Scope.

Author:Lemley, Mark A.
Position:Separation between validity, infringement and defenses of intellectual property rulings - Abstract through II. The Problems with Separation C. IP Doctrines and the Nose of Wax 1. Copyright, p. 2197-2239
 
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ABSTRACT

Virtually every significant legal doctrine in IP is either about whether the plaintiff has a valid IP right that the law will recognize (validity); whether the defendant's conduct violates that right (infringement); or whether the defendant is somehow privileged to violate that right (defenses). IP regimes tend to separate doctrines in these three legal categories relatively strictly. They apply different burdens of proof and persuasion to infringement and validity. In many cases they ask different actors to decide one doctrine but not the other. And even where none of that is true, the nature of IP law is to categorize an argument in order to apply the proper rules for that argument.

The result of this separation is that parties treat IP rights "like a nose of wax, which may be turned and twisted in any direction." When infringement is at issue, IP owners tout the breadth of their rights, while accused infringers seek to cabin them within narrow bounds. When it comes to validity, however, the parties reverse their positions, with IP owners emphasizing the narrowness of their rights in order to avoid having those rights held invalid and accused infringers arguing the reverse. Because of the separation between validity, infringement, and defenses, it is often possible for a party to successfully argue that an IP right means one thing in one context and something very different in another. And courts will not necessarily detect the problem because they are thinking of only the precise legal issue before them. The result is a number of IP doctrines that simply make no sense to an outsider.

The culprit is simple, but fundamental: IP regimes largely lack an integrated procedure for deciding the proper extent of an IP right. Without some way of assessing the breadth of an IP right that considers validity, infringement, and defenses together, courts will always be prone to make mistakes in applying any one of the doctrines separately. In this Article, we suggest that IP regimes need a process for determining the scope of an IP right.

Scope is not merely validity, and it is not merely infringement. Rather, it refers to the range of things the IP right lawfully protects against competition. Only by evaluating scope in a single, integrated fashion can courts avoid the nose of wax problem that has grown endemic in IP law. Scope is, quite simply, the fundamental question that underlies everything else in IP law, but which courts rarely think about expressly.

TABLE OF CONTENTS INTRODUCTION I. IP LITIGATION: A PROCESS DIVIDED A. The Scope of IP Rights B. Why Scope Matters Now II. THE PROBLEMS WITH SEPARATION A. Gaps in the Fabric of IP Scope B. Gaps Exist in the Fabric of IP for a Number of Reasons 1. Different Decisionmakers 2. Different Burdens of Proof 3. A Reluctance to Invalidate IP Rights 4. Strategic Behavior C. IP Doctrines and the Nose of Wax 1. Copyright 2. Patent 3. Trademark 4. Design Patent III. TOWARDS AN INTEGRATED DOCTRINE OF IP SCOPE A. The Need for an Integrated Scope Determination B. Markman as a Scope Proceeding C. Adapting the Scope Proceeding for Other IP Rights D. Alternatives to a Scope Proceeding CONCLUSION INTRODUCTION

Intellectual property (IP) law doctrines fall into three basic categories: validity, infringement, and defenses. Virtually every significant legal doctrine in IP is either about whether the plaintiff has a valid IP right that the law will recognize (validity); whether what the defendant did violates that right (infringement); or whether the defendant is somehow privileged to violate that right (defenses). (1)

IP regimes tend to separate doctrines in these three legal categories relatively strictly. They apply different burdens of proof and persuasion to infringement and validity. In many cases they ask different actors to decide one doctrine but not the other. The U.S. Patent and Trademark Office (PTO), for example, decides questions of patent and trademark validity but not questions of infringement. Even in court, resolution of one issue is often allocated to a judge while the jury decides a different issue. And even if none of that is true in a given case, the nature of IP law is to categorize an argument in order to apply the proper rules for that argument.

The result of this separation is that parties treat IP rights "like a nose of wax which may be turned and twisted in any direction." (2) When infringement is at issue, IP owners tout the breadth of their rights, while accused infringers seek to cabin them within narrow bounds. When it comes to validity, however, the parties reverse their positions: IP owners emphasize the narrowness of their rights in order to avoid having those rights held invalid, and accused infringers argue the reverse. (3)

Because of the separation between validity, infringement, and defenses, a party may often successfully argue that an IP right means one thing in one context and something very different in another. And decisionmakers won't necessarily detect the problem because they are thinking of only the precise legal issue before them.

The result is a number of IP doctrines that simply make no sense to an outsider. In patent law, for instance, it is accepted law that there is no "practicing the prior art" defense. (4) In other words, one can be held liable for doing precisely what others had legally done before, even though a patent isn't supposed to cover things people have already done. In design patent law, one can be held liable for making a design that an "ordinary observer" would find too similar to a patented design, even though the things that make the two look similar--say, the roundness of the wheels on a car--are not things the patentee is entitled to own. In copyright, once a court has concluded that the defendant has actually copied from the plaintiff, her song may be deemed infringing because of its similarity to the plaintiff's, even if the similarity is overwhelmingly attributable to unprotectable standard components of the genre. And in trademark, a party can be deemed infringing because its products look too similar to the plaintiffs and therefore make confusion likely, even if that confusion is attributable to non-source-designating features of the design.

Because they are sometimes sensitive to this problem, courts have created various stopgap doctrines to try to deal with these holes in IP law. In copyright law, for instance, expression cannot be protected if there are few alternative means of expression, such that one author's way of putting something has "merged" with the idea she is expressing. (5) Trademark law has tried to prevent overreaching in product configuration protection by making it hard to have a valid product configuration trade dress at all. (6) Patent disclosure doctrines (written description and enablement) try to solve this problem with patent claiming. (7) But even these efforts to patch the system are doomed to fail at determining the proper scope of an IP right for the simple reason that they are themselves either validity or infringement doctrines and are therefore subject to the same nose of wax problem as different decisionmakers tackle different pieces of the issue at different times.

The culprit is simple, but fundamental: IP regimes largely lack an integrated procedure for deciding the proper extent of an IP right. The proper scope of an IP right is not a matter of natural right or immutable definition. Rather, it is a function of the purposes of the IP regime. But without some way of assessing the breadth of an IP right that considers validity, infringement, and defenses together, courts will always be prone to make mistakes in applying any one of the doctrines. In general, these mistakes tend to redound to the benefit of IP owners, as courts are more reluctant to declare an IP right invalid altogether even when the defendant should not be liable for infringement. But sometimes the mistakes run the other way, as when the plaintiff's improper attempt to expand the scope of her legitimate but narrow right leads a court to hold that right altogether invalid.

In this Article, we suggest that IP regimes need a process for determining the scope of an IP right. Scope is not merely validity, and it is not merely infringement. Rather, it refers to the range of things the IP right lawfully protects against competition. (8) IP rights that claim too broad a scope tend to be invalid, either because they tread on the rights of those who came before or because they cover things that the law has decided no one should own. IP rights with narrower scope are valid, but the narrowness of that scope should be reflected in the determination of what actions do and do not infringe that right. And whatever the doctrinal label, we should not allow an IP owner to capture something that is not within the legitimate scope of her right. Nor should it follow from the fact that some uses are outside the lawful scope of an IP owner's right that the IP right itself is invalid and cannot be asserted against anyone. Only by evaluating scope in a single, integrated proceeding can courts avoid the nose of wax problem that has grown endemic in IP law. Scope is, quite simply, the fundamental question that underlies everything else in IP law, but which courts rarely think about expressly.

One IP regime--utility patent law--has started in the last two decades to think about scope in a more systematic way through the process of claim construction. Patent courts hold a pretrial Markman hearing to determine what the patent does and does not cover; they use that determination to inform both validity and infringement. (9) Claim construction has its share of problems, (10) and patent law has not entirely avoided the nose of wax problem, but we think patent law is on the right track in trying to resolve these questions in an integrated fashion rather than allowing inconsistent assessments of scope in separate validity and...

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