With the passage and implementation of the "first-to-file" provisions of the America Invents Act ... more With the passage and implementation of the "first-to-file" provisions of the America Invents Act of 2011, the U.S. patent system must rely more than ever before on patent documents for its own ontological commitments concerning the existence of claimed kinds of useful objects and processes. This Article provides a comprehensive description of the previously unrecognized function of the patent document in incurring and securing warrants to these ontological commitments, and the respective roles of legal doctrines and practices in the patent system's ontological project. Among other contributions, the resulting metaphysical account serves to reconcile competing interpretations of the written description requirement that have emerged from the Federal Circuit's recent jurisprudence, and to explain why the patent system is willing and able to examine, grant and enforce claims reciting theoretical entities. While this Article is entirely descriptive, it concludes by identifying promising normative and prescriptive implications of this work, including the formulation of an appropriate test for the patent-eligibility of software-implemented inventions in the post-Bilski era.
Section 16(b) of the Securities Exchange Act of 1934 allows for the recovery of short-swing profi... more Section 16(b) of the Securities Exchange Act of 1934 allows for the recovery of short-swing profits realized by certain insiders from trading in a corporation's stock within a period of less than six months. Three generations of corporate law students have been taught the "lowest-in, highest-out" formula that is intended to maximize the disgorgement of shortswing profits under section 16(b). Arnold Jacobs's 1987 treatise presented two hypothetical examples where the formula fell short of the intended maximum, but courts, commentators, and practitioners have largely ignored these theoretical challenges to the formula's validity. This Article identifies Gratz v. Claughton as the first reported real-world example of the formula's failure. Ironically, Gratz has been taught and cited for more than sixty years as a leading authority for the formula's use, not least because of its distinguished author, Judge Learned Hand. This Article argues that Gratz has been misunderstood and that Hand wisely adjudicated this complex case without prescribing or endorsing the formula in any way. It also shows that the formula has no need of Gratz's endorsement, as long as the formula is correctly interpreted as limited to simpler cases where it is mathematically valid. It formalizes and extends Jacobs's results by showing that the formula may fall short of the maximum by up to fifty percent when misused in more complex cases, and has actually fallen short in another more recent case. Finally, it provides online tools to enable practitioners and judges to calculate short-swing liability correctly in all cases.
The author wishes to thank Daniel Cole and Alex Covington for their diligent and their insightful... more The author wishes to thank Daniel Cole and Alex Covington for their diligent and their insightful research assistance, Bernard Chao and Joshua Sarnoff for their helpful suggestions, Jeffrey Lefstin for his useful discussions, and the symposium organizers for the opportunity to participate in such a timely and stimulating discussion about the implications of the Alice decision.
With the passage and implementation of the “first-to-file ” provisions of the America Invents Act... more With the passage and implementation of the “first-to-file ” provisions of the America Invents Act of 2011, the U.S. patent system must rely more than ever before on patent documents for its own ontological commitments concerning the existence of claimed kinds of useful objects and processes. This Article provides a comprehensive description of the previously unrecognized function of the patent document in incurring and securing warrants to these ontological commitments, and the respective roles of legal doctrines and practices in the patent system’s ontological project. Among other contributions, the resulting metaphysical account serves to reconcile competing interpretations of the written description requirement that have emerged from the Federal Circuit’s recent jurisprudence, and to explain why the patent system is willing and able to examine, grant and enforce claims reciting theoretical entities. While this Article is entirely descriptive, it concludes by identifying promising...
Press release on the progress of the Asian American Studies initiative at UT Austin
From Dr. Andrew Chin, lecturer at the LBJ School of Public Affairs and the University Coalition f... more From Dr. Andrew Chin, lecturer at the LBJ School of Public Affairs and the University Coalition for Asian American Studies (UCAAS)'s public relations director. The coalition declares solidarity with Northwestern University's hunger strikes for Asian American Studies and plans to meet with UT President Robert Berdahl to discuss the establishment of a university task force on Asian American Studies at UT.
Brief Amici Curiae of Intellectual Property Professors in Support of Petitioners
SSRN Electronic Journal, 2016
The Supreme Court has made clear that, absent a clear expression from Congress, U.S. laws do not ... more The Supreme Court has made clear that, absent a clear expression from Congress, U.S. laws do not apply extraterritorially. The Court has noted that the presumption against extraterritoriality has particular force in the context of patent law. The Federal Circuit has given short shrift to this argument. This brief argues that this case presents the opportunity for the Court to strike the appropriate extraterritorial reach for a U.S. patent under 35 U.S.C. § 271(f) and to signal to the Federal Circuit to take the presumption against extraterritoriality seriously.On the merits, the brief offers two approaches to answer this question. The first, following the typical approach to extraterritoriality, argues that the Federal Circuit’s interpretation was unnecessarily broad in light of the presumption against extraterritoriality.Second, the brief offers an alternative approach for patent law, drawing on academic literature, criminal law, and trademark law: courts should consider the potential for conflicts with foreign law in assessing whether liability for patent infringement is appropriate.
In recent years, the U.S. mathematical community has been directing unprecedented attention to th... more In recent years, the U.S. mathematical community has been directing unprecedented attention to the problem of partisan gerrymandering, aided by computational advances and spurred by litigation challenging the spate of extreme partisan redistricting that followed the 2010 census. As North Carolina scholars who have been involved in the landmark Rucho v. Common Cause litigation, we have written this Article with the threefold aim of explaining how the expert analysis of North Carolina's congressional map was performed, how it was used to substantiate the plaintiffs' claims at trial and on remand, and crucially, how it may serve to address the justiciability concerns that have long attended the Supreme Court's partisan gerrymandering jurisprudence and have represented the legal context for our work.
The Federal Circuit has suggested in some recent cases that any algorithm can serve as adequate s... more The Federal Circuit has suggested in some recent cases that any algorithm can serve as adequate structural support for a means-plus-function element in a software patent claim under § 112(f). A recent proposal by Mark Lemley fully endorses this proposition and seeks its broader application. The concept of an algorithm, however, is too slippery to serve as the basis for such a rule. In this Article, I argue that this overreliance on the algorithm concept originated in a revisionist gloss on the Federal Circuit\u27s 1994 Alappat decision. Informed by a closer reading of what Alappat actually has to say about claim construction under § 112(f), I propose a more stable concrete causation standard that is not only applicable to all technologies, but also well-aligned with the reforms in the software field intended by Lemley\u27s proposal
Recent books by Professors James Bessen and Michael Meurer and by economist Ben Klemens have argu... more Recent books by Professors James Bessen and Michael Meurer and by economist Ben Klemens have argued that software warrants technologyspecific treatment in patent doctrine. This article argues that the authors' categorical claims about software are unsupported by computer science, and therefore cannot support their sweeping proposals regarding software patents as a matter of law. Such proposals therefore remain subject to empirical examination and critique as policy choices, and are unlikely to be achieved through judicially developed doctrines. ON ABSTRACTION AND EQUIVALENCE [ Can't Use: Patents, Copyright, and Software, 2 in which he argued that software (and general-purpose computers programmed with software) should not be patentable. 3 Klemens has subsequently clarified and elaborated this argument in a law review article 4 and founded the End Software Patents Project, an organization seeking "to eliminate patents for software and other designs with no physically innovative step." 5
Like many other animals, humans have extended the functional reach of their bodies by inventing t... more Like many other animals, humans have extended the functional reach of their bodies by inventing tools to achieve their goals. At the most fundamental level, progress in the useful arts can be measured by the extent to which humans can make and use these tools to produce the results and effects they desire. Patent claims properly demarcate this progress when they define these tools (or methods of making or using them), not merely where and how far the tools reach. Kinematic properties, which describe the geometric motions of structural elements without regard to the forces that cause them to move, should therefore not be considered sufficiently concrete to delineate the scope of a mechanical patent claim. This Article critically examines kinematically abstract claims in the U.S. surgical robotics industry, where claims purporting to cover all mechanisms exhibiting a specific kinematic property are widespread. First, it describes the role of patents and kinematic claiming in Intuitive Surgical's emergence as the industry's monopolist in 2003 and in some of the subsequent challenges the company has faced from competing innovators and patent owners. Second, it draws on results from physics and geometry to explain why kinematically abstract claims logically fall under longstanding doctrinal exclusions of mathematical theorems and
INTRODUCTION Software-related inventions have had an uneasy relationship with the patent-eligible... more INTRODUCTION Software-related inventions have had an uneasy relationship with the patent-eligible subject matter requirement of Section 101 of the Patent Act. In applying the requirement, the Supreme Court has historically characterized mathematical algorithms and formulas simpliciter as sufficiently analogous to laws of nature to warrant judicial exclusion as abstract ideas. The Court has also found “the mere recitation of a generic computer” in a patent claim as tantamount to “adding the words ‘apply it with a computer,’” a mere drafting effort that does not relieve “the preemption concern that undergirds our § 101 jurisprudence.” Lower courts, patent counsel and commentators have struggled to apply these broad principles to specific software-related inventions, a difficulty largely rooted in the many forms and levels of abstraction in which mathematical algorithms can be situated, both in the computing context and in the terms of a patent claim. Consequently, widely varying appro...
Page 1. Artful Prior Art and the Quality of DNA Patents Andrew Chin Abstract In reviewing patent ... more Page 1. Artful Prior Art and the Quality of DNA Patents Andrew Chin Abstract In reviewing patent applications and prior art references in biotechnol-ogy, the patent system often unduly focuses on the extent to which these documents ...
Differential Privacy as a Response to the Reidentification Threat: The Facebook Advertiser Case Study
ABSTRACT Recent computer science research on the reidentification of individuals from anonymized ... more ABSTRACT Recent computer science research on the reidentification of individuals from anonymized data has given some observers in the legal community the impression that the utilization of data is incompatible with strong privacy guarantees, leaving few options for balancing privacy and utility in various data-intensive settings. This bleak assessment is incomplete and somewhat misleading, however, because it fails to recognize the promise of technologies that support anonymity under a standard that computer scientists call differential privacy. This standard is met by a database system that behaves similarly whether or not any particular individual is represented in the database, effectively producing anonymity. Although a number of computer scientists agree that these technologies can offer privacy-protecting advantages over traditional approaches such as redaction of personally identifiable information from shared data, the legal community’s critique has focused on the burden that these technologies place on the utility of the data. Empirical evidence, however, suggests that at least one highly successful business, Facebook, has implemented such privacy-preserving technologies in support of anonymity promises while also meeting commercial demands for utility of certain shared data. This Article uses a reverse-engineering approach to infer that Facebook appears to be using differential privacy-supporting technologies in its interactive query system to report audience reach data to prospective users of its targeted advertising system, without apparent loss of utility. This case study provides an opportunity to consider criteria for identifying contexts where privacy laws might draw benefits from the adoption of a differential privacy standard similar to that apparently met by Facebook’s advertising audience reach database. United States privacy law is a collection of many different sectoral statutes and regulations, torts, and constitutional law, and some areas are more amenable to incorporation of the differential privacy standard than others. This Article highlights some opportunities for recognition of the differential privacy standard as a best practice or a presumption of compliance for privacy, while acknowledging certain limitations on the transferability of the Facebook example.
With the passage and implementation of the "first-to-file" provisions of the America Invents Act ... more With the passage and implementation of the "first-to-file" provisions of the America Invents Act of 2011, the U.S. patent system must rely more than ever before on patent documents for its own ontological commitments concerning the existence of claimed kinds of useful objects and processes. This Article provides a comprehensive description of the previously unrecognized function of the patent document in incurring and securing warrants to these ontological commitments, and the respective roles of legal doctrines and practices in the patent system's ontological project. Among other contributions, the resulting metaphysical account serves to reconcile competing interpretations of the written description requirement that have emerged from the Federal Circuit's recent jurisprudence, and to explain why the patent system is willing and able to examine, grant and enforce claims reciting theoretical entities. While this Article is entirely descriptive, it concludes by identifying promising normative and prescriptive implications of this work, including the formulation of an appropriate test for the patent-eligibility of software-implemented inventions in the post-Bilski era.
Section 16(b) of the Securities Exchange Act of 1934 allows for the recovery of short-swing profi... more Section 16(b) of the Securities Exchange Act of 1934 allows for the recovery of short-swing profits realized by certain insiders from trading in a corporation's stock within a period of less than six months. Three generations of corporate law students have been taught the "lowest-in, highest-out" formula that is intended to maximize the disgorgement of shortswing profits under section 16(b). Arnold Jacobs's 1987 treatise presented two hypothetical examples where the formula fell short of the intended maximum, but courts, commentators, and practitioners have largely ignored these theoretical challenges to the formula's validity. This Article identifies Gratz v. Claughton as the first reported real-world example of the formula's failure. Ironically, Gratz has been taught and cited for more than sixty years as a leading authority for the formula's use, not least because of its distinguished author, Judge Learned Hand. This Article argues that Gratz has been misunderstood and that Hand wisely adjudicated this complex case without prescribing or endorsing the formula in any way. It also shows that the formula has no need of Gratz's endorsement, as long as the formula is correctly interpreted as limited to simpler cases where it is mathematically valid. It formalizes and extends Jacobs's results by showing that the formula may fall short of the maximum by up to fifty percent when misused in more complex cases, and has actually fallen short in another more recent case. Finally, it provides online tools to enable practitioners and judges to calculate short-swing liability correctly in all cases.
The author wishes to thank Daniel Cole and Alex Covington for their diligent and their insightful... more The author wishes to thank Daniel Cole and Alex Covington for their diligent and their insightful research assistance, Bernard Chao and Joshua Sarnoff for their helpful suggestions, Jeffrey Lefstin for his useful discussions, and the symposium organizers for the opportunity to participate in such a timely and stimulating discussion about the implications of the Alice decision.
With the passage and implementation of the “first-to-file ” provisions of the America Invents Act... more With the passage and implementation of the “first-to-file ” provisions of the America Invents Act of 2011, the U.S. patent system must rely more than ever before on patent documents for its own ontological commitments concerning the existence of claimed kinds of useful objects and processes. This Article provides a comprehensive description of the previously unrecognized function of the patent document in incurring and securing warrants to these ontological commitments, and the respective roles of legal doctrines and practices in the patent system’s ontological project. Among other contributions, the resulting metaphysical account serves to reconcile competing interpretations of the written description requirement that have emerged from the Federal Circuit’s recent jurisprudence, and to explain why the patent system is willing and able to examine, grant and enforce claims reciting theoretical entities. While this Article is entirely descriptive, it concludes by identifying promising...
Press release on the progress of the Asian American Studies initiative at UT Austin
From Dr. Andrew Chin, lecturer at the LBJ School of Public Affairs and the University Coalition f... more From Dr. Andrew Chin, lecturer at the LBJ School of Public Affairs and the University Coalition for Asian American Studies (UCAAS)'s public relations director. The coalition declares solidarity with Northwestern University's hunger strikes for Asian American Studies and plans to meet with UT President Robert Berdahl to discuss the establishment of a university task force on Asian American Studies at UT.
Brief Amici Curiae of Intellectual Property Professors in Support of Petitioners
SSRN Electronic Journal, 2016
The Supreme Court has made clear that, absent a clear expression from Congress, U.S. laws do not ... more The Supreme Court has made clear that, absent a clear expression from Congress, U.S. laws do not apply extraterritorially. The Court has noted that the presumption against extraterritoriality has particular force in the context of patent law. The Federal Circuit has given short shrift to this argument. This brief argues that this case presents the opportunity for the Court to strike the appropriate extraterritorial reach for a U.S. patent under 35 U.S.C. § 271(f) and to signal to the Federal Circuit to take the presumption against extraterritoriality seriously.On the merits, the brief offers two approaches to answer this question. The first, following the typical approach to extraterritoriality, argues that the Federal Circuit’s interpretation was unnecessarily broad in light of the presumption against extraterritoriality.Second, the brief offers an alternative approach for patent law, drawing on academic literature, criminal law, and trademark law: courts should consider the potential for conflicts with foreign law in assessing whether liability for patent infringement is appropriate.
In recent years, the U.S. mathematical community has been directing unprecedented attention to th... more In recent years, the U.S. mathematical community has been directing unprecedented attention to the problem of partisan gerrymandering, aided by computational advances and spurred by litigation challenging the spate of extreme partisan redistricting that followed the 2010 census. As North Carolina scholars who have been involved in the landmark Rucho v. Common Cause litigation, we have written this Article with the threefold aim of explaining how the expert analysis of North Carolina's congressional map was performed, how it was used to substantiate the plaintiffs' claims at trial and on remand, and crucially, how it may serve to address the justiciability concerns that have long attended the Supreme Court's partisan gerrymandering jurisprudence and have represented the legal context for our work.
The Federal Circuit has suggested in some recent cases that any algorithm can serve as adequate s... more The Federal Circuit has suggested in some recent cases that any algorithm can serve as adequate structural support for a means-plus-function element in a software patent claim under § 112(f). A recent proposal by Mark Lemley fully endorses this proposition and seeks its broader application. The concept of an algorithm, however, is too slippery to serve as the basis for such a rule. In this Article, I argue that this overreliance on the algorithm concept originated in a revisionist gloss on the Federal Circuit\u27s 1994 Alappat decision. Informed by a closer reading of what Alappat actually has to say about claim construction under § 112(f), I propose a more stable concrete causation standard that is not only applicable to all technologies, but also well-aligned with the reforms in the software field intended by Lemley\u27s proposal
Recent books by Professors James Bessen and Michael Meurer and by economist Ben Klemens have argu... more Recent books by Professors James Bessen and Michael Meurer and by economist Ben Klemens have argued that software warrants technologyspecific treatment in patent doctrine. This article argues that the authors' categorical claims about software are unsupported by computer science, and therefore cannot support their sweeping proposals regarding software patents as a matter of law. Such proposals therefore remain subject to empirical examination and critique as policy choices, and are unlikely to be achieved through judicially developed doctrines. ON ABSTRACTION AND EQUIVALENCE [ Can't Use: Patents, Copyright, and Software, 2 in which he argued that software (and general-purpose computers programmed with software) should not be patentable. 3 Klemens has subsequently clarified and elaborated this argument in a law review article 4 and founded the End Software Patents Project, an organization seeking "to eliminate patents for software and other designs with no physically innovative step." 5
Like many other animals, humans have extended the functional reach of their bodies by inventing t... more Like many other animals, humans have extended the functional reach of their bodies by inventing tools to achieve their goals. At the most fundamental level, progress in the useful arts can be measured by the extent to which humans can make and use these tools to produce the results and effects they desire. Patent claims properly demarcate this progress when they define these tools (or methods of making or using them), not merely where and how far the tools reach. Kinematic properties, which describe the geometric motions of structural elements without regard to the forces that cause them to move, should therefore not be considered sufficiently concrete to delineate the scope of a mechanical patent claim. This Article critically examines kinematically abstract claims in the U.S. surgical robotics industry, where claims purporting to cover all mechanisms exhibiting a specific kinematic property are widespread. First, it describes the role of patents and kinematic claiming in Intuitive Surgical's emergence as the industry's monopolist in 2003 and in some of the subsequent challenges the company has faced from competing innovators and patent owners. Second, it draws on results from physics and geometry to explain why kinematically abstract claims logically fall under longstanding doctrinal exclusions of mathematical theorems and
INTRODUCTION Software-related inventions have had an uneasy relationship with the patent-eligible... more INTRODUCTION Software-related inventions have had an uneasy relationship with the patent-eligible subject matter requirement of Section 101 of the Patent Act. In applying the requirement, the Supreme Court has historically characterized mathematical algorithms and formulas simpliciter as sufficiently analogous to laws of nature to warrant judicial exclusion as abstract ideas. The Court has also found “the mere recitation of a generic computer” in a patent claim as tantamount to “adding the words ‘apply it with a computer,’” a mere drafting effort that does not relieve “the preemption concern that undergirds our § 101 jurisprudence.” Lower courts, patent counsel and commentators have struggled to apply these broad principles to specific software-related inventions, a difficulty largely rooted in the many forms and levels of abstraction in which mathematical algorithms can be situated, both in the computing context and in the terms of a patent claim. Consequently, widely varying appro...
Page 1. Artful Prior Art and the Quality of DNA Patents Andrew Chin Abstract In reviewing patent ... more Page 1. Artful Prior Art and the Quality of DNA Patents Andrew Chin Abstract In reviewing patent applications and prior art references in biotechnol-ogy, the patent system often unduly focuses on the extent to which these documents ...
Differential Privacy as a Response to the Reidentification Threat: The Facebook Advertiser Case Study
ABSTRACT Recent computer science research on the reidentification of individuals from anonymized ... more ABSTRACT Recent computer science research on the reidentification of individuals from anonymized data has given some observers in the legal community the impression that the utilization of data is incompatible with strong privacy guarantees, leaving few options for balancing privacy and utility in various data-intensive settings. This bleak assessment is incomplete and somewhat misleading, however, because it fails to recognize the promise of technologies that support anonymity under a standard that computer scientists call differential privacy. This standard is met by a database system that behaves similarly whether or not any particular individual is represented in the database, effectively producing anonymity. Although a number of computer scientists agree that these technologies can offer privacy-protecting advantages over traditional approaches such as redaction of personally identifiable information from shared data, the legal community’s critique has focused on the burden that these technologies place on the utility of the data. Empirical evidence, however, suggests that at least one highly successful business, Facebook, has implemented such privacy-preserving technologies in support of anonymity promises while also meeting commercial demands for utility of certain shared data. This Article uses a reverse-engineering approach to infer that Facebook appears to be using differential privacy-supporting technologies in its interactive query system to report audience reach data to prospective users of its targeted advertising system, without apparent loss of utility. This case study provides an opportunity to consider criteria for identifying contexts where privacy laws might draw benefits from the adoption of a differential privacy standard similar to that apparently met by Facebook’s advertising audience reach database. United States privacy law is a collection of many different sectoral statutes and regulations, torts, and constitutional law, and some areas are more amenable to incorporation of the differential privacy standard than others. This Article highlights some opportunities for recognition of the differential privacy standard as a best practice or a presumption of compliance for privacy, while acknowledging certain limitations on the transferability of the Facebook example.
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