IP News — Fall 2021
Chicago-Kent hosted its annual Supreme Court IP Review on September 10 and October 1. Because of the pandemic, the conference was held online with a large audience.
Chicago-Kent Associate Professor Greg Reilly moderated the Patent Session, which analyzed the Supreme Court’s decisions in Minerva Surgical Inc. v. Hologic Inc. and US v. Arthrex Inc. Prof. Mark Lemley of Stanford Law School, Caroline Wong of Sidley Austin LLP, counsel to Minerva Surgical Inc., and Luke McCloud of Williams & Connolly LLP, counsel to amicus curiae United Therapeutics Corp., debated the significance and likely consequences of the Court’s holding in Minerva. The court held that the well-grounded patent law doctrine of assignor estoppel applies only when the assignor’s claim of invalidity contradicts explicit or implicit representations the assignor made. In the panel on Arthrex, Professor Melissa Wasserman of The University of Texas at Austin School of Law, Professor Harold Krent of Chicago-Kent, and Anthony Cho, Carlson, Gaskey & Olds P.C., counsel to Arthrex, analyzed the court’s fractured decision. The court held that the unreviewable authority of administrative patent judges in the Patent Trial and Appeal Board violated the Appointments Clause, but that, to fix the violation, the Director of the U.S. Patent and Trademark Office has the discretion to review the decisions of the administrative patent judges.
Chicago-Kent Professor Edward Lee moderated the Copyright Session, which analyzed the Supreme Court’s decision in Google LLC v. Oracle America Inc. Reversing the Federal Circuit’s decision, the Supreme Court held that Google’s copying of the Java SE Application Programming Interface for use in Google’s Android program was a transformative fair use under copyright law. Thomas Goldstein, Goldstein & Russell, P.C., counsel to Google, Professor Peter Menell of UC Berkeley School of Law, Professor Pamela Samuelson of UC Berkeley School of Law, and Professor Rebecca Tushnet, Harvard Law School discussed the significance of the decision for the copyright industry and other sectors and types of works beyond computer programs. The Copyright Session also previewed the upcoming case Unicolors, Inc. v. H&M Hennes & Mauritz, LP. The Court will decide the statutory standard related to copyright registrations containing incorrect information, specifically, “[w]hether 17 U.S.C. § 411 requires referral to the Copyright Office where there is no indicia of fraud or material error as to the work at issue in the subject copyright registration.” Scott Burroughs of Doniger Burroughs, counsel to Unicolors, Inc. and Elizabeth Brannen of Stris & Maher, counsel to H&M Hennes & Mauritz, presented their opposing views on the issue.
The 2021 Supreme Court IP Review was sponsored by the law firms Greensfelder, McAndrews, McDonnell Boehnen Hulbert & Berghoff LLP, Much Shelist P.C., and Seyfarth.
Nancy S. Kim Named Inaugural Michael Paul Galvin Chair in Entrepreneurship and Applied Legal Technology
Law and technology scholar Nancy S. Kim has joined Chicago-Kent as the inaugural Michael Paul Galvin Chair in Entrepreneurship and Applied Legal Technology. In addition to teaching law school courses, she will engage in interdisciplinary research and facilitate law student involvement at the Ed Kaplan Family Institute for Innovation and Tech Entrepreneurship at Illinois Institute of Technology.
Under the leadership of Director Roger Rozanski, Chicago-Kent’s Patent Hub had another strong year in assisting under-resourced inventors. The Hub matched eligible applicants with volunteer patent lawyers and agents to provide pro bono assistance in filing patent applications. Despite the pandemic, the Patent Hub had a 41% increase in the number of applicants interviewed and a 95% increase in the number of applicants placed compared to the prior year.
During the past year, the Patent Hub interviewed 127 inventor applicants to determine their eligibility for the pro bono program based on income and their inventions. Over 51% of applicants identified as African American/Black; 24% white; 14% multiracial; 10.2% Hispanic, Latinx, or Spanish Origin; 1.6% Asian, Pacific Islander, or Native Hawaiian; and 1.6% American Indian or Alaska Native. African American/Black women comprised the largest demographic of inventors based on gender and race, at 29% of the applicants.
The Patent Hub approved and matched 43 eligible inventors with volunteer patent professionals. The inventors who received pro bono legal assistance identified as follows: 35% African American/Black; 21% white; 19% multiracial; 11.6% Hispanic, Latinx, or Spanish Origin; and 4.7% Asian, Pacific Islander, or Native Hawaiian. African American/Black women comprised the largest demographic based on gender and race, at 23.3% of the inventors who received pro bono assistance.
The Patent Hub works closely with the students at Chicago-Kent College of Law and has enhanced the training of especially patent students. In spring 2021, five students enrolled in a Patent Practicum taught by Rozanski. The students learned and applied patent application drafting and preparation skills. In addition to their coursework, the students worked throughout the semester with volunteer attorney Brent Whitlock of Brent Whitlock Law, LLC to complete a draft of a patent application for a Patent Hub inventor. Additionally, eight other students assisted with the interviews of inventors and prior art searching throughout the fall and spring semesters.
The Patent Hub continues its outreach and assistance in matching inventors with patent professionals. So far, the Patent Office has granted 66 patents for inventors that have come through the Patent Hub since the first patent that was granted back in August of 2017. Representatives of the Patent Office have praised the Patent Hub as one of the true successes in the national program.
Chicago IP Colloquium speakers
Chicago-Kent College of Law and Loyola University Chicago School of Law jointly sponsor and host the Chicago Intellectual Property Colloquium. Each year during the spring academic semester, Chicago-Kent and Loyola invite six nationally renowned intellectual property scholars to Chicago to present and discuss their current research projects before intellectual property faculty from Chicago-area law schools and selected students from Chicago-Kent and Loyola. Confirmed speakers for Spring 2022 include:
- Jonas Anderson, American University Washington College of Law
- Kevin J. Greene, Southwestern Law School
- Sonia Katyal, UC Berkeley School of Law
- Ana Santos Rutschman, Saint Louis University School of Law
- Xiying Tang, UCLA School of Law
The topics typically provide students with exposure to a broad range of IP topics, both domestic and international, and theoretical and empirical.
Intellectual Property Faculty Activities
Graeme Dinwoodie, et al. (eds.), Research Handbook on Trademark Law Reform (Edward Elgar Press 2021).
Graeme Dinwoodie, et al. (eds.), Transition and Coherence in Intellectual Property Law: Essays in Honour of Annette Kur (Cambridge Univ. Press 2021).
Graeme Dinwoodie, Universalism in International Copyright Law as Seen Through the Lens of Marrakesh, in Intellectual Property Ordering Beyond Borders (Khan & Metzger eds., Cambridge Univ. Press, forthcoming 2022).
Graeme Dinwoodie, Rogers and the Structure of Trademark Defenses (or Artistic Expression: Does the Ninth Circuit Give a S**t?), in Trademark Exceptions and Limitations (B. Beebe & Sun eds., Oxford Univ. Press, forthcoming 2022).
Graeme Dinwoodie, International Copyright: The Introduction in International Copyright Law and Practice 1-167 (Lionel Bently, Paul Geller & Melville Nimmer eds., Lexis Nexis, forthcoming 2021).
Graeme Dinwoodie & Rochelle Dreyfuss, Injunctive Relief in Patent Law: A Note on TRIPS, in Injunctions in Patent Law (Martin Husovec & Jorge L. Contreras eds., Cambridge Univ. Press, forthcoming 2021).
Graeme Dinwoodie, The Function of Trademarks in The United States in The Cambridge Handbook of International and Comparative Trademark Law 178-192 (Jane C. Ginsburg & Irene Calboli eds., Cambridge Univ. Press 2021).
Graeme Dinwoodie, Who Are Internet Intermediaries? in The Oxford Handbook of Online Intermediary Liability 37-56 (Frosio ed., Oxford Univ. Press 2021).
Graeme Dinwoodie et al (eds.), The Drivers of Trademark Law Reform: Perspectives From the Academy in Research Handbook on Trademark Law Reform 1-15 (Edward Elgar Press 2021).
Graeme Dinwoodie & Ansgar Ohly, Transition and Coherence in Intellectual Property Law in Transition and Coherence in Intellectual Property Law: Essays in Honour of Annette Kur 489-512 (Cambridge Univ. Press 2021).
Daniel Martin Katz, et al., Measuring Law Over Time: A Network Analytical Framework with an Application to Statutes and Regulations in the United States and Germany, 9 Front. Phys. 658463 (2021).
Daniel Martin Katz, et al., LexNLP: Natural Language Processing and Information Extraction For Legal and Regulatory Texts in Research Handbook on Big Data Law (Roland Vogl ed., Edward Elgar Press 2021).
Daniel Martin Katz, Legal Innovation (Book Forward) in Mapping Legal Innovation: Trends and Perspectives (Antoine Masson & Gavin Robinson eds., Springer 2021).
Nancy S. Kim
Nancy S. Kim, Developments in Digital “Wrap” Contracts, Bus. Law (forthcoming).
Edward Lee & Andrew Moshirnia, Do Experts Matter? A Study of the Effect of Musicologist Testimony in Music Cases, U. Ill. L. Rev. (forthcoming 2022).
Edward Lee & Andrew Moshirnia, Does Fair Use Matter? An Empirical Study of Music Cases, 94 S. Cal. L. Rev. 471 (2021).
Edward Lee, Moderating Content Moderation: A Framework for Nonpartisanship in Online Governance, 70 Am. U. L. Rev. 913 (2021).
Greg Reilly, The Justiciability of Cancelled Patents, 79 Wash. & Lee L. Rev.(forthcoming 2022).
Greg Reilly, Power Over the Patent Right, 95 Tul. L. Rev. 211 (2021).
Richard Warner, Notice and Choice Must Go: The Collective Control Alternative, SMU Sci. & Tech. L. Rev. (forthcoming 2021).
Richard Warner & Robert Sloan, Making Artificial Intelligence Transparent: Fairness and the Problem of Proxy Variables, Criminal Justice Ethics (2021).