One of the most troubling and increasingly overlooked problems plaguing the federal judiciary has been the reduction of throughput at the Supreme Court and the resulting fragmentation of national law. The imperative to resolve circuit splits has taken a back seat as the Court grapples with high -profile battles and the relentless crush of certiorari petitions. This fuels confusion and greater fragmentation of national law. Add in the general expansion of national law, and the vicious cycle intensifies. This Article proposes a solution for expanding structural capacity to address fragmentation that does not require legislative reform or constitutional amendment. It utilizes a procedure already within the Supreme Court's toolbox, although with a twist: where the Justices encounter a clear circuit split that does not rise to the Court's certiorari threshold, the Court should grant, vacate, and remand ("GVR") the matter to the circuit court for en banc review. The Supreme Court would, of course, retain authority to review the en banc decision. This reinvigoration of one of the judiciary's core functions holds the promise of enhancing the rule of law, curtailing forum shopping, reducing litigation costs, and promoting equity and economic productivity. It would require the Supreme Court to take on a more managerial approach to percolating national law and ask the appellate courts to assume greater responsibility for confronting intercircuit and intracircuit divisions.

Professor Joseph Singer’s property scholarship explores the human, cultural, social, and distributive dimensions of property law. Using his body of work as a springboard, this article explores the cross-currents flowing between intellectual property and social justice. Part I examines the limitations of tangible property theory as a frame for understanding intellectual property policy. Part II distinguishes between internal, largely utilitarian, analysis of particular modes of intellectual property protection and the external interplay of intellectual property systems and broader social justice concerns. Part III explores the macro interplay of intellectual property and inequality, gender and racial inclusion, and global justice challenges, highlighting complexities, tensions, and paradoxes.

The U.S. patent system has been in disarray for more than a decade as a result of the Supreme Court’s flawed interpretation of the Patent Act. As part of the 2012 Mayo decision and its subsequent jurisprudence, the Supreme Court has imposed an extra-statutory requirement that scientific discoveries—often the most important breakthroughs in promoting progress—must be “inventively applied” to be eligible for patent protection. The Patent Act imposes no such requirement. Prior to the Mayo decision, courts interpreted Section 101 to require only that scientific discoveries be applied in some form to be eligible for patent protection. Yet the Mayo decision has eliminated protection for applied scientific discoveries (including many diagnostic discoveries), one of the most important means of promoting scientific and technological progress in a wide variety of scientific and technical disciplines.Now that the Supreme Court has once again declined to revisit its flawed interpretation of Section 101 of the Patent Act, the onus is upon Congress to address this important issue affecting technological innovation. We believe that the Coons-Tillis Patent Eligibility Restoration Act of 2023 would reestablish patent law’s encouragement for scientific breakthroughs, and endorse the bill’s abrogation of the Mayo/Alice test for patent eligibility. However, with respect to the bill’s provisions excluding certain subject matter from eligibility, we disagree with the bill’s current approach, which ostensibly excludes natural materials and non-technological processes, but then limits those exclusions to the point of insignificance.These comments highlight three key improvements offered by the proposed legislation, and propose changes to the bill that would make clear its effect with respect to natural materials and impose meaningful limitations on patents directed to non-technological ends.

The Supreme Court’s recent decision in Andy Warhol Foundation for Visual Arts, Inc. v. Goldsmith is a watershed moment in the story of copyright jurisprudence. At its broadest, the decision articulates a unified vision—one that had been dormant in the lower court fair use jurisprudence—about the role of copyright and the manner in which to make sense of its effort to balance exclusivity with its myriad limitations. This Essay focuses on how the Court reconciled the working of the statute’s derivative work right with the breadth and reach of the “transformative use” version of the fair use doctrine. The core of the Court’s reconciliation centers around three ideas. The first is the need for an independent justification for a use to even qualify for fair use. Transformation on its own does not provide such a justification, which must be instead identified independently. Related is the second idea, that the secondary use must reveal a distinct purpose. Unlike the justification element, this step is comparative and heavily contextual. And the third element is the balance between transformativeness and commerciality, which the legislative text makes clear and Campbell had gone to extreme lengths to reinforce.

As the knowledge economy expanded and concerns about trade secret misappropriation mounted in the digital age, federal policymakers undertook efforts to reinforce trade secret protection a decade ago. These efforts came to fruition with passage of the Defend Trade Secrets Act of 2016 (DTSA). This landmark legislation, modeled on the Uniform Trade Secrets Act, elevated and expanded trade secret law's role in the federal intellectual property system. DTSA fully opened the federal courts to trade secret litigation as well as added several new features, including an ex parte seizure remedy and whistleblower immunity.DTSA added to the large and growing federal caseloads. It also exposes more federal judges, relatively few of whom studied or litigated trade secret cases prior to their judicial appointments, to the distinctive challenges of trade secret litigation.As with patent litigation, federal judges have implemented innovative approaches to managing trade secret litigation based on the distinctive features of these intangible resources. As with patent litigation, with its pretrial claim construction process, courts have developed practical strategies for identifying the protected trade secrets at issue. This task is complicated by the need to insulate trade secrets from public disclosure. Moreover, trade secret law often involves requests for pretrial equitable relief, which demands additional intensive case management. Furthermore, unlike patent law, federal trade secret law includes criminal law provisions. The interplay of civil and criminal trade secret cases further complicates case management.Drawing on the PATENT CASE MANAGEMENT JUDICIAL GUIDE (3d ed. 2016)—with chapters organized in the stages of litigation and guided by an early case management checklist—the TRADE SECRET CASE MANAGEMENT JUDICIAL GUIDE provides judges with a comprehensive resource for surveying trade secret law and managing trade secret litigation.

Rapid advances in digital and life sciences technology continue to spur the evolution of intellectual property law. As professors and practitioners in this field know all too well, Congress and the courts continue to develop intellectual property law and jurisprudence at a rapid pace. For that reason, we have significantly augmented and revised Intellectual Property in the New Technological Age.

Rapid advances in digital and life sciences technology continue to spur theevolution of intellectual property law. As professors and practitioners inthis field know all too well, Congress and the courts continue to developintellectual property law and jurisprudence at a rapid pace. For thatreason, we have significantly augmented and revised "Intellectual Propertyin the New Technological Age.The 2016 Edition reflects the following principal developments:● Trade Secrets: Congress passed the Defend Trade Secrets Act of 2016, oneof the most momentous changes in the history of trade secret protection. Thenew law opens up the federal courts to trade secret cases, provides for exparte seizures of misappropriated trade secrets in “extraordinarycircumstances,” and establishes immunity for whistleblowers.● Patents: The past several years have witnessed some of the mostsignificant developments in U.S. patent history — from the establishment ofthe new administrative review proceedings at the Patent Office to importantshifts in patent-eligibility, claim indefiniteness, and enhanced damages atthe Supreme Court and means-plus-function claim interpretation andinfringement doctrine at the Federal Circuit. We have restructured thepatent chapter to illuminate these areas. We have also significantlyexpanded coverage of design patents in response to the growing importanceof this form of protection.● Copyrights: The Supreme Court issued important decisions addressing thepublic performance right and the first sale doctrine. The past few yearsalso witnessed important developments in the Online Service Provider safeharbor, fair use, and state protection for pre-1972 sound recordings. Wehave also integrated the digital copyright materials into a unifiedtreatment of copyright law and substantially revamped the fair use sectionto reflect the broadening landscape of this important doctrine.● Trademarks: We have integrated important cases on federal registrabilityof disparaging marks, merchandising rights, likelihood of confusion on theInternet, and remedies.● Other State Protections: We have updated material on the right ofpublicity, an active and growing area. We have also reorganized the chapterand focused it on IP regimes.

Motivated by and drawing upon the Patent Case Management Judicial Guide developed for U.S. district courts, the World Intellectual Property Organization (WIPO) launched an International Patent Case Management Judicial Guide project in 2020. This treatise, scheduled for completion in November 2022, presents the patent case management approaches in the most significant industrial nations (Australia, Brazil, China, Germany, India, Japan, Republic of Korea, the United Kingdom, and the United States) and the European Patent Office. It aims to promote the advantages of nuanced patent case management on a global scale, enhance the capacity of litigators and in-house counsel to assess international patent litigation, and harmonize patent systems and policies.This manuscript presents the United States chapter. In addition to presenting patent case management in U.S. district courts, it covers the Patent Trial and Appeal Board’s Inter Partes Review and Post-Grant Review and the International Trade Commission’s Section 337 patent investigation system. It also discusses pharmaceutical patent case management (Hatch Waxman and the BPCIA) and SEP/FRAND issues. The organization of the chapter reflects the WIPO template for characterizing patent case management regimes. This draft is undergoing review. We welcome comments on any aspects of the manuscript. Please send comments to pmenell@law.berkeley.edu and aaschmitt@berkeley.edu.

In Andy Warhol Foundation (AWF) v. Goldsmith, the Supreme Court is set to revisit its most salient fair use precedent which introduced the idea of a “transformative use.” Purporting to rely on the Court’s adoption of “transformative use” as a way of understanding the fair use doctrine in Campbell v. Acuff-Rose Music, Inc., many lower courts, including the district court below, have effectively substituted an amorphous “transformativeness” inquiry for the full statutory framework and factors that Congress and Campbell prescribe. At the oral argument in AWF, the Justices focused on how the transformativeness of a work might be considered as part of the fair use doctrine and rendered compatible with copyright’s right to prepare derivative works. In this Essay, we argue that the answer to these questions lies in Campbell’s logic and careful analysis, where Justice Souter methodically and meticulously incorporated the idea of transformativeness into a rich understanding of the first fair use factor and the overall four-factor framework as a whole. As we show, Campbell paid special attention to concerns with the workability of this idea, and its integration with the copyright scheme developed by Congress in the Copyright Act of 1976. The Court in AWF would benefit from a close reading of Campbell, which presciently foreshadowed and thoughtfully addressed the very questions before it today.

Rapid advances in digital and life sciences technology continue to spur the evolution of intellectual property law. As professors and practitioners in this field know all too well, Congress and the courts continue to develop intellectual property law and jurisprudence at a rapid pace. For that reason, we have significantly augmented and revised Intellectual Property in the New Technological Age.

Notwithstanding the clarity of the U.S. Constitution’s grant of authority to Congress “[t]o promote the Progress of . . . useful Arts, by securing for limited Times to . . . Inventors the exclusive Right to their . . . Discoveries,” U.S. Const. Art. I, § 8, cl. 8, and Congress’s directive that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title,” 35 U.S.C. § 101 (emphasis added), current § 101 jurisprudence conflates patent eligibility with the substantive requirements set forth in § 103 and § 112 and is getting more confusing by the day. There is no patent law doctrine more in need of clarification. The Federal Circuit’s 6-6 split resulting in the denial of rehearing en banc in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC et al., 966 F.3d 1347 (Fed. Cir. 2020), is just the latest example in a long series of cries for help in interpreting § 101. See, e.g., Berkheimer v. HP Inc., 890 F.3d 1374, 1374 (Fed. Cir. 2018) (Lourie, J., with Newman, J. concurring in denial of rehearing en banc) (expressing that patent eligibility law “needs clarification by higher authority, perhaps by Congress, to work its way out of what so many in the innovation field consider are § 101 problems”). We add our voice to the chorus calling for the Supreme Court and/or Congress to clarify and/or reform patent eligibility jurisprudence. In setting forth a new test of patent eligibility, the panel decision mischaracterized fundamental patent principles and case law on which the modern patent system is built. The claims of the patent in suit present a conventional problem of compliance with the statutory patentability requirements of § 112, which sets forth the requirements of disclosure and claim definiteness. The panel opinion instead forces this case into the § 101 mold, which dispenses with the customary factual predicates for § 112. In so doing, the panel radically altered and expanded the already confused contours of § 101 jurisprudence. Moreover, the panel’s holdings were based on a serious misinterpretation of patent law’s foundational cases, and run counter to this Court’s long insistence that the statutory requirements of § 112 and its predecessor statutes provide the standards to assess whether claims are functional or overbroad. With this latest expansion, the atextual doctrine of patent eligibility threatens to supplant the traditional tests of patentability established by the 1952 Act. The Federal Circuit’s deep split in American Axle presents an excellent vehicle for clarifying the interplay of § 101 and § 112 of the Patent Act.

The battle over intellectual property protection for computer software has raged for more than four decades. The most significant issue has been whether copyright protection constrains the ability of competitors and innovators to develop interoperable products. This commentary discusses the Supreme Court’s decision in Google v. Oracle, which goes a long way toward establishing that the functional specifications of computer software can be reimplemented without violating copyright law.

For nearly a century, the American Law Institute’s (ALI) Restatements of the Law have played an important role in the American legal system. And in all of this time, they refrained from restating areas of law dominated by a uniform statute despite the proliferation and growing importance of such statutes, especially at the federal level. This omission was deliberate and in recognition of the fundamentally different nature of the judicial role and of lawmaking in areas governed by detailed statutes compared to areas governed by the common law. Then in 2015, without much deliberation, the ALI embarked on the task of restating U.S. copyright law, an area dominated by a detailed federal statute. In so doing, the ALI ignored not just calls to revisit the form and method of its traditional Restatements projects but also the extensive history of the deep mismatch between the Restatements and statutory domains that has informed the working of the enterprise over the course of the last century. This Article explores the analytical and historical foundations of that mismatch and shows how the Restatement of Copyright reinforces the need to tailor a methodological template and perspective that is sensitive to the nature of statutory interpretation. It explains why perfunctory extension of the common law Restatement model to copyright law produces incoherent, misleading, and seemingly biased results that risk undermining the legitimacy of the eventual product. Finally, the Article explains how the mismatch between the two is capable of being remedied by a series of modest—yet significant—changes, which could allow the project to serve as a template for future statutory Restatements. These include: emphasizing the centrality of the statutory text and relevant interpretive sources, adopting crucial perspectival differences between incremental lawmaking and statutory interpretation, and highlighting the unique legislative process through which the statute was developed.

In Design Patent Law’s Identity Crisis, we traced the origins of design patent law’s ornamentality/non-functionality doctrine and showed how the Federal Circuit, the nation’s de facto design patent emperor over the past four decades, has turned the doctrine on its head: it has upended the 1902 Act’s intent and reversed three-quarters of a century of regional circuit jurisprudence. So much so that the post-1902 Act regional circuit design patent cases invalidating design patents on functionality grounds would come out oppositely under the Federal Circuit’s lax standards. Those standards led to the absurd result that Apple could disgorge Samsung’s profits on its smartphones because they employed rounded rectangular shapes. We showed that the applicable legislation limited design protection to original, ornamental articles of manufacture, and excluded protection for functionality. This Article responds to the practitioners and academics who have defended the Federal Circuit’s interpretation of design patent law in commenting on our article. While none of the commentators question, no less refute, our core finding that the Federal Circuit has flipped the ornamentality/non-functionality doctrine, several offer fig leaves to clothe the Federal Circuit’s lax standards for design patent eligibility and infringement. We discuss the significant areas of agreement and show why the defenses of the Federal Circuit’s interpretation of the design patent standards are mistaken as a matter of statutory interpretation and are bad intellectual property policy. We conclude by addressing ways in which the Supreme Court or the Federal Circuit could faithfully implement the design patent statute, the fundamental intellectual property channeling principle reflected in Baker v. Selden, and sound intellectual property policy.

The digital revolution has upended many aspects of the copyright system, particularly as it relates to music. Drawing on creative, jurisprudential, technological, and social science insights, this article explores the broad range of music copyright justice concerns, ranging from file sharing to royalty distribution, copyright infringement standards, and the creation of music mashups.

Courts have long been skeptical about the use of expert witnesses in copyright cases. More than four decades ago, and before Congress extended copyright law to protect computer software, the Ninth Circuit in Krofft Television Prods., Inc. v. McDonald’s Corp., ruled that expert testimony was inadmissible to determine whether Mayor McCheese and the merry band of McDonaldland characters infringed copyright protection for Wilhelmina W. Witchiepoo and the other imaginative H.R. Pufnstuf costumed characters. Since the emergence of software copyright infringement cases in the 1980s, substantially all software copyright cases have permitted expert witnesses to aid juries in understanding software code. As the Second Circuit recognized in Computer Associates Int’l, Inc. v. Altai, Inc., the ordinary observer standard may well have served its purpose when the material under scrutiny was limited to art forms readily comprehensible and generally familiar to the average lay person,” but as to computer programs, district courts must have “discretion . . . to decide to what extent, if any, expert opinion, regarding the highly technical nature of computer programs, is warranted in a given case.” In a shocking departure from the decisions of every other circuit that has confronted software copyright infringement litigation, the Ninth Circuit reaffirmed and applied the bar on expert testimony originating in Krofft Television Prods. to all copyright disputes, including those involving highly technical computer software code. The court in Antonick v. Electronic Arts held that lay juries must decipher and analyze software code—distinct hexadecimal assembly code languages for different processors—without the assistance of expert witnesses, a rule that the authoring judge characterized at the oral argument as “nutty.” The Ninth Circuit’s rule overlooks the key distinction between the use of technical experts to analyze substantial similarity as opposed to enabling lay judges and jurors to perceive the underlying works. Just as it would be absurd to ask a lay jury with no familiarity with Kanji characters to assess whether a translation of HARRY POTTER AND THE PHILOSOPHER’S STONE into Japanese infringed the English original without the aid of a bilingual translator, it makes no sense to ask a non-technical jury to compare computer source codes written in different assembly languages to determine substantial similarity without expert assistance. We contend, consistent with the views of every court outside of the Ninth Circuit that has addressed the issue, that courts should permit the use of technical experts to enable lay judges and juries to perceive the meaning of computer languages and computer code.

The Federal Circuit’s decisions in Oracle v. Google conflict with this Court’s seminal decision in Baker v. Selden, 101 U.S. 99 (1879), misinterpret Congress’s codification of this Court’s fundamental channeling principle and related limiting doctrines, and upend nearly three decades of sound, well-settled, and critically important decisions of multiple regional circuits on the scope of copyright protection for computer software. Based on the fundamental channeling principle enunciated in Baker v. Selden, as reflected in § 102(b) of the Copyright Act, the functional requirements of APIs for computer systems and devices, like the internal workings of other machines, are outside of the scope of copyright protection even as non-merged aspects of the implementing code for APIs are protectable. Google independently implemented the functional specifications of the 37 APIs at issue and hence did not infringe Oracle’s copyrights.By way of brief illustration, copyright protects artistic and literary works, such as a creative metal sculpture or haiku. Nonetheless, the proprietors of those works cannot complain when third parties replicate elements of that expression that are essential to the operation of a particular machine. For instance, a car manufacturer could secure the ignition switch for its automobiles via a metal key with an original cut pattern on the blade. Although that pattern might be protected as a modern sculpture, the car manufacturer could not use copyright law to prevent others from utilizing the same expression for the purpose of starting the car. The same consideration applies to a car manufacturer that secures a digital ignition switch via entry of a haiku. Copyright law does not bar third parties from utilizing the necessary expression of that otherwise protectable literary work for the purpose of starting the car. The computer program implementing that digital key may be protected by copyright law, but the law places no bar on copying the essential functional elements needed to operate the ignition switch — the haiku text and any other indispensable functional features of the computer program.As Baker v. Selden recognized, copyright law’s limiting doctrines implement a constitutional and statutory balance intended to promote progress by channeling functional features exclusively to the utility patent regime. Although copyright can protect separable expressive features, such as surface ornamentation of an ignition key or non-merged implementing code of a digital ignition key, it does not bar the use of functional specifications — the essential technological elements. Only utility patent law can protect those features.

Since its emergence during the industrial revolution nearly two centuries ago, design patent law has suffered from a profound identity crisis. Its drafters modeled the law nearly verbatim on the British copyright regime for surface ornamentation and sculptural features of three-dimensional articles such as textiles and stoves. Courts struggled to interpret protection for “useful” designs against the backdrop of a utility patent regime focused directly on technological inventions. Further complicating design patent’s role, some manufacturers used design patents as a nascent form of trademark protection until federal trademark protection emerged toward the end of the 19th century. In 1902, Congress clarified that design patents were limited to ornamental attributes of articles of manufacture and did not extend to functional attributes. Unfortunately, the Federal Circuit overlooked the legislation and the key regional circuit decisions interpreting it, cementing design patent law’s identity crisis into place. This article traces the origins of the ornamentality/non-functionality doctrine and shows how several early cases using the “dictated solely by utilitarian considerations” phrasing to deny design patent protection were misinterpreted to be the standard for determining whether a design was eligible for design patent protection. These decisions merely explained that designs “dictated solely by utilitarian considerations” were clearly outside of design patent eligibility. They did not mean that designs that only partially affected functionality qualified for design patents. Unfortunately, inattentive and protectionist judicial opinions caused the standard to drift far from these holdings and into direct conflict with the clear language and intent of the 1902 design patent amendments and fundamental, overarching intellectual property law principles reflected in the Supreme Court’s seminal Baker v. Selden decision.This article aims to correct this fundamental misinterpretation of intellectual property law. Part I tells the remarkable story of how the effort to transplant England’s design copyright regime to the United States spawned a confusingly labeled “design patent” regime and examines the confusion wrought by this mislabeled law during the mid to late 19th century. It also reveals a period in which design patent law served as a proto-federal trademark registration system before Congress established federal trademark protection in the late 19th century. Remnants of that dalliance still confusingly resonate in the design patent system today. Part II explores the 1902 amendments, which unequivocally limited design patents to the ornamental features of articles of manufacture and made clear that they did not extend design patent protection to functional elements. Part III traces the emergence and distortion of the ornamentality/non-functionality doctrine. The early decisions clearly grasped the need to exclude functionality from design patents. Unfortunately, later cases misapplied some of the language of those cases, resulting in standards that contradict the 1902 (and 1952) Acts as well as the logic reflected in Baker v. Selden and other Supreme Court cases dealing with the structure of the intellectual property system. Part IV traces the Federal Circuit’s tilting of the ornamentality/non-functionality doctrine toward over-broad protection of functionality within the design patent regime. Part V explores the forces that have led the design patent regime astray. Part VI proposes ways of rectifying design patent law’s wayward drift to restore fidelity to the statutory language and the overarching logic of the intellectual property system.