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Employee and Inventor Witnesses in Patent Trials

The Blurry Line Between Expert and Lay Testimony

By Alex Reese

Parties in patent infringement lawsuits frequently must choose a witness to explain complex or scientific technology behind an invention or an accused product that sits at the heart of a claim or a defense. Often, the parties select an employee witness such as an engineer, scientist, or a named inventor of the patent-in-suit who can testify based on first-hand experience with the technology in question rather than a hired expert, who must prepare an expert report and who may not share the same incentives and goals as the litigant. Because these employee witnesses testify regarding technical or scientific issues, but they do so from first-hand knowledge, courts have struggled over whether such witnesses must be designated as experts under the Federal Rules of Evidence. This has created a growing conflict among courts over how far a lay witness may go in testifying about technical and scientific matters before crossing the boundary into expert testimony. This Article addresses these conflicting cases and proposes an approach that courts can use to determine which topics in patent cases are appropriate matters only for expert witnesses and which topics may be addressed by highly skilled and knowledgeable lay witnesses.

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April 21, 2013 Cite: 16 Stan. Tech. L. Rev. 423 (2013)


It’s About Time

Privacy, Information Life Cycles, and the Right to be Forgotten

By Meg Leta Ambrose

The current consensus is that information, once online, is there forever. Content permanence has led many European countries, the European Union, and even the United States to establish a right to be forgotten to protect citizens from the shackles of the past presented by the Internet. But, the Internet has not defeated time, and information, like everything, gets old, decays, and dies, even online. Quite the opposite of permanent, the Web cannot be self-preserving. One study from the field of content persistence, a body of research that has been almost wholly overlooked by legal scholars, found that 85% of content disappears in a year and that 59% disappears in a week, signifying a decrease in the lifespan of online content when compared with previous studies.

Those that have debated this privacy issue have consistently done so in terms of permanence and also neglected an important consideration: the changing nature of information over time. Our efforts to address disputes arising from old personal information residing online should focus on the changing value, uses, and needs of information over time and the ethics of preservation. Understanding how information changes over time in relation to its subject, how and where personal information resides online longer than deemed appropriate, and what information is important for preservation allows regulation to be tailored to the problem, correctly framed. This understanding requires an interdisciplinary
approach and the inclusion of research from telecommunications, information theory, information science, behavioral and social sciences, and computer sciences. Recognizing that information does not last forever, this Article takes the initial step of outlining an information life cycle in terms of phases in relation to information needs, creating a taxonomy to help assess the competing values at stake when one seeks to have old personal information “forgotten.”

Some of the proposed legislation makes exceptions for historical, statistical, and public safety needs, but none of it includes time, a vital element to the information life cycle. The Article concludes by working through specific issues like revived interest, the integrity and objectivity of the Internet, and the importance of time in protecting the interests other information needs. Permanence is not yet upon us, and therefore, now is the time to develop policies and practices that will support good decisions, preserve our cultural history, and protect the future of the past, as well as protect the privacy rights of individuals that will live with the information and a society that may suffer from the threat of a permanent record.

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April 19, 2013 Cite: 16 Stan. Tech. L. Rev. 369 (2013)


Only Part of the Picture

A Response to Professor Tushnet's Worth a Thousand Words

By Zahr Kassim Said

Professor Rebecca Tushnet’s recent article Worth a Thousand Words: The Image of Copyright elucidates a number of difficulties in copyright that flow from judicial failures to treat images consistently and rigorously. She argues that courts both assess copyrightability and evaluate potential infringement in ways that rely on a naïve understanding of the way artists create, and indeed, the way viewers receive works of art. The problem is particularly pronounced with respect to what Tushnet calls non-textual works because copyright law’s default to textuality means that the tools and methods that judges use misalign with the objects of their examination.

In this Article, I explain why I am less than fully convinced by Tushnet’s exclusive focus on the visual (or visual exceptionalism). I argue that copyright’s adjudication of all expressive works, not simply visual ones, falls short of ideal. Tushnet’s illuminating analysis helps us see partly why that is. Expressive works—whether visual or verbal or constituted in some other fashion, such as aural, or kinetic—pose a particular and typically unacknowledged problem for courts. Tushnet shows us how, in dealing with images, courts abandon interpretation, or believe it unnecessary. Images are either interpretively opaque—too difficult or impossible to see through and thus adjudicate—or they are transparent—too obvious to necessitate interpretation. Tushnet’s emphasis is on the visual yet her powerful insight may be used as a lens through which to understand copyright’s problems with all expressive works. All expressive works require an interpretive step that courts do not typically acknowledge, a step that delineates what method of interpretation a court will adopt. Thus all cases involving expressive works stand to benefit from the improvements and
adjustments Tushnet proposes.

This Article calls into question the difference Tushnet builds between visual works and other kinds. I argue that while differences between the visual and the verbal do in some instances exist, the differences may not hold the weight that Tushnet’s visual exceptionalism attributes to them. These differences may, as Tushnet discusses, be the product of such far-ranging causes as cultural construction, or innate biological tendency; and or they may be a function of pragmatic considerations embedded in technical and institutional and generic contexts, as I argue. Both visual and verbal modes of expression conform to, or resist or rework, generic and theoretical conventions (such as romance, pastoral, noir, the sentimental; or realism, modernism, surrealism, avant-gardism, postmodernism, respectively). Whether or not it acknowledges it openly, copyright law traffics in aesthetic theories when it deals with artistic works. It follows therefrom that if copyright suffers from aesthetic naiveté, images and words probably suffer equally. If this view is accurate, the issue is less one of visual exceptionalism, and more one of copyright’s need to develop a more finely tuned (or simply more consistent) way of treating expressive works. A fix offered for one might also be a fix well-suited to the others.

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April 18, 2013


What’s the Connection Between Repeat Litigation and Patent Quality?

A (Partial) Defense of the Most Litigated Patents

By Shawn P. Miller

Patent litigation is notoriously expensive, but few patents are ever litigated. Among the fraction that are, only a small group dubbed the “most litigated patents” by Allison, Lemley & Walker are asserted by repeat patent plaintiffs in many lawsuits. While repeat patent plaintiffs are responsible for a disproportionate share of litigation costs, economic theory predicts their patents will be higher quality such that they offset the costs they generate in winning more disputes. Allison, Lemley & Walker, however, find the owners of the most litigated patents overwhelmingly lose in court. This suggests that repeat patent plaintiffs tend to burden innovation by irrationally litigating weak patents through trial. Because of their troubling results, this Article revisits the relationship between the number of lawsuits in which a patent is asserted and its owner’s litigation success. I find owners who assert their patents in more lawsuits generally win more judgments and that this relationship extends to a comparison of most litigated to once litigated patents. These results support an optimistic view of the impact of repeat patent plaintiffs. This optimism does not, however, extend to repeat software patent plaintiffs, who I find are not more likely to win infringement judgments. This fact is not inconsistent with rational software patent owner behavior but is best explained by Bessen and Meurer’s theory that software patents possess more uncertain boundaries.

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April 18, 2013 Cite: 16 Stan. Tech. L. Rev. 313 (2013)


Patenting Nature

A Problem of History

By Christopher Beauchamp

The practice of patenting genetic material is currently under sharp attack. Recent litigation has forced the courts to grapple with the doctrinal basis for patenting DNA sequences identical to those found in nature. Faced with conflicting authorities and difficult policy questions, courts have leaned heavily on history to guide—or at least to justify—their decisions.

This article explores the history in question. It traces the patent law’s changing treatment of “products of nature” in an attempt to untangle the origins of present-day patentability arguments. The evidence suggests that the historical foundations of the bar on patenting products of nature are surprisingly shaky.

The article also reveals how isolated biological materials first came to be patented. This task, I argue, requires looking not only to court decisions, but also to the history of patent practice. My principal vehicle for doing so is the case of Parke-Davis & Co. v. H. K. Mulford Co., a century-old decision by Judge Learned Hand, which now stands as a central (and much disputed) precedent for the patenting of DNA sequences. Parke-Davis arose at a key moment in the sociology of intellectual property, when the American pharmaceutical industry first learned to embrace the power of patents. The article shows how Parke-Davis came to prominence in half-understood form during the biotechnology era, and how the decision’s original rationale suddenly seems poised to play a major role in resolving the gene patent question.

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April 17, 2013 Cite: 16 Stan. Tech. L. Rev. 257 (2013)


Self-Replicating Technologies

By Jeremy N. Sheff

Self-replicating technologies pose a challenge to the legal regimes we ordinarily rely on to promote a balance between innovation and competition. This Article examines recent efforts by the federal courts to deal with the leading edge of this policy challenge in cases involving the quintessential self-replicating technology: the seed. In a recent series of cases involving the invocation of the patent exhaustion defense by purchasers of Monsanto’s “Roundup-Ready” genetically engineered herbicide-resistant crop technologies, farmers have argued that Monsanto’s patent rights do not extend to the second generation of soybeans grown from a patented first-generation seed. In each case, the Federal Circuit found for Monsanto and against the farmers. The Supreme Court is about to take up the issue for the first time.

In this Article, I argue that the Federal Circuit reached the right result in the Roundup-Ready cases, but that it failed to articulate a satisfactory justification for its decisions. That justification, I claim, should be that the patent-based policy set by the Federal Circuit is preferable to alternative legal regimes—such as trade secret and contract law—because it avoids disincentives to competition, innovation, and dissemination of new self-replicating technologies while reducing transaction costs inherent in their commercialization. Importantly, however, not all self-replicating technologies are identical, and a categorical rule exempting them from patent exhaustion doctrine is unwarranted. I propose instead that application of the exhaustion doctrine should depend on the patentee’s ability to charge supracompetitive prices in its primary market where consumers are able to substitute secondary-market embodiments.

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February 19, 2013 Cite: 16 Stan. Tech. L. Rev. 229 (2013)


2013 Symposium: Digital Copyright

Friday, February 22, 2013

By STLR Editors

The Stanford Technology Law Review is proud to announce its 13th Annual Symposium: Digital Copyright.

Friday, February 22nd, 2013 at Stanford Law School.

This year’s symposium will feature the following three panels: a panel on sampling, mixes, and mashups; a panel discussion on the moral rights of digital copyright (and what the US has done to approximate it); and a panel on social media and digital copyright.

CLE Credit: The Stanford Technology Law Review certifies that an application is pending for approval of this activity for 4.5 hours of CLE credit by the State Bar of California.

For more information and free registration, click here.

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January 30, 2013


Vol. 16, Issue 1 of the Stanford Technology Law Review

By STLR Editors

We are pleased to announce the publication of Issue 1 of Volume 16 of the Stanford Technology Law Review. This has been an important year for the Stanford Technology Law Review so far. We have changed our citation and text format, started publishing three times a year, and increased the number of articles we’ve published with each issue.

Our Fall 2012 Issue contains seven articles and notes on a number of topics including patents, copyright, cloud computing, and antitrust inquiry in the smartphone industry. The complete Issue includes:

Michael A. Carrier – WHY THE “SCOPE OF THE PATENT” TEST CANNOT SOLVE THE DRUG PATENT SETTLEMENT PROBLEM

Janet Freilich – PATENT INFRINGEMENT IN THE CONTEXT OF FOLLOW-ON BIOLOGICS

Osagie K. Obasogie & Helen Theung – MOORE IS LESS: WHY THE DEVELOPMENT OF INDUCED PLURIPOTENT STEM CELLS MIGHT LEAD US TO RETHINK DIFFERENTIAL PROPERTY INTERESTS IN EXCISED HUMAN CELLS

W. Kuan Hon, Christopher Millard & Ian Walden – NEGOTIATING CLOUD CONTRACTS: LOOKING AT CLOUDS FROM BOTH SIDES NOW

Martin Skladany – UNCHAINING RICHELIEU’S MONSTER: A TIERED REVENUE-BASED COPYRIGHT REGIME

Robert D. Swanson – SECTION 101 AND COMPUTER-IMPLEMENTED INVENTIONS

Thomas H. Au – ANTICOMPETITIVE TYING AND BUNDLING ARRANGEMENTS IN THE SMARTPHONE INDUSTRY

The entire Issue is now available as single PDF.

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January 28, 2013


Patent Infringement in the Context of Follow-On Biologics

By Janet Freilich

This Article fills a gap in the literature by conducting a comprehensive analysis of patent infringement in the context of follow-on biologics. Patent infringement is an important topic because, like small molecule generic drugs, follow-on biologics are likely to begin their life facing infringement suits. Because it is tremendously expensive to develop a follow-on biologic, it is vital that there be consistency in how they are treated in the courts once the inevitable patent infringement suits arrive. If follow-on biologics companies cannot predict how their product will be received in court, they may decide it is not worth the risk to develop the product. This Article looks at types of strategies industry is likely to use to avoid infringement and how courts are likely to respond to these strategies. This Article focuses predominantly on the doctrine of equivalents, both because it will be particularly important in suits concerning follow-on biologics (it is nearly impossible to make a follow-on biologic identical to the reference drug) and because it represents the outer limits of the scope of a patent, and thus the most difficult cases. The Article is important for courts that must create a coherent body of law where no precedent yet exists, for industry members trying to predict how their products will be received and for policy makers who seek to understand the nature of infringement suits and shape this body of law in a direction that makes sense for all parties involved.

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January 15, 2013 Cite: 16 Stan. Tech. L. Rev. 9 (2012)


Moore is Less

Why the Development of Induced Pluripotent Stem Cells Might Lead Us to Rethink Differential Property Interests in Excised Human Cells

By Osagie K. Obasogie and Helen Theung

Since Moore v. Regents of the University of California, there has been a wide-ranging debate regarding the holding of the case and its implications for property law. Moore stands for the notion that individuals do not have a property interest in ordinary cells taken from their bodies during medical procedures nor the commercial products that researchers might develop from them. At the same time, cases such as Davis v. Davis and Hecht v. Superior Court have asserted that individuals maintain a property interest in other types of cells—namely embryos and gametes (eggs and sperm)—once they are removed from the body. This, among other developments, has led to a fragmented regime in property law pertaining to excised biological materials that turns, in large part, on the type of cell in question: individuals have a diminished interest in regular somatic cells (skin, muscle, etc.) while courts have recognized that people retain a heightened property interest in reproductive cells such as sperm, eggs, and embryos. The articulated reason for the differential property interests in these two cell types is that embryos and gametes have the “potential for human life” while individuals are thought to have little use for ordinary body cells once they are excised.

This default rule has framed property law regarding excised human cells for over two decades. It exists to balance the need for scientists to have access to research materials with individuals’ reproductive autonomy. To the extent that the dividing line determining the property interest in excised cells turns largely upon their “potential for human life,” the recent development of induced pluripotent stem cells (iPSCs) suggests that this default rule is becoming increasingly untenable. Research has shown that iPSCs can create the ability to genetically reprogram somatic cells into a pluripotent state that may allow them to differentiate into other types of cells—including eggs and sperm—that can be used to create new organisms. While these developments have not yet been fully applied to human iPSCs, they nonetheless suggest that iPSCs may soon be able to give ordinary somatic body cells the same potential for human life as naturally produced embryos and gametes but without the corresponding property interest.

This Article argues that given this new technology, its relative success in animal models, and its impending application to human cells, the current default rules precluding individuals’ property interest in excised somatic cells needs substantial reconsideration. We propose a three-part approach to manage the challenges that iPSCs create for this aspect of property law. This includes (1) a self-imposed moratorium on human applications of iPSC research that can lead to human reproduction (2) Congressional action that vests property interests in the donors of somatic cells once their cells have been reprogrammed to a pluripotent state and differentiated into reproductive cells and (3) Judicial action that distinguishes Moore and related cases by acknowledging the reversion of property interest to donors once somatic materials are reprogrammed to a state of pluripotency and differentiated into reproductive cells. This proposal offers the best way to deal with the profound legal issues created by this new technology with the least disruption to existing rules and policy preferences.

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January 15, 2013 Cite: 16 Stan. Tech. L. Rev. 51 (2012)