• Archive for October, 2010

    Professor Schwartz posts “Explaining the Demise of the Doctrine of Equivalents”

    by  • October 20, 2010 • Scholarship • 0 Comments

    Professor David Schwartz has posted a new paper on patent law.  It's called Explaining the Demise of the Doctrine of Equivalents, and it will be appearing in the Berkeley Technology Law Journal.  Here is the abstract:

    This article provides a novel theoretical model and extensive empirical evidence to explain the decline of a historically important patent law doctrine known as the “doctrine of equivalents.” In recent years, distinguished academics have studied the doctrine of equivalents. While these scholars noted that the doctrine of equivalents had decreased in its successful use and provided some grounds for the decline, none clearly explained why. As such, the cause and precise mechanism behind the so-called “demise” of the doctrine of equivalents have largely remained a mystery. 
    This article explains that the demise occurred because of two complementary forces discussed for the first time in this article: “doctrinal reallocation” and “doctrinal displacement.” Under doctrinal reallocation, a substantive doctrine may become more important after a shift in adjudicative control over that doctrine, for example, through reallocation of the decision-making authority from a jury to a judge. Doctrinal displacement posits that an increase in the importance of a doctrine may in turn decrease the importance of another, typically related, doctrine. This article’s empirical results support the position that the demise of the doctrine of equivalents was a result of these twin forces.

    Download the paper here.


    Retribution and the Experience of Punishment

    by  • October 18, 2010 • Scholarship • 0 Comments

    By Christopher Buccafusco

    I have posted a new article to SSRN co-authored with John Bronsteen and Jonathan Masur. The paper is called Retribution and the Experience of Punishment, and it will be appearing in the California Law Review shortly. It responds to two papers by Dan Markel & Chad Flanders and by David Gray that in turn took up issues we raised in an earlier paper called Happiness and Punishment. Here is the abstract of the new paper:

    In a prior article, we argued that punishment theorists need to take into account the counterintuitive findings from hedonic psychology about how offenders typically experience punishment. Punishment generally involves the imposition of negative experience. The reason that greater fines and prison sentences constitute more severe punishments than lesser ones is, in large part, that they are assumed to impose greater negative experience. Hedonic adaptation reduces that difference in negative experience, thereby undermining efforts to achieve proportionality in punishment. Anyone who values punishing more serious crimes more severely than less serious crimes by an appropriate amount — as virtually everyone does — must therefore confront the implications of hedonic adaptation. Moreover, the unadaptable negativity of post-prison life which is caused by the experience of imprisonment results in punishments that go on far longer than is typically assumed. Objectivist retributive theories that fail to incorporate these facts risk creating grossly excessive punishments. Certain retributivists have disputed the claim that adaptation is important to punishment theory, but their arguments are unavailing.

    You can download our new paper here. You can download Markel & Flanders’s paper here and Gray’s paper here. Happiness and Punishment is available here. Collect all four.

    How Should We Think About Free Speech?

    by  • October 18, 2010 • Scholarship • 0 Comments

    Constitution Day Address: 
    “How Should We Think About Free Speech?
    Justice Holmes, Justice Brandeis, and the First Amendment”

    — Steven J. Heyman

    Professor Heyman gave the following talk at Chicago-Kent College of Law, Illinois Institute of Technology, on September 16, 2010 in observance of Constitution Day. The talk is based on an article entitled “The Dark Side of the Force:  The Legacy of Justice Holmes for First Amendment Jurisprudence”, which will be published next year in volume 19 of the William and Mary Bill of Rights Journal.  © Copyright 2010 by Steven J. Heyman.

    Thank you all for coming this afternoon.  It’s an honor to take part in this observance of Constitution Day. I suppose that everyone has a favorite part of the Constitution.  In my case, it’s the First Amendment, which guarantees the freedom of speech and press.  Everyone would agree that those freedoms lie at the heart of our constitutional order.  But it seems to me that there is something deeply conflicted, and even schizophrenic, about our understanding of those freedoms.  On one hand, free speech is said to promote important values like individual autonomy, democratic self-government, and the search for truth.  And its easy to think of First Amendment decisions that represent important victories for those values.  Some cases that come to mind are West Virginia Board of Education v. Barnette,[1] which held that individuals could not be forced to salute the flag, and New York Times v. Sullivan,[2] which established a broad right to criticize public officials.  But on the other hand, there are some major First Amendment decisions that to me at least seem appalling.  One example is R.A.V.  v. City of St. Paul,[3] which struck down a ban on cross-burning in front of someone’s house.  Another example is Florida Star v. B.J.F., which held that states could not protect the privacy of rape victims by telling the press not to publish their names. 


    Live Blogging the Chicago-Kent Intellectual Property Supreme Court Review

    by  • October 5, 2010 • Faculty Commentary, Faculty Workshops/ Conferences, Student Contributions • 0 Comments

    Posted by Timothy Peterson, JD student

    Professor David Schwartz moderated, and the Honorable James Zagel and Professor Donald Chisum participated today in a panel on Bilski v. Kappos.

    In Bilski v. Kappos, the Supreme Court held that the Federal Circuit’s “Machine-or-Transformation” test was not the exclusive test for determining whether an invention is directed toward patentable subject matter. The Court referred to the language of 35 U.S.C. 101 and affirmed prior precedent that “laws of nature, physical phenomena, and abstract ideas” are not patentable. The Machine-or-Transformation test is, however, still an important clue to patentability. The Court also held that business methods are not entirely excluded from patentability but that Bilski’s patent was unpatentable as directed toward an abstract idea. A concurrence, written by Justice Stevens, argued that business methods are not directed toward patentable subject matter and cited extensive history to that effect. Justice Breyer wrote a second concurrence, clarifying points of agreement between all of the justices: that patentable subject matter is broad but not without limits, that the Machine-or-Transformation test is a useful clue to patentability, but that Machine-or-Transformation is not the exclusive test, and also that the standard of State Street Bank has been overruled.

    Professor Schwartz asked what Bilski meant going forward.

    Judge Zagel said that the Supreme Court was saying that “the Federal Circuit was wrong, but they weren’t that far off.” Every judge who saw the case, with one exception (Judge Newman), said that Bilski’s invention was not patentable. The problem was to formulate the proper language for the test. The Supreme Court said, be very, very careful about process patents, and that presents no dilemma at all for the judiciary because in making a decision, “you run down a list of considerations and at some point make a decision.” Bilski is more an issue of language used to justify that decision.

    Professor Chisum said, “Bilski tells me very little.” He felt that the Supreme Court held that Bilski’s invention was unpatentable because “this is an abstract idea.” Then he went on to wonder, “what does that mean?” He agreed that, “judges do and should reach an intuitional judgment about patentability.” But Chisum found it “disturbing” that the Supreme Court held that Bilski’s patent is an abstract idea but made that statement in the abstract – without cited factual evidence. (more…)