Past JLTP Abstracts - Volume 2007 Issue 1


The Patent Litigation Predicament in the United States
by Judge James F. Holderman, Halley Guren

Depending on what statistics and whose opinion one looks at, the reversals by the Federal Circuit of district court decisions on patent claims construction are nothing of which to be proud. The rate of these reversals adds to the uncertainty in patent litigation. Over the past decade, United States district court judges have found themselves in a difficult predicament when presiding over patent litigation. Judge Holderman writes, “Something has to change when your boss, upon reviewing your work, continues to tell you year after year that you are doing your job incorrectly about one-third to one-half the time, and your customers continue to tell you their costs are too high.”

This article will describe the root bases of the predicament, discuss the factors contributing to the predicament, and present possible solutions, as well as potential remedies, that are either underway or have been proposed to help resolve the patent litigation predicament in the United States.

Cyber-Extortion: Duties and Liabilities Related to the Elephant in the Server Room
by Adam J. Sulkowski

Cyber-extortion – demanding money or something else of value in exchange for not carrying out threats to commit harm that would involve the victim’s information systems – is an evolving and costly form of criminal activity. The title of this article reflects the fact that cyber-extortion, like the proverbial elephant in the room, is a large problem which has not been thoroughly discussed. This article fills a conspicuous void in existing scholarly and practitioners’ literature by comprehensively analyzing the legal frameworks that apply to cyber-extortion and by discussing relevant public policy concerns.

It bears pointing out at the onset that the scarcity of case law on the topic of cyber-extortion to date means that legal questions related to cyber-extortion are not fully resolved. To both legal scholars and practitioners, cyber-extortion scenarios present an evolving web of responsibilities and possible liabilities that will demand scrutiny in the coming years – this article hopefully will serve as a catalyst to that much-needed debate.

The legal community needs to be aware of both the legal framework for prosecuting cyber-extortionists and the vast potential web of liabilities that may arise in the context of a cyber-extortion. Part II investigates the legal framework for prosecuting and recovering damages from the perpetrators of cyber-extortions. Part III will examine the duties and potential liabilities of businesses that fail to protect themselves from being the victims or unwitting accomplices of cyber-extortionists. Part IV will discuss the policy implications of holding businesses accountable for the security of their information systems.


Intellectual Property: Does IP Harm or Help Developing Countries?
Conference Proceedings Panel Discussion

This piece contains the transcript of a panel at the 2006 National Lawyers Convention discussing the potential positive and negative effects of strengthened intellectual property regimes on developing countries. On the panel were: Hon. Alex M. Azar II, Deputy Secretary of the United States Department of Health and Human Services; Prof. Graeme B. Dinwoodie of Chicago-Kent College of Law; Prof. Jerome H. Reichman of Duke University School of Law; and Robert Sherwood, International Issues Advisor, Intellectual Property Practice Group. The panel was moderated by Hon. Bruce A. Lehman of Akin Gump Strauss Hauer & Feld. The following comments have been lightly footnoted to provide background sources and edited for grammar.


If Hatch Wins, Make Waxman Pay: One-Way Fee Shifting as a Substitute Incentive to Resolve Abuse of the Hatch-Waxman Act
by John R. McNair

The Drug Price Competition and Patent Term Restoration Act of 1984, commonly known as the Hatch-Waxman Act, was enacted as a compromise between legislators seeking to balance the interests of maintaining incentives for research-based pharmaceutical companies to innovate with society’s interest in the availability to consumers of lower-priced generic drugs. The dual purposes of the Hatch-Waxman Act are to reimburse pharmaceutical patent holders for time lost due to the long review period needed to achieve FDA approval and also to encourage generic drugs to enter the market by enacting procedures that expedite and incentivize their introduction. However, several provisions have been abused which impedes the designed effect of higher availability of generic drugs.

In Part II, this Note provides background on the Hatch-Waxman Act and its amendments. In Part III, this Note first analyzes the results of Hatch-Waxman litigation and the incentives in place for generic drug manufacturers to challenge invalid patents or design around them. In Part III.B explores the possible effects of recent amendments to the Hatch-Waxman Act. This Note in Part III.C will then analyze the effects of providing the additional incentive to generic drug companies of one-way fee shifting. Finally, Part III.D discusses the antitrust policy choice in regard to settlements where the brand-name plaintiff pays the alleged infringer. In Part IV, this Note recommends the legislative imposition of a one-way fee shifting regime applied to Hatch-Waxman litigation. In Part IV, this Note also recommends that payments from a patent holder to a Hatch-Waxman defendant challenging the patent be considered a per se antitrust violation.

Face/Off: The Struggle Between Informed Consent and Patient Welfare
in Facial Transplant Surgery

by Derek Samz

In the rapidly advancing field of medicine, surgeries involving the removal and transplantation of human organs are not only possible, but in some areas have become commonplace. The realm of transplant medicine has expanded from organs essential to life function into procedures that may improve quality of life, but are by no means vital. Before any transplant procedure can be initiated, consent to the procedure must be obtained from either the organ donor or the donor’s legal guardian. Certain ethical concerns, however, are inevitable when the consent necessary to begin the procedure must be obtained.

The chief ethical concern in cutting edge surgical procedures is whether either the donor or the recipient can truly give “informed consent.” The extreme nature of new experimental procedures such as nerve transplants and facial transplants cater to individuals so desperate for treatment that obtaining informed consent is impossible.

This Note proposes that physicians cannot possibly explain certain transplant procedures in a way that will clearly inform the patient of the risks and consequences involved in undergoing the procedure. Part II of this Note lays out the interests of the parties involved in advanced medical procedures, which will explain why traditional notions of informed consent do not apply to proposed face transplants. Part III of the Note analyzes current notions of informed consent, and will apply these concepts to the new procedure gaining notoriety in the medical world. Part IV of this Note suggests that traditional definitions of informed consent cannot be applied to procedures like facial or nerve transplants. Part IV concludes that a solution to this problem may be reached with the appointment of a guardian that can make an informed decision on behalf of the patient.