs to be defined in terms of only portions or components of the smartphone. Since Apple’s design patents were drawn to portions of the iPhone, rather than the entire iPhone, Samsung sought to limit its liability to its total profit on those portions. This would have greatly reduced the jury award of $399 million, which had been based on the total profit derived from Samsung’s sales of their entire smartphones to which the patented designs had been applied.

The Supreme Court said that the only question before it was narrow: “[W]hether, in the case of a multicomponent product, the relevant ‘article of manufacture’ must always be the end product sold to the consumer or whether it can also be a component of that product.”

Looking to the statutory text, the Supreme Court concluded that the term “article of manufacture,” as it is used in § 289, “encompasses both a product sold to a consumer and a component of that product.” The Court further indicated that the term “article of manufacture” is “broad enough to embrace both a product sold to a consumer and a component of that product, whether sold separately or not.” The Court declined, however, to “set out a test for identifying the relevant article of manufacture at the first step of the § 289 damages inquiry.”

Thus, the narrow question left unanswered from Samsung is how to determine the relevant article of manufacture for a multi-component product, such as a kitchen oven (the example given by Justice Sotomayor). If the product is a single component product, such as a dinner plate (again, Justice Sotomayor’s example), there is no issue, because, as she put it, “the product [sold to a consumer] is the ‘article of manufacture’ to which the design has been applied.”

The meaning of “total profit” was not at issue; as the Court stated: “‘[t]otal,’ of course, means all.” Thus, the Court left undisturbed the long-standing design patent rule against apportionment of the infringer’s total profit, as well as its sister rule prohibiting an inquiry into causation.

As noted above, the Court left formulation of a test for determining the article of manufacture to the lower courts in future litigation.