IP News — Spring 2016
Professor Greg Reilly joins the IP faculty
This fall, Professor Greg Reilly joins the Chicago-Kent faculty to teach patent law and other IP courses. A magna cum laude graduate of Harvard Law School and a former law clerk to Judge Timothy B. Dyk of the U.S. Court of Appeals for the Federal Circuit, Professor Reilly has taught at California Western School of Law and at the University of Chicago Law School as a Bigelow Fellow. He practiced in IP litigation for five years before entering academia.
Professor Reilly's research analyzes patent litigation, decision making in patent law, and claim construction. His recent scholarship includes:
- Decoupling Patent Law, 97 B.U. L. Rev. (forthcoming 2017).
- Patent "Trolls" and Claim Construction, 91 Notre Dame L. Rev. (forthcoming 2016).
- Forum Selling, 89 S. Cal. L. Rev. 241 (2016) (with Daniel M. Klerman).
- Linking Patent Reform and Civil Litigation Reform, 47 Loy. U. Chi. L.J. 179 (2015).
- Completing the Picture of Uncertain Patent Scope, 91 Wash. U. L. Rev. 1353 (2014).
Professor Reilly's scholarship is both theoretical and grounded in actual practice. For example, his article co-authored with Daniel Klerman explains the popularity of the Eastern District of Texas as a place for plaintiffs to file patent infringement suits as an example of "forum selling" by the court: "judges in the Eastern District of Texas, likely motivated by prestige and the desire to benefit the local economy, have sought to attract patent plaintiffs to their district and have distorted the rules and practices relating to case assignment, joinder, discovery, transfer, and summary judgment in a pro-patentee (plaintiff) direction."
Professor Reilly's hiring continues the tradition of exceptional patent scholars who have been members of the Chicago-Kent IP faculty, including the Honorable Kimberly Moore of the Federal Circuit, Professor Timothy Holbrook of Emory Law School, and Professor David Schwartz of Northwestern Pritzker School of Law. Given the significant number of students with engineering and science backgrounds who enroll at Chicago-Kent each year, the patent component of the IP curriculum is particularly important.
"I'm really excited to carry on Chicago-Kent's tradition of excellence in IP scholarship, as well as preparing students for the real world of IP practice," said Professor Reilly. "I also look forward to being part of the vibrant Chicago IP community."
EMPIRICAL IP RESEARCH
Center for Empirical Studies of Intellectual Property awards research grants
Chicago-Kent's Center for Empirical Studies of Intellectual Property (CESIP) created a grant program to fund select research projects that were presented at the Conference on Empirical Research on Copyright Issues, held last fall at Chicago-Kent. The conference topics were based on areas that U.S. Register of Copyrights Maria Pallante identified, in testimony before Congress, as important copyright policy areas in need of further study and analysis: DMCA safe harbors, DMCA anti-circumvention, mass digitization, and moral rights. Associate Register of Copyrights Karyn T. Claggett was an invited participant at the conference. The six CESIP grant recipients may submit their findings to the Copyright Office in the fall for its consideration of these issues.
The 2016 CESIP research grant winners are:
Sharon Bar-Ziv and Niva Elkin-Koren
University of Haifa
Uncovering the Invisible: Studying Algorithmic Online Copyright Infringement
This project analyzes empirical data on the algorithmic implementation of notice and takedown based on an examination of removal requests filed with Google.
Christopher Cotropia and James Gibson
University of Richmond School of Law
DMCA Notice and Takedown at Universities
This project will determine the methods by which institutions of higher education (1) anticipate and proactively address the possibility of copyright infringement taking place using their networks and (2) respond to DMCA notices alleging such infringement.
University of Colorado Boulder
Examining the Impact of DMCA Anti-Circumvention Rules and Exemptions
This project conducts a content analysis (using both qualitative and automated methods) of 40,000 public comments submitted during the 2015 DMCA rulemaking to determine patterns around both content and process and to construct a clearer picture of the concerns that different stakeholders have had about DMCA provisions.
Maayan Perel and Niva Elkin-Koren
University of Haifa
Algorithmic Implementations of DMCA-Plus Measures by Online Intermediaries: Studying How Algorithms Detect Copyright Infringement Through Black Box Tinkering
This project applies a "black box tinkering" methodology to systematically test and record the responses of ISPs to DMCA notices regarding different content involving copyright infringement, fair use, and/or non-infringement.
PRO BONO IP
Chicago-Kent Patent Hub helps low-income inventors and trains students
Launched in October 2015, the Chicago-Kent Patent Hub is already making a difference. The Patent Hub is part of a program initiated by the U.S. Patent and Trademark Office to match inventors who qualify based on income threshold, residency and other requirements with local patent agents or attorneys licensed to practice before the USPTO.
In only a few months, the Chicago-Kent Patent Hub—one of 20 such hubs around the country—received inquiries from 120 inventors, primarily from Illinois. Through a screening process, the Patent Hub determined that 21 of the inventors qualified for the pro bono program and placed them with volunteer attorneys from law firms including DLA Piper; Drinker Biddle; Faegre Baker Daniels; Foley & Lardner; McAndrews, Held & Malloy; McDonnell, Boehnen, Hulbert & Berghoff; Miller, Matthias & Hull; Niro Law; Nixon Peabody; Quarles & Brady; Rosenbaum IP; and SpencePC.
Most of the firms involved in the pro bono program have requested assistance from Chicago-Kent IP students.
"This is a win-win situation for all involved," said Chicago-Kent Patent Hub Director Mary Anne Smith. "Low-income inventors find the necessary legal help to file for a patent. The patent attorneys are able to find meaningful pro bono cases in their area of expertise—something that didn't exist before. And Chicago-Kent students receive invaluable training in drafting patent applications to be filed in the Patent Office."
Students who have worked on pro bono cases rave about the experience. "I've always heard that legal pro bono work is rewarding work. Not only did the Patent Hub at Chicago-Kent allow me to experience it, the program also gave me a chance to work hands-on with experienced patent attorneys in Chicago and to learn from them," stated Kwanwoo Lee, a third-year student in the evening division, who also works as a patent agent at a law firm in Chicago.
Peggy Wojkowski, a second-year student, added, "Volunteering for the Patent Hub is a great opportunity for students to exercise their claim-drafting skills, work alongside fantastic attorneys, and help under-resourced inventors."
Inventors and patent attorneys can learn more about the program and apply online to participate at www.kentlaw.iit.edu/patentprobono.
Chicago-Kent IP students win national moot court and writing awards
The Chicago-Kent appellate advocacy team of Stephanie Crigler and Kenneth Matuszewski placed second overall at the national finals of the 25th annual Saul Lefkowitz Moot Court Competition in March after winning the Midwest regional tournament in February. Crigler and Matuszewski argued before judges of the Trademark Trial and Appeal Board, including Chief Judge Gerard F. Rogers.
En route to their second-place overall finish, Crigler and Matuszewski also won the awards for second-best brief and second-best oral argument. The team was coached by Ashly I. Boesche '04, a partner at Pattishall McAuliffe and an adjunct professor of trademark law. This spring, Boesche was named Alumna of the Year by Chicago-Kent's Intellectual Property Law Society. In her three years as coach for the Lefkowitz competition, Boesche's teams have won the regional competition twice and have placed fourth and second in the nation.
"The entire weekend the national rounds for the Saul Lefkowitz Moot Court Competition took place, it felt like we were in a dream," Matuszewski said. "Hearing the judges' advice and high praise about the sophistication of our arguments was both moving and inspiring. Chief Judge Gerard Rogers even praised our team for a risky concession we made during oral argument. When we heard our names called for all the accolades we won, I almost could not believe it. I know we will never forget the experience for the rest of our lives."
Matuszewski also won the International Trademark Association's (INTA) 2016 Ladas Memorial Award and a $2,500 cash prize for his paper Casting Out Confusion: How Exclusive Appellate Jurisdiction in the Federal Circuit Would Clarify Trademark Law. Each year, two law or graduate student authors worldwide are selected for the award, which honors the best papers on trademark law or related matters.
In his winning paper, Matuszewski delves into the problem of federal trademark law developing differently in each circuit. He argues that exclusive appellate jurisdiction of trademark cases is needed to ensure uniform trademark rights across the country. The paper will be published this fall in the Western Michigan University Cooley Law School's Journal of Practical & Clincial Law and is under consideration by The Trademark Reporter, INTA's legal journal.
"INTA's selection of Kenny's paper as the winner of the Ladas Memorial Award is quite an honor. The paper was provocative, well-researched and well-written," stated Professor Edward Lee, director of Chicago-Kent's Program in Intellectual Property Law. "Winning the Ladas Memorial Award and placing second at the Lefkowitz Competition are both outstanding feats—and testaments not only to the dedication and work of the students but also to the first-rate legal writing and moot court instruction at Chicago-Kent."
Professor Lee and 1L IP Fellows analyze media's use of "patent troll"
Professor Edward Lee's new article on "patent trolls" is due out this month in the Stanford Technology Law Review. The article provides the first empirical study on the media's use of the term "patent troll." The study shows that the media started using the term pervasively in 2006 and every year since, displacing "patent holding company" as the most popular term to describe the entity. Professor Lee hypothesizes that the tipping point occurred with the Blackberry and eBay cases, both of which involved non-practicing entities whose cases were widely reported in 2006. Professor Lee criticizes the media's reporting of the "patent troll" issue as too often one-sided, with very little analysis, statistics, views from the entities, or mention of patent law's lack of a working requirement.
Three 1L IP Fellows—Erika Rodger, Margot Wilson and Raven Zeer—assisted Professor Lee in the empirical study. Chicago-Kent selects several first-year students to serve as 1L IP Fellows based on their promise in the study of copyright, patent or trademark law. During their first year of law school, the 1L IP Fellows work on research projects with IP faculty.
"Having the opportunity to provide research assistance for Professor Lee's patent troll article allowed me to gain incredible insight into the history of a pejorative term that I had often heard but knew little about, especially as a student focused on copyright and trademarks," stated 1L IP Fellow Erika Rodger. "It was such a fulfilling experience seeing the project come full circle from researching the subject, to reading Professor Lee's finished article, to ultimately attending his presentation of the article to Chicago-Kent faculty."
To access the data from the study, visit the project's page on the Center for Empirical Studies of Intellectual Property's website.
Download the paper from SSRN.
ATTENTION IP SCHOLARS
Call for BookIT IP Series talks
Chicago-Kent is accepting nominations from authors to present a talk at the BookIT IP Series on a scholarly book to be published between June 2016 and April 2017. The topics include intellectual property, privacy, cybersecurity, technology, the Internet, and empirical and behavioral studies of the law.
If you are or know of an author who is publishing a book in one of these areas and would like to nominate the book for a talk at Chicago-Kent, please email Patricia O'Neal (firstname.lastname@example.org) with the following information:
- expected publication date
- one-paragraph abstract
Supreme Court IP Review on Thursday, September 22
The Supreme Court IP Review (SCIPR) is a conference designed to provide intellectual property practitioners, jurists, legal academics and law students with a review of IP cases from the U.S. Supreme Court's previous Term, a preview of cases on the docket for the upcoming Term, and a discussion of cert. petitions to watch. This year's SCIPR is scheduled for Thursday, September 22.
For updates about the conference, visit www.kentlaw.iit.edu/scipr.