IDEA Volume 59 Blog

Friday, February 1, 2019

Welcome to the IDEA Volume 59 Blog!

In this blog, we want to showcase our Associate Editors’ notes.  We encourage all of you to attend the annual Student Note Symposium in April 2019.  At this event, you can hear a short presentation from each Associate Editor and talk with them about their research and the nuances of each area.  You can also learn about IDEA and the UNH Law Review. Thank you and enjoy!

Table of Contents

A Tale of Two Immunities: The Applicability of Sovereign Immunity to Inter Partes Review

By Nicholas D. Bortz, J.D. ‘20

Native American tribes are considered sovereign entities under American common law. Although this sovereignty is not recognized pursuant to a constitutional provision, such as state sovereignty under the Eleventh Amendment, Native American tribes enjoy much of the same immunity as the States. For instance, they are not amendable to suit by private parties. However, this immunity is also subject to abrogation through consent from the Tribe or an act of Congress. Furthermore, as a superior sovereign, the United States government can bring suit against the Native American tribes through district court or administrative agency adjudications. However, what happens when the line between the federal government and private parties is blurred? Does sovereign immunity, state or tribal, apply to administrative proceedings that involve both private parties and the U.S. government?

In Covidien LP v. University of Florida Research Foundation Inc., the Patent Trial & Appeal Board (PTAB) held that state sovereign immunity barred the initiation of inter partes review (IPR) based on Supreme Court precedent in Federal Maritime Commission v. South Carolina State Ports Authority (FMC). In FMC, the Court held that the proceedings largely resembled civil litigation and involved the adjudication of a private party complaint against a nonconsenting State. Thus, the Court ruled that state sovereign immunity barred the action. Analogizing to the proceedings in FMC, the PTAB in Covidien held that IPR mimics civil litigation and is essentially a dispute between private parties over the validity of a patent. Thus, the PTAB ruled that state sovereign immunity barred the IPR.

In contrast, in St. Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc., the PTAB held that tribal sovereign immunity could not be asserted as a defense in the IPR. As in Covidien, the PTAB discussed the FMC holding. However, in this case, they quickly dismissed its relevance and determined that it did not apply to tribal sovereign immunity. Instead, the PTAB distinguished tribal immunity from state immunity on various statutory, procedural, and precedential grounds. On appeal, the Federal Circuit affirmed the PTAB’s decision on substantially the same grounds but emphasized that an IPR is a government-initiated review of a patent grant and not a dispute between private parties

The PTAB isn’t alone in its uncertainty over the IPR process. The Supreme Court has also offered conflicting characterizations. In Oil States Energy Services, LLC v. Greene’s Energy Group LLC, the Court discussed an IPR as a matter between the Government and those subject to their authority and deemed an IPR simply a reconsideration of a previously granted patent. In contrast, in SAS Institute Inc. v. Iancu, the Court emphasized how an IPR was a party-directed, adversarial process that mimicked civil litigation.

There is an obvious tension over what type of proceeding best characterizes IPR, as well as whether sovereign immunity can even be asserted in an IPR. Why this tension? Well, there are many possible reasons, but the most obvious, and the one this Note will focus on, is the fact that this case is such a close one. IPR is similar to district court litigation, but also resembles an administrative action. IPR is truly a hybrid proceeding. In light of such uncertainty, and the historical and legal significance of the doctrine of sovereign immunity, the Court should err on the side of caution. Unless Congress specifically and unequivocally abrogates sovereign immunity, state or tribal, it should be an available defense in an IPR. Admittedly, if this tactic of acquiring and asserting sovereign immunity becomes prevalent, it could have significant ramifications on the patent system, including rendering the IPR program superfluous. However, those are policy considerations more appropriately determined by Congress.

Chronic Traumatic Encephalopathy’s controversy with the Tort System

By Katherine Coker, J.D. ‘20

In the early 1920’s boxers who sustained multiple blows to the head in a match were observed to have “punch drunk syndrome.” Later doctors and researchers linked punch drunk syndrome to multiple traumatic brain injuries (TBI). These injuries are referred to more commonly as concussions. In sever cases multiple TBI’s lead to Chronic Traumatic Encephalopathy (CTE).

CTE is a degenerative brain disease which is only diagnoseable upon death, through a brain autopsy. The in vivo symptoms are similar to Alzheimer’s, and other degenerative brain diseases. The public is becoming increasingly aware of this disease through research surrounding TBI and concussions. In many cases CTE leads to an early death for the injured party and families have brought wrongful death actions on behalf of the deceased.

In light of cases brought against various leagues, major league sports organizations are reaching class settlements for many brain diseases. However, the terms are for retired athletes and families who are able to show they have a degenerative disease, before the finalization of the settlement. Leaving a large class of athletes unable to recover for the injuries sustained while playing for various organizations.

The goal of the tort system is to make the injured party whole. Current and former athletes who show symptoms of CTE should be made whole by the organizations for whom they worked. Currently the athletes, are unable to recover as they cannot show they suffer from CTE until they are dead, and the deceased cannot be made whole. This note explores tort theories these athletes could succeed in to recover for their injuries, and what recourse future athletes may have in light of new developments in TBI monitoring and as awareness of TBI and concussions grows.

Transforming a Pile of Junk – a Model for Cross-Competitive Negative Knowledge Sharing

By Dustin Ferzacca, J.D. ‘20

In its current form, trade secret law protects negative knowledge – the knowledge of what doesn’t work – as a form of intellectual property. Companies can now legally protect not only their final product, but every failed experiment, dead end attempt, and misguided version that led to the final product. This protection is problematic for a number of reasons. Protection of negative knowledge undercuts the general skills and knowledge rule, severely limiting employee mobility. Furthermore, negative knowledge fails to stand alone as property. Moreover, negative knowledge protection fails to encourage innovation, and may even stifle innovation, meaning that it does not fit within traditional rationales of intellectual property law. Finally, if enforced fully, negative knowledge protection leads to absurd and unworkable results.

However, negative knowledge protection finds its basis in the Uniform Trade Secret Act, and changing the law is a daunting task of questionable value. How then, can industries affected by this legal doctrine avoid the issues that negative knowledge protection causes?
This paper will propose a model for sharing negative knowledge trade secrets across competitive boundaries as a means of increasing innovative output in certain high-tech industries. The proposed model is not a rejection of legal protection for negative knowledge trade secrets, rather it is a contract-based alternative to negative knowledge secret disputes that builds on the existing legal framework of both black letter and common law negative trade secret protection.

Research suggests that high tech industries throughout history have benefited from informal sharing of information across competitive boundaries. During the industrial revolution, the birth of Silicon Valley, and the explosion of open source software, engineers and scientists working collaboratively and sharing across formal boundaries have been able to increase the pace of innovation beyond that of corporations with tight information and human capital controls. Based on that research, the present model proposes a formalized central body that receives, standardizes, and publishes the negative knowledge of participating member entities to the other entities in the industry group. The primary example industry that may benefit from the model is a group of pharma companies working to cure the same disease. An alternative example industry is the autonomous car industry, with its plethora of complimentary, rather than directly competitive companies.  However, the model extends to any industry that embodies the qualifying characteristics suggested in the paper.

Preserving Copyright Integrity: Artist Dead Hand Control through Wills and Trusts

By Sarah McNeal, J.D. ‘20

“The doctrine of moral right is not part of the law of the United States . . . except insofar as parts of that doctrine exist in our law as specific rights – such as copyright, libel, privacy, and unfair competition.” Geisel v. Poynter Prods., Inc., 295 F. Supp. 331 (S.D.N.Y. 1968).

Everyone owns a copyright, regardless of whether they realize this fact. Every “original work[] of authorship fixed in any tangible medium of expression” is protected by the Copyright Act of 1976, whether this is a photograph captured on a phone or notes taken during class. Typically, an author does not express strong opinions about the usage or integrity of their works. However, occasionally, creators such as P.L. Travers, and Willa Cather do articulate strong preferences.
The United States has allegedly been fully compliant with Article 6bis of the Berne Convention since 1989. This compliance is supposed to include a guarantee of droit moral, or moral rights, to enable standardization with the other signatory countries. Moral rights would provide several statutory rights including (1) the paternity right, and (2) the right to the integrity of the work. In contrast to Europe’s solidified statutory regime, artists within the United States solely have guards such as contract violation claims and state law droit moral claims. The only statutory federal protection available is the Visual Artists Rights Act of 1990 (VARA).

Furthermore, under the legal protections, unlike Europe’s droit moral, domestic artists have no consistent droit moral protection upon their death. This is partially due to political resistance during the implementation of the Berne Convention. Nevertheless, the global and economic nature of copyright law has since shifted to align the doctrine more closely with that of trademarks and right of publicity. These intellectual property fields already include accepted conventions for integrity maintenance – whether through protection of business goodwill or the dilution cause of action in trademarks, or reputational protections in right of publicity. Not only is there no theoretical reason to deny this right to artists, but there are economic advantages to maintaining the integrity and reputation of authors and their copyrights for the duration of their statutory protections. 

Due to the political resistance on the statutory implementation of this doctrine, the best solution to this gap in protection is through the utilization of wills and trusts. While there are differing scholarly analysis in the Berne Convention’s signatory countries about whether droit moral is alienable, there are no such current restrictions in the United States’ jurisprudence. Instead, copyright is considered a completely alienable property right. There are possible pitfalls to be aware of – if not worded correctly or if the restrictions are unreasonable, then the executors of the author’s estates can ignore the requests. This is what happened with Kopka’s works, and partially what occurred with P.L. Travers’ “Mary Poppins Returns” movie. However, the rare correct utilization of wills to manifest the author’s intent– such as with Willa Cather’s letters – have proven that this is a proven method that should be a more utilized tool of an intellectual property lawyer to protect their client’s estates and their work’s integrities.

Patents and the Fourth Amendment

By Matthew Middleton J.D., ‘20

There is an enormous literature discussing how copyright and trademark law intersects with the U.S. Constitution, particularly the First Amendment. Conversely, patent law’s connection to the U.S. Constitution is rarely discussed. While Judge Mayer’s concurrence in Intellectual Ventures sparked some academic commentary on patent law and the First Amendment, no literature discusses patent law and the Fourth Amendment, reflecting an assumption that patent law and the Fourth Amendment do not intersect.

This assumption is wrong. The USPTO routinely grants patents that implicate Fourth Amendment concerns. While patents are privately owned, the act of granting a patent is within the sole power of the government. Thus, the act of granting a patent is similar to how the government enacts any law. Since patents are no different from any other government-made “law,” they should be similarly subject to the Fourth Amendment. Indeed, many patents exist that may implicate the Fourth Amendment. Specifically, patents to surveillance defense technology heavily implicate the Fourth Amendment because restricting surveillance defense violates the Fourth Amendment.

Imagine that your neighbor, Dave, recently installed a new security system, including cameras. You normally wouldn’t think anything of it, but you notice that one of the cameras is angled so that it can film your entire backyard. Dave has always been a nosy neighbor, but now he has taken it too far. To block Dave’s camera from viewing your backyard, you decide to raise your six foot fence another three inches, successfully blocking Dave’s camera. Unfortunately, city zoning laws require all fences to be under six feet, and the city issues you a citation. By issuing a citation, does the city violate your Fourth Amendment rights? I argue yes. By restricting surveillance defense, the city has violated the Fourth Amendment.

Suppose instead that the USPTO grants a patent to a generic fence. By definition, patents are a right to exclude, granting the patent owner the right to restrict others from making, using, or selling the patented item. Thus, by granting a patent to a generic fence, no one except the patent holder is allowed to make, use, or sell any fences. In doing so, the government has restricted surveillance and violated the Fourth Amendment.

While a patent to a generic fence may seem far-fetched, more realistic examples exist. Consider U.S. Patent No. 9,862,489, which provides an “apparatus [that] can disable a UAV detected within or near a secure perimeter without causing collateral damage.” The ‘489 patent provides a device that can disable drones, devices that can be used for surveillance. Now suppose your neighbor, Dave, decides to attach a camera to a drone instead of his house. Dave flies the drone to your window and surveils the inside of your home. Unfortunately, because the government has granted the ‘489 patent, your means of protecting yourself are restricted. Thus, by granting the ‘489 patent, the government has restricted surveillance defense and violated the Fourth Amendment.

Addressing the Opioid Epidemic Through Decriminalization

By Danielle Pomeroy, J.D. ‘20

Every day, more than 1,000 people overdose on opioids in the United States. Internationally, the United States ranks third for mortality rates resulting from opioid overdoses, and in a single year, over $20,000,000,000 is spent relating to the emergency department and inpatient care for opioid poisonings.

It is evident that the abuse and misuse of opioids is an ongoing issue in the United States, and there is no evidence to show that it is slowing down any time soon. Rather, mortality rates are rising and opioid-related crimes continue to be one of the leading sources for American incarceration.
Is incarceration really the solution, though? The annual cost to incarcerate someone can range anywhere between $31,000 to upwards of $60,000. However, drug use is rampant in prisons and many of our prison systems are not best equipped to adequately deal with detoxing inmates. If only forty-percent of these drug users were sent to rehabilitation rather than prison, it is estimated that the United would save over $12,000,000,000 annually. Even more so, in many cases, prisons induce the problem currently faced by the United States. An inmate recently released from prison is over a hundred times more likely to overdose during the first two weeks of their release. In many cases, these former inmates are unable to seek help immediately following their release due to their insurance coverage being suspended while they are incarcerated, thus leading to dangerous gaps in access to treatment following their release.

Within the past two decades, the United States has been taking large strides towards changing our criminal justice system in respect to drug-related crimes. Drug courts are now available in all fifty states, and the Obama administration began to address sentencing discrepancies between drug crimes. For the most part, the states are leading the movement on alternative measures to address the opioid epidemic. Within the past two years, at least fifteen states have enacted laws targeting the overuse of opioids. For example, Massachusetts has adopted legislation allowing citizens to buy naloxone, an opioid overdose reversal drug, without a prescription.

Despite the effort of our state and federal governments, opioids continue to be an ongoing issue for the United States. Therefore, it is time we embrace significant changes in the ways in which we deal with opioid abusers. Perhaps it is time we decriminalize opioids altogether in order to allocate funds to the root of the epidemic: addiction.