Washington and Lee law professor Christopher Seaman will speak at the 16th Annual IP Symposium: Patent Assertion Entities hosted by the Texas Intellectual Property Law Journal. The symposium is held at the University of Texas at Austin on Friday, February 20, 2015. Professor Seaman will present a new research projected titled Ongoing Royalties as an Alternative to Injunctive Relief for PAEs After eBay: An Empirical and Theoretical Assessment.
From the abstract:
Since the Supreme Court’s 2006 decision in eBay v. MercExchange, it has become increasingly difficult for patent assertion entities (PAEs)—firms that own, license, and assert patents in litigation, but do not practice the patented invention themselves—to obtain injunctive relief after a finding of infringement. Recent studies have shown that evidence of competition in a product market between a patentee and an infringer is the single most important consideration in granting injunctive relief post-eBay, which few if any PAEs can satisfy.
When a permanent injunction cannot be granted, the Federal Circuit has endorsed an alternative equitable remedy called an ongoing royalty, which is essentially a limited, post-judgment license to the infringer. However, lower federal courts have not settled on a consistent methodology for determining an appropriate ongoing royalty, including the related issue of whether enhanced damages should be awarded for post-judgment infringement. This Article addresses the issue of ongoing royalty awards from both an empirical and theoretical perspective. First, it reports the results of an original empirical study regarding ongoing royalty awards by district courts following eBay. Second, applying insights from this empirical data, it proposes a new framework for computing an ongoing royalty that serves patent’s law objective of incentivizing innovation while also avoiding excessive damages.
Washington and Lee law professor Christopher Seaman presented a new research project, entitled Property Rules vs. Liability Rules in Patent Litigation After eBay: An Empirical Study, at the 2015 Works in Progress in Intellectual Property Colloquium on February 6-7 at the U.S. Patent and Trademark Office in Alexandria, VA. The conference was jointly hosted by The George Washington University Law School and the United States Patent and Trademark Office.
Professor Seaman’s presentation at the conference was also featured on the blog Written Description.
From the abstract:
This project empirically assess the impact of the Supreme Court’s decision in eBay, Inc. v. MercExchange, LLC, 547 U.S. 388 (2006), on grants of permanent injunctions in patent litigation. Prior to eBay, the Federal Circuit established a “general rule” granting injunctive relief after entry of a final judgment that the asserted patent was both valid and infringed. In eBay, the Supreme Court unanimously rejected the Federal Circuit’s “general rule” in favor of injunctive relief, instead holding that trial courts must apply “traditional equitable principles” in the form of a four-factor test. However, in concurring opinions, Chief Justice Roberts and Justice Kennedy offered seemingly divergent assessments regarding eBay’s likely impact in patent litigation. Chief Justice Roberts suggested that trial courts would continue to grant injunctive relief after a finding of infringement in “the vast majority of patent cases,” whereas Justice Kennedy asserted that injunctive relief may be inappropriate in situations that differed from traditional patent litigation, such as suits by non-practicing entities (NPEs) and cases involving business method patents.
To test these predictions, as well as several other hypotheses about injunctive relief post-eBay, this project empirically analyzes all district court decisions where the patentee requested a permanent injunction following a finding of infringement (excluding uncontested injunctions) from the date of the Supreme Court’s eBay decision through 2013. Each case was coded for a number of variables that may have impacted district courts’ decisions regarding whether to grant injunctive relief, including the technological field of the asserted patent(s), whether the litigants are competitors in a product market, and whether the accused infringer was found to have willfully infringed the patent. The results from this study provide empirical evidence that supports conventional wisdom in some respects, such as finding that NPEs are rarely granted permanent injunctions post-eBay, but that challenges other commonly-held assumptions, such as finding that a history of licensing the asserted patent(s) does not appear to routinely preclude injunctive relief.
Washington and Lee law professor Christopher Seaman will speak today, Friday, December 5, 2014 at the American Intellectual Property Law Association’s Trade Secret Law Summit at Intel Corp. in Santa Clara, California. Professor Seaman will participate in a panel entitled “Should Trade Secrets Law be Federalized? A Debate on the Need for a Federal Civil Remedy and Its Interplay with the Uniform Trade Secrets Act.”
Professor Seaman’s paper, “The Case Against Federalizing Trade Secrecy” is forthcoming in the Virginia Law Review.
From the Abstract:
Trade secrecy is unique among the major intellectual property (IP) doctrines because it is governed primarily by state law. Recently, however, a number of influential actors — including legislators, academics, and organizations representing IP attorneys and owners — have proposed creating a private civil cause of action for trade secret misappropriation under federal law. Proponents assert that federalizing trade secrecy would provide numerous benefits, including substantive uniformity, the availability of a federal forum for misappropriation litigation, and the creation of a unified national regime governing IP rights.
This Article engages in the first systematic critique of the claim that federalizing trade secrecy is normatively desirable. Ultimately, it concludes that there are multiple reasons for trade secrecy to remain primarily the province of state law, including preservation of states’ ability to engage in limited experimentation regarding the scope of trade secret protection and federalization’s potential negative impact on the disclosure of patent-eligible inventions. Finally, it proposes an alternative approach — a modest expansion of federal courts’ jurisdiction over state law trade secret claims — that can help address the issue of trade secret theft without requiring outright federalization.
Washington and Lee law professor Christopher Seaman spoke at Brooklyn Law School on Thursday, October 23, 2014. Professor Seaman participated in a panel at the Trade Secret Institute Symposium, “Trade Secret Law at the Edge”. The panel, including Ted Schroeder, chief counsel to Sen. Chris Coons (D-DE) and Ira Levy of Goodwin Proctor LLP, discussed pending legislation to federalize trade secrets law.
The full program for the symposium may be found here.
Washington and Lee law professor Christopher Seaman recently presented his work at a faculty workshop at Wake Forest University School of Law. The workshop was held on Thursday, October 2, 2014.
Professor Seaman presented his forthcoming paper, The Case Against Federalizing Trade Secrecy. The paper will be published in The Virginia Law Review.
Read The Case Against Federalizing Trade Secrecy on SSRN here.
Washington and Lee law professor Christopher Seaman spoke to members of the Virginia State Bar Association on September 19, 2014 at their 26th Annual Intellectual Property Fall CLE.
Professor Seaman participated as a panelist to discuss the Supreme Court’s intellectual property decisions from the previous term. The entire program is available here.
Washington and Lee Law professor Christopher Seaman was interviewed recently by Law360. Professor Seaman, along with David S. Levine, Elon University and Sharon Sandeen, Hamline University discuss their arguments against passing the Trade Secrets Protection Act (in the U.S. House of Representatives) or the Defend Trade Secrets Act (in the U.S. Senate.)
Read the full article here.
Read Professor Seaman’s study The Case Against Federalizing Trade Secrecy here.