Legal Research on the Abuse of Patent Litigation and the Defensive Measures for the Japanese and Taiwanese IT Industry
-
Pawee Jenweeranon
Abstract
The patent assertion entity (PAE) which known as “the world, particularly severe impact in the US Specifically, in 2013, the report entitled “Patent Assertion and US Innovation” issued by the National Economic Council and Council of Economic Advisers of the US clearly reflected the significant harm of patent assertion toward the economic development of the country. Moreover, the Congress of the United States planned to reconsider the Innovation Act for combating PAEs at the beginning of May. The ongoing discussion in the Congress implies that analyzing the 2015 proposed Innovation Act is important for finding appropriate solutions to solve the remaining problem regarding the abuse of patent litigation in the US, specifically, Patent Trolling activity costs the US economy billions of dollars per year. The IT industry is the main target of patent trollers, briefly, due to the standard for considering the eligibility criteria for a software patent is still weak. Admittedly, many legal scholars believe that the proposed bill will be the significant tool for solving the abuse of patent litigation. For this reason, this research will analyze the major provisions in the proposed bill. Additionally, related cases in the US also will be addressed in this research, for instance, the case between Octane Fitness, LLC and ICON Health & Fitness, Inc. which will be discussed herein. This paper will define the concept of the patent assertion or patent troll and examine the relationship with IT industry. The paper will then clarify the significant role of the Innovation Act 2015 in the patent assertion. Further, this thesis will compare the major provisions of the Innovation Bill 2015 by separating into five main issues with the regulatory framework in Japan and Taiwan, study the rules which were laid down in the landmark cases to understand the court interpretation and propose the suggestion for selected countries to address aforementioned problem. In other words, an analysis of the Patent Assertion Entities situation in Japan and Taiwan will be conducted focusing on the regulatory framework for preventing patent troll and its activities because Japanese and Taiwanese IT Industry normally be targeted by foreign patent trollers. This situation led to the defensive measures issued by the Japanese and Taiwanese government which will be addressed in this paper. A comparative study of the Innovation bill and the domestic laws of Taiwan, Japan, and related factors will be analyzed herein.
Bibliography
Abernathy, Margaret 2015. “United States: The Innovation Act of 2015: Congress Targets Patent ‘Trolls’ Again.”.MondaqAccessed May 1, 2016. http://www.mondaq.com/unitedstates/x/387108/Patent/The+Innovation+Act+Of+2015+Congress+Targets+Patent+Trolls+Again.Search in Google Scholar
Chen, Chun-Hsien 2007. “Explaining Different Enforcement Rates of Intellectual Property Protection in the United States, Taiwan, and the People’s Republic of China.” Tulane Journal of Technology and Intellectual Property 10: 211.Search in Google Scholar
Chiu, Tai-San, and Fu-Mei Sung. 2004. “Cost and Fee Allocation in Taiwan Civil Procedure.”.Accessed May 1, 2016. http://www-personal.umich.edu/∼purzel/national_reports/Taiwan%20(ROC).pdf.Search in Google Scholar
Ciccatelli, Amanda 2014. “Patent Trolls get Greedy Across the Globe.”.Inside CounselAccessed May 1, 2016. http://www.insidecounsel.com/2014/02/19/patent-trolls-get-greedy-across-the-globe.Search in Google Scholar
Cohen, Lauren, and Scott Duke Kominers. 2015. “Patent Trolls: Evidence from Targeted Firms.”.Harvard Business School Finance Working PaperAccessed March 30, 2016. http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2464303.Search in Google Scholar
Cowlers, Julia K 1988. “Rule 11 of the Federal Rules of Civil Procedure and the Duty to Withdraw a Baseless Pleading.” Fordham Law Review 4: 697.Search in Google Scholar
Davis, Robin M 2008. “Failed Attempts to Dwarf the Patent Trolls: Permanent Injunctions in Patent Infringement Cases under the Proposed Patent Reform Act of 2005 and EBay v. Mercexvhange.” Cornell Journal of Law and Public Policy 17: 431.Search in Google Scholar
Downes, Larry 2015. “Why Congress Needs to Pass the Innovation Act this Time.” Harvard Business Reviewhttps://hbr.org/2015/03/why-congress-needs-to-pass-the-innovation-act-this-time.Search in Google Scholar
Feldman, Robin, and W. Nicholson Price. 2014. “Patent Trolling: Why Bio and Pharmaceutical are at Risks.” Stanford Technology Law Review 17: 773.10.2139/ssrn.2395987Search in Google Scholar
Frankel, Alison 2013. “Patent Trolls and Multidistrict Litigation: It’s Complicated.” Reuters. Accessed May 1, 2016. http://blogs.reuters.com/alison-frankel/2013/05/10/patent-trolls-and-multidistrict-litigation-its-complicated/.Search in Google Scholar
Fu, Jacqueline, and Joseph Tseng. 2013. “Snapshot of the Guidelines for Technology Licensing Arrangements of Taiwan’s Fair Trade Commission.” K&L Gate. Accessed May 1, 2016. http://www.klgates.com/files/Publication/0175bc50-36ab-4962-8cd8-4b66be017f18/Presentation/PublicationAttachment/8ef9c04e-93f8-4c59-948b-547cef230d86/Taiwan_FTC_Whitepaper_08292013.pdf.Search in Google Scholar
Graham, Jefferson 2014. “Adam Carolla Settles Podcasting Lawsuit.” USA Today. Accessed May 1, 2016. http://www.usatoday.com/story/tech/2014/08/19/adam-carolla-settles-podcasting-lawsuit/14301105/.Search in Google Scholar
Graham, Scott 2014. “Federal Circuit Puts Added Squeeze on Software Patents.” National Law Journal.Search in Google Scholar
Gugliuzza, Paul R 2015. “Patent Litigation Reform: The Courts, Congress, and the Federal Rule of Civil Procedure.” Boston University Law Review 95: 279.Search in Google Scholar
Haber, Stephen, and Ross Levine. 2014. “The Myth of the Wicked Patent Troll.” The Wall Street Journal. Accessed March 30, 2016.Search in Google Scholar
Harkins, Christopher A 2007. “Fending of Paper Patents and Patent Trolls: A Novel “Cold Fusion” Defense Because Changing Times Demand It.” Albany Law Journal of Science and Technology 17: 407.Search in Google Scholar
Hoyng, A. Willem, and Frank W. E. Eijsvogels. 2007. Global Patent Litigation Strategy and Practice. Dordrecht: Kluwer Law International.Search in Google Scholar
Hill, W. David, and Murata Shiniji. 2007. “Patent Litigation in Japan.” Akron Intellectual Property Journal 1: 152.Search in Google Scholar
Jacobson, David M 2009. “The Plausibility Standard under Twombly and Ashcroft.”.Dorsey and Whitney LLPAccessed April 24, 2016. http://files.dorsey.com/files/upload/jacobson_wdtl_article.pdf.Search in Google Scholar
Joe Brennan, Hui-Wen (Fiona) Hsueh, Miyuki Sahashi, and Yasuo Ohkuma. 2006. “Patent Troll in the U.S., Taiwan, Japan and Europe.” Casrip Newsletter-Spring/Summer 13. Accessed March 30, 2016. https://www.law.washington.edu/Casrip/Newsletter/default.aspx?year=2006&article=newsv13i2BrennanEtAl.Search in Google Scholar
Johnson, Vincent R 2014. “Minimizing the Costs of Patent Trolling.” UCLA Journal of Law and Technology 18: 13.Search in Google Scholar
Kushan, Jeffrey P 2012. “The Fruits of the Convoluted Road to Patent Reform: The New Invalidity Proceedings of the Patent and Trademark Office.” Yale Law and Policy Review 30: 385.Search in Google Scholar
Lim, Esther H, and Li Feng. 2013. “Recent Changes in U.S. Patent Law Impacting Taiwan Companies.”.FINNEGANAccessed May 1, 2016. http://www.finnegan.com/resources/articles/articlesdetail.aspx?news=2b92e5c2-8275-43c2-b0f5-896c0cb74b0d.Search in Google Scholar
Macini, A John P., and Alan Grimaldi. 2015. “Enhanced Pleading Standards for Patent Infringement Actions in the U.S.”.Mayer BrownAccessed April 24, 2016. https://www.mayerbrown.com/Enhanced-Pleading-Standards-for-Patent-Infringement-Actions-in-the-United-States-11-05-2015/?utm_source=Mondaq&utm_medium=syndication&utm_campaign=View-Original.Search in Google Scholar
Mayergoyz, Anna 2009. “Lessons from Europe on How to Tame U.S. Patent Trolls.” Cornell International Law Journal 42: 241.Search in Google Scholar
Mazzeoa, Michael J, Jonathan Hillel, and Samantha Zyontz. 2013. “Explaining the “unpredictable”: An empirical analysis of U.S. patent infringement awards.” International Review of Law and Economics 35: 58.10.1016/j.irle.2013.03.001Search in Google Scholar
McNamata, Colleen 2011. “Iqbal as Judicial Rorschach Test : An Empirical Study of District Court Interpretations of Ashcroft v. Iqbal.” Northwestern University Law Review 105: 433.Search in Google Scholar
Mehta, Sonal N 2014. “Recent Developments in Patent Litigation Fee Shifting under Section 285.”.Berkeley Law, University of California.Search in Google Scholar
Micheletti, Randy R 2010. “Willful Patent Infringement after In Re Seagate: Just What is Objectively Reckless Infringement.” Chicago Kent Law Review 84: 975.Search in Google Scholar
Offen-Brown, Elizabeth P 2010. “Forum Shopping and Venue Transfer in Patent Cases: Marshall’s Response to TS Tech and Genetech.” Berkeley Technology Law Journal 25: 62.Search in Google Scholar
Parker, Clifton B. 2015. “Patent Trolls Serve Valuable Role in Innovation, Stanford Expert Says.” Stanford News. Accessed May 1, 2016. http://news.stanford.edu/news/2015/february/haber-patent-trolls-022315.html.Search in Google Scholar
Pomper, Brian 2015. “Innovation Act Makes Patents Harder to Enforce, Easier to Infringe.” Intellectual Property Watch. Accessed May 1, 2016. http://www.ipwatchdog.com/2015/04/16/innovation-act-makes-patents-harder-to-enforce-easier-to-infringe/id=56860/.Search in Google Scholar
Quinn, Gene 2015. “Fee-shifting Will Not Do Anything to Stop Patent Trolls.” Intellectual Property Watch. Accessed May 1, 2016. www.ipwatchdog.com/2015/03/03/fee-shifting-wont-do-anything-to-stop-patent-trolls/id=55370.Search in Google Scholar
Rangarajan, Arjun 2015. “Pleading Patents : Predicting the Outcome of Statutorily Heightening Pleading Standards.” Duke Law and Technology Review 13: 195.Search in Google Scholar
Raucci, Anthony D 2012. “A Case Against the Entire Market Value Rule.” Washington and Lee Law Review 69: 2233.Search in Google Scholar
Roff, Peter. 2014. “The Frightening Emergence of Government Patent Trolls.” The Washington Times. Accessed March 30, 2016. http://www.washingtontimes.com/news/2014/aug/31/roff-the-frightening-emergence-of-government-paten/.Search in Google Scholar
Scott Morton, Fiona M, and Carl Shapiro. 2014. “Strategic Patent Acquisitions.” Antitrust Law Journal 79: 463.10.2139/ssrn.2288911Search in Google Scholar
Silver, Blair 2009. “Controlling Patent Trolling with Civil Rico.” Yale Journal of Law and Technology 11: 72.Search in Google Scholar
Takenaka, Toshiko 2000. “Patent Infringement Damages in Japan and the United States: Will Increased Patent Infringement Damage Awards Revive the Japanese Economy?” Washington University Journal of Law & Policy 2: 309.Search in Google Scholar
Takenaka, Toshiko, Christoph Rademacher, Jan Krauss, Jochen Pagenberg, Tilman Mueller-Stoy, and Christof Karl. 2015. Patent Enforcement in the U.S., Germany & Japan. 351. Oxford: Oxford University Press.Search in Google Scholar
The Proposed Patent Abuse Reduction Act of 2013. 2013. Available at: http://a3ba8a9e733f0f48e083-34c21d0cbf24e519af797fddd23e1832.r18.cf1.rackcdn.com/Documents/Patent%20Abuse%20Reduction%20Act.pdf.Search in Google Scholar
Tu, Michael C, and Lucy E. Buford. 2007. “Supreme Court’s Twombly Ruling will mean Higher Pleading Requirements for some Securities Litigation Claims.” ORRICK. Accessed April 24, 2016. https://www.orrick.com/Events-and-Publications/Documents/1203.pdf.Search in Google Scholar
Vaughan-Nichols, Steven J 2013. “56 Percent of Patent Lawsuit is Made by Patent Trolls.” ZD Net. Accessed May 1, 2016. http://www.zdnet.com/article/56-percent-of-all-patent-lawsuits-are-made-by-patent-trolls/.Search in Google Scholar
Yegulalp, Serdar 2016. “Patent trolls face a new deterrent: The RICO Act.” Info World. Accessed May 1, 2016. http://www.infoworld.com/article/2612158/patents/patent-trolls-face-a-new-deterrent-the-rico-act.html.Search in Google Scholar
©2017 Walter de Gruyter GmbH, Berlin/Boston
Articles in the same Issue
- Research Articles
- Political Federalism and Innovation: Are de jure Labor Regulations Absolute?
- Dynamic Panel Analysis of Construction Accidents in Hong Kong
- A Note on the Application of Dynamic Panel Data (DPD) Models in Economic Models of Crime
- Legal Research on the Abuse of Patent Litigation and the Defensive Measures for the Japanese and Taiwanese IT Industry
- Evaluating the Importance of Exports in Economic Growth of Pakistan; Evidence from ARDL Bound Testing Approach
- Twin Peaks Regulation After the Global Financial Crisis: A Reform Model for China?
Articles in the same Issue
- Research Articles
- Political Federalism and Innovation: Are de jure Labor Regulations Absolute?
- Dynamic Panel Analysis of Construction Accidents in Hong Kong
- A Note on the Application of Dynamic Panel Data (DPD) Models in Economic Models of Crime
- Legal Research on the Abuse of Patent Litigation and the Defensive Measures for the Japanese and Taiwanese IT Industry
- Evaluating the Importance of Exports in Economic Growth of Pakistan; Evidence from ARDL Bound Testing Approach
- Twin Peaks Regulation After the Global Financial Crisis: A Reform Model for China?
