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Volume 66, Issue 4: Federal Circuit Issue
REMARKS: AT&T v. Microsoft: A District Judge’s Perspective

By The Honorable William H. Pauley III66 Am. U. L. Rev. 1015 (2017)

This morning I’d like to talk to you about one of those Supreme Court cases that some commentators have identified as one of the most significant patent cases in the last fifteen years. It’s a case that I have some familiarity with because it started in my courtroom.

In April 2001, AT&T sued Microsoft for infringing its patent relating to speech compression technology. AT&T v. Microsoft was randomly assigned to me from the patent wheel. While I didn’t know much about the suit or about patent law, I did get an inkling that it might turn out to be a large case. Sixteen years later, I can say that my initial hunch was spot on. I want to give you an overview of the case from a trial judge’s perspective.

AT&T had everything a lawyer or judge might want, including all kinds of motions, a jury trial, a settlement, an appeal to the Federal Circuit, a grant of certiorari by the Supreme Court, and an opinion by Justice Ginsburg reversing the Federal Circuit and yours truly. It’s likely that all of you only know AT&T v. Microsoft for its holding under [35 U.S.C. ]§ 271(f). Of course, I didn’t take the Supreme Court’s reversal of my decision personally because I only did what any District Judge strives to do: conform to the law as set out by the Court of Appeals. After all, in patent cases, it’s the Federal Circuit that grades my papers. And the Federal Circuit affirmed my opinion.

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The Patently Unexceptional Venue Statute

By Paul R. Gugliuzza and Megan M. La Belle | 66 Am. U. L. Rev. 1027 (2017)

As this Article goes to press, the Federal Circuit’s interpretation of the patent venue statute is under assault at the Supreme Court in TC Heartland LLC v. Kraft Foods Group Brands LLC.  The petitioner in that case—and other skeptics of Federal Circuit venue doctrine—complain that, because personal jurisdiction in patent cases typically exists in any state in which an infringing product is sold, the Federal Circuit’s interpretation of the venue statute places no meaningful constraints on the plaintiff’s choice of forum.  As we show in this Article, however, such an expansive venue rule is not unusual in federal litigation.  Over the past century, Congress has steadily expanded venue options in all types of federal cases, particularly in cases where the defendant is a corporation.  The leading treatise on civil procedure has gone so far as to say that Congress has “nearly eliminate[d] venue as a separate restriction in cases against corporations.”  Though critics of Federal Circuit venue law have suggested that the Federal Circuit’s interpretation of the venue statute is outside the mainstream, it is those critiques that are, in fact, exceptionalist, as they suggest that venue standards should be more stringent in patent cases than in other types of federal litigation.

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ESSAY: The Federal Circuit’s Acquiescence(?)

By Timothy R. Holbrook66 Am. U. L. Rev. 1061 (2017)

The U.S. Court of Appeals for the Federal Circuit is a unique institution within the federal judiciary.  It is the only intermediate appellate court with nationwide jurisdiction over particular subject matter.  Only the Supreme Court has the same geographic scope.  Of particular importance is its appellate jurisdiction over cases arising under the patent laws. It is also unique that, given its patent expertise, it oversees an expert agency, the United States Patent and Trademark Office (USPTO).  This Essay explores the relationship of the Federal Circuit vis-à-vis the Supreme Court and the USPTO over three periods of time.  It first explores the early years of the court’s existence where, in light of the Supreme Court’s absence from the field of patent law, the Federal Circuit generally ignored—if not overruled—Supreme Court precedent.  Also during this period of time, the Federal Circuit generally refused to defer to the USPTO in a manner inconsistent with administrative law principles.  The second period of time was one of transition:  The Supreme Court began to reengage with patent law, generating resistance from the Federal Circuit.  Similarly, Supreme Court cases and legislative developments began to shift power in patent law away from the Federal Circuit and toward the USPTO.  The third and final era is one of acquiescence to the jurisprudence of the Supreme Court and deference to the USPTO.  However, two pending en banc cases may portend the end of this era of acquiescence, hence the question mark in this Essay’s title. 

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ESSAY: Moral Judgments in Trademark Law

By Ned Snow66 Am. U. L. Rev. 1093 (2017)

Under the federal Lanham Act, eligibility for trademark protection depends on whether a mark is sufficiently moral.  The Federal Circuit has recently held this provision of the Act to be unconstitutional based on its interpretation of speech doctrine.  The context of trademark law, however, refutes this interpretation.  Indeed, speech doctrine appears to support this morality requirement.  Nevertheless, there seems to be another reason that the Federal Circuit held the morality requirement unconstitutional:  the judicial discomfort with morality serving as a basis for law.  This Essay concludes that this judicial discomfort is unjustified in this instance.  From both a constitutional and a policy perspective, morality may and should serve as a basis for denying trademark protection.

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COMMENT: Redefining Reality: Why Design Patent Protection Should Expand to the Virtual World

By John R. Boulé III 66 Am. U. L. Rev. 1113 (2017) 

Virtual reality (“VR”) and augmented reality (“AR”) technologies are rapidly maturing.  Companies like Facebook and Microsoft are capitalizing on these technologies and actively releasing products to consumers.  Both companies’ products blur the line between the real world and the virtual world.  The blurring of this line presents novel questions regarding the protection of digital intellectual property that exists solely within the virtual world.

One such question is whether design patent protection will be available to three-dimensional digital models, models of real-world items that are digitally reproduced in the virtual world.  To receive design patent protection, 35 U.S.C. § 171 requires, inter alia, that the subject matter be an “article of manufacture.”  Based on existing precedent from the U.S. Court of Appeals for the Federal Circuit, it appears the court is reluctant to expand design patent protection to three-dimensional digital models.

This Comment argues that the apparent reluctance of the Federal Circuit to expand intellectual property protections to three-dimensional digital models, as signaled in its recent decisions in In re Nuijten and ClearCorrect Operating, LLC v. International Trade Commission, is at odds with design patent’s § 171.  This Comment analyzes § 171 and its broad interpretation by the Federal Circuit’s predecessor, the Court of Customs and Patent Appeals (CCPA).  After, the Comment contends that the Federal Circuit’s current trend deviates from the CCPA’s precedent and argues that the court should return to the broad interpretation of § 171.  This broad interpretation would provide design patent protection to three-dimensional digital models present in VR and AR worlds.

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