Panel 4: Intellectual Property Law II
Prof. Yaniv Heled, Georgia State University College of Law
How Abortion Politics and Technophobia Created the Distinction Between Patentably Non-Human and Patently Human or Why Congress Desperately Needs Scientific Advice
1987 PTO policy: claim directed to or including a human being won’t be considered patentable subject matter. But what is a human organism or human being? As it turns out, this is quite difficult to figure out. Transgenic animals wouldn’t be human, nor embryonic stem cells, according to the drafters. Human-animal chimeras would be (human and animal cells fused). By implication, humans having one or more genes derived from a nonhuman source. Human clones are an unclear case. Had trouble drafting about what they didn’t like. An animal with a few human genes = not human; human with few animal genes = human. But is it at the chromosomal level? How many genes? What about animals designed to have human characteristics—a golden retriever with a big brain, or a chimp with a human voicebox? (Is it physically feasible to approach this dividing line?)
What about human/machine hybrids? Implantable memory extensions—following up on cochlear implants, which already exist. What about brains in vats? (Does this matter if method/machine patents for the nonhuman parts are available?)
Sentience should be the line. By definition, humans can’t have a utility/use as per Kant; Thirteenth Amendment.
Why should we care? Because at some point, someone is going to use this policy as a defense when the patent is one we want to encourage. Section 33 was passed without scientific input; sets bad precedent for regulating science through patent law.
Prof. Kali N. Murray, Marquette University Law School
The First Amendment in Patent Law (with Prof. Erika George, University of Utah School of Law)
Others have addressed this topic. Douglas and Breyer construe patents as monopolies, and that has implications for how we think about speech. Both look at using these types of speech harms to broaden the standing of parties to challenge patents. There’s a struggle in patent in the 1940s that affected patent institutions and doctrine; Justice Douglas lost, though perhaps Prometheus indicates that his perspective has now prevailed.
When we talk about constraints on patents, constitutional tradition is much richer than we usually recognize. The US tradition is torn between patents as constitutional property and patents as limited monopolies. Social obligations of the property owner to act in responsible ways: speech claims can be premised on access. Myriad: a set of access claims predicated on relationships generated by patent. One claim was that Myriad rejected a patient because it didn’t want to deal with Medicaid; a property owner might have an obligation to grant access v. having an unaccountable monopoly.
(I’m not sure that any of this directly matters after Golan, since the Court is obviously uninterested in speech claims even as to copyright.)
Prof. Mark Schultz, Southern Illinois University School of Law
Intellectual Property and Liberty
Herein of copyright and patent. Familiar arguments over property’s relationship to/support of liberty and their relation to IP. Though property may not always be the same as IP, the analogy is relevant.
Common justification for property is that it promotes liberty as well as social welfare. Three general arguments: Property promotes autonomy; promotes the existence of a private sector where people can arrange their own affairs/collaborate with others; disperses power and enables people to have a political voice by giving them a means to participate. These are consequentialist arguments and should be understood on that basis. (Key here: Property the institution or citizens broadly having property?)
Property as independence. Locke; found in development economics, e.g., Amartya Sen. Access to things people need to flourish as human beings: security of income, ability to secure credit to cushion economic shocks; less dependency on others/employer/government/landlord.
Creators can be disruptive, threatening: they need economic independence to do so. Property right provides at least a place at the table to offer some independence even if the creator sells that right. Don’t need to worry about pleasing powerful patron.
SOPA debate was impoverished by rhetoric on both sides. Cartoonish economic argument for the law; the argument against was largely focused on liberty v. economic interests. Reasonable dialogue would include liberty interest at stake for creators.
Doctrinally: when we focus on the importance of independence to individual liberty, we have to look at default doctrines of ownership in copyright and patent. Never hastily infer work for hire arrangements. Don’t allow corporate inventorship; at least they get the initial right that grants them some power.
Private action: property allows people to collaborate freely, exchange/engage in private ordering. IP works similarly. Property rights allow inventors and creators to collaborate and to walk away. Copyright allows open source licenses and other forms of collaboration. Every license is its own unique form of collaboration that people have freely come together to choose. (Really? My iTunes agreement? This seems like formalism; I have equally agreed to the rules of the US by not emigrating, but I have a much better chance of changing those rules by voting than of changing the iTunes rules by negotiation or even by voting with my delete button.) This argues against compulsory collective licensing. ASCAP etc. are private associations, much more desirable than SoundExchange. (I wonder how many songwriters seeking to get paid think they have a choice to enter into a relationship with a publisher and a CRO.)
Political power: many criticisms of copyright industries. We should remember that it is those same economic entities that often defend the First Amendment and freedom of inquiry in the legislature and the courts—NYT v. Sullivan; the NYT depends on ownership of copyright to protect freedom of expression. (Except: the NYT demands WFH etc. from its freelancers!)
Prof. Lars S. Smith, Louis D. Brandeis School of Law, University of Louisville
Patent Liability in the Cloud
Can a defendant be liable for providing part of a system covered by a patent? Or a method, where different parties are responsible for different steps?
Centillion Data Sys. v. Qwest: a system for finding phone bill on line; P has patent for system for finding information online. Can a user be liable? The patent is drafted as a system with a back end and a front end. The back end is the tech: storage, processing, transferring data. Front end is the user/personal computer data processing. Court in NTP said use of a system where part of the process happens in Canada is use in US if that’s where the system as a whole is put into service. So the party must put the invention into service: control it and obtain a benefit from it.
In Qwest, the question was what happened when different people control different parts of the system. Court says that putting the system into use and obtaining benefit was enough even if there wasn’t control. Thus the client is an infringer. But Qwest wasn’t liable because it didn’t put the service into use: they provided only the back end. Are they vicariously liable? Court says no, because they didn’t have a relationship with the customer over the operation of the system—don’t tell the customer to do so.
What about with a method patent? Akamai v. Limelight, still pending en banc at the Federal Circuit. Actions of multiple parties combined: the question is whether the claim is directly infringed only if one party exercises agency control over others. Alternatives: “directs or controls” standard; actual or constructive knowledge that the acts are being carried out. Many method patents involve multiple parties—e.g., if one party tags the content and the other party uses the tags to do something. A number of patents are written in such a way as to involve multiple parties and are therefore not infringeable.
McKesson v. Epic: a patent on a method of automatically and electronically communicating between at least one health care provider and a plurality of users serviced by the provider. Epic is the seller of the software, but the patent deals with the users. Epic has no direct relationship to doctors or patients. Alleged direct infringers are the patients. Can you be contributorily liable for part of the process?
If the court is right that a single entity is required for infringement, based on principal/agent law, that will exclude a number of important cloud computing patents—valid but unenforceable. That doesn’t make any sense. He predicts that the en banc court will incorporate common-law doctrines into law to deal with this.
Patent attorneys say that this is dumb; properly drafted system patent gets rid of this problem.
Q for Heled: is uncertainty a feature? Maybe we like people staying far away from what might be a human being.
Q for Murray: difficult to think of Breyer winning in patent when he obviously lost in Golan.
Murray: Take into account the history of the First Amendment within IP as a whole. From 1880-1952, for patents as well as TM and copyright as well, there is a problematic constitutional history that we’re not articulating well. Eldred gives some space because Ginsburg distinguishes patent as a monopoly from copyright. But Golan makes that harder. Ginsburg is an important figure because she deferred a lot to TRIPS. If these are international IP cases, they become more important, showing tension between constitutional law and TRIPS.
Liam O’Melinn: Skeptical about Schultz’s transition from property to IP. Real property is stable. IP is unstable, and increasingly so. Problem with legal system is protecting that instability.
Schultz: We have lots of institutions that are designed to prevent the accumulation of hereditary power, such as real estate taxes; nuisance doctrines; alienability rules. Thus having an expiration date on property isn’t as surprising as you might think.
My criticism of Schultz is related to O’Melinn’s: Along with the question of property rights v. having property, IP has only relational value; land is more likely to be distributed/distributable in a way that allows people to sustain themselves. I was just reading Tasini v. AOL: he was unable to get the terms of exchange he wanted. Hard to think of property as development in Sen’s terms unless you also think about an underlying access right so that everyone gets an initial allocation of some value.
Schultz: debate over whether land has value until humans impose their will; diamonds have no intrinsic value, nor does undeveloped land. Development often requires collaboration. (But I’m not talking about undeveloped land, nor do I think Sen is.) He is aiming at the argument that IP is concentrated in corporate interests. But the creator’s initial right gives him/her some leverage in negotiations. In land reform too, the ability to alienate/mortgage can give people some amount of economic independence. (Right, but in the development context this usually requires the state to hand out chunks of land/reform ownership procedures in the first place. What I want is a better origin story: is this really about the idea that if you are the creator you should be the owner, and isn’t then a key question as against whom?)
Does mean liberty in the sense of positive liberty/personhood but worried about muddying the waters.