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description= Lisa Larrimore Ouellette s Patent & IP Blog, Reviewing Recent Scholarship on Patent Law, IP Theory, and Innovation;
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ai and trade secrecy posted by camilla hrdy i have been giving some talks on my article keeping chatgpt a trade secret while selling it too which is now published in the berkeley technology law journal the article addresses a legal puzzle how can companies protect generative ai technology through trade secret law while also selling new ai products to the public i have gotten some really interesting questions from audience members on ai and trade secrecy i thought i d share them along with my answers if you disagree with my answers or how i am characterizing the technology i d really love to hear your thoughts read more posted at 10 49 am labels ai trade secret monday june 9 2025 ecofactor and alternate expert theories posted by michael risch hello world i ve finished my long stint as an administrator and suddenly find myself with time to do the things i used to do like writing blog posts it s been slow around here but i am glad written description is alive and kicking i hope to blog on a regular basis going forward i ve missed it for my first post in a while i thought i would tackle ecofactor v google the first en banc utility patent case heard by the federal circuit in many years with the help of a firm in texas i filed one of only two substantive amicus briefs in favor of ecofactor i ll discuss the case a bit what my position was and my take on the ruling the case itself was a run of the mill patent infringement case ecofactor won and presented expert testimony on a reasonable royalty for damages google did not present an expert a key evidentiary problem is that all the prior actual licenses were lump sum and they were for multiple patents the expert used recitals in the contract as well as an ecofactor witness to extrapolate a per unit royalty he testified that the licenses agreed to an x royalty note that i m not waffling the actual amount has been kept secret for some reason the expert also testified that the addition of other patents didn t really affect the rate because the technology was all the same a divided panel affirmed the infringement and the damages the en banc court vacated and asked for briefing on the court s role as gatekeeper for expert testimony under the daubert case google and amicii submitted briefs on this and also argued that apportionment was improperly done the federal circuit instructed parties to leave the apportionment question aside and i think rightly so as discussed in my paper on patent portfolios and by parchomovsky and wagner here the value of any given patent in a portfolio is zero and in the aggregate is basically the royalty rate google and its amicii argued unsurprisingly that daubert requires the judge to ensure that all damages calculations follow the law and that obviously hadn t been done here parties favoring neither side emphasized that courts should not exclude experts just because facts are disputed i won t discuss these much more there are plenty of summaries around they all basically say the same thing when not focused on policy with the variation being how strict people think the court should be in determining reliability of damages opinions i tend to agree with most of the legal arguments folks made it is hard not to there are decades of precedent on admission of expert testimony at least at the general level the primary dispute was really on the facts and how those rules should apply to this case and so i decided to file a brief based in part on my paper un reasonable royalties which discusses the history of royalty remedies as well as a discussion of expert witnesses our argument pretty simply was that the opinion was well within the norm of reliability experts often extrapolate royalties from lump sums the language in the agreements at least supported what a willing buyer would want and there was other evidence in the record not mentioned in the expert report that supported the royalty the en banc court ruled 8 2 that the expert testimony should have been excluded one ground for reversal was that the court didn t explain the ruling admitting it why it was reliable this is important for future courts the second ground which we ll discuss here was that the expert s testimony that the royalty rate agreed to in the contracts was x was not supported by contract interpretation as a matter of law and therefore the opinion was unreliable and non salvageable by other evidence in the case which was a primary point of contention with the dissent in reaching this decision the court cited a lot of precedent on daubert all of it my thoughts on the case are below read more posted at 9 00 am labels damages tuesday may 13 2025 oswald do trade secret injunctions last forever posted by camilla hrdy an injunction in a trade secret case should generally end when the trade secret does but new empirical research by professor lynda oswald sheds new light on the actual lifetime of these injunctions the results are surprising oswald finds that in the vast majority 80 of cases in her dataset courts simply grant an open ended injunction without a fixed term while defendants could in theory move to dissolve the injunction when the trade secret ceased to exist oswald found no evidence this happened in effect the injunctions appear to have remained in effect indefinitely lynda oswald is the louis and myrtle moskowitz research professor of business and law at university of michigan s school of business professor oswald s article an empirical analysis of permanent injunction life in trade secret misappropriation cases has now been published in the iowa law review read more posted at 11 45 pm labels empirics trade secret tuesday march 4 2025 openevidence v pathway the legal battle over ai reverse engineering posted by camilla hrdy can generative ai models like chatgpt be reverse engineered in order to develop competing models if so will this activity be deemed legal reverse engineering or illegal trade secret misappropriation i have now written a few articles exploring this question including trade secrecy meets generative ai and keeping chatgpt a trade secret while selling it too but when i first asked this question a year and a half ago i was getting responses purely in the negative i asked a panel at a trade secret conference at georgetown in 2023 can chatgpt be reverse engineered several members of the panel laughed i would talk to ai experts and the answer i got was along the lines of it s not going to happen this post is cross posted on patently o read more posted at 9 14 am labels trade secret sunday february 9 2025 fagundes perzanowski a new framework for conceptualizing the end of ip rights posted by camilla hrdy dave fagundes and aaron perzanowski have just posted a very interesting and thought provoking paper draft on ssrn called how intellectual property ends the paper which follows up on their prior work on copyright abandonment closely examines how ip rights come to an end through doctrines like expiration forfeiture or abandonment the paper seeks to provide a taxonomy for thinking about how ip rights end the authors argue that imprecise or inconsistent uses of terms like abandonment and forfeiture deprives these terms of meaning and obscures the underlying logic of the doctrines as originally developed at common law 5 they instead posit a single unified framework for consistently conceiving of termination that can work across the four ip regimes read more posted at 10 51 am labels copyright trademark monday january 27 2025 buccafusco masur varadarajan does trade secrecy have an information paradox posted by camilla hrdy one of the key purposes of trade secret law is to address the arrow information paradox the information paradox posits that there is a fundamental challenge in information exchange it is difficult to assess the value of information without first sharing it but once the information is shared it becomes vulnerable to being copied leaving the originator without compensation and without a competitive advantage read more posted at 7 43 pm labels trade secret monday june 3 2024 guest post diversity pilots initiative comment on proposed changes to ptab practice posted by lisa larrimore ouellette guest post by ashton woods a jd candidate and member of the juelsgaard intellectual property and innovation clinic at stanford law school this post is part of a blog post series by the innovator diversity pilots initiative dpi which advances inclusive innovation through rigorous research dpi will be hosting its second conference at emory university law school in atlanta on friday september 20 2024 indicate your interest by signing up here on february 21 the uspto issued a notice of proposed rulemaking for expanding opportunities to appear before the patent trial and appeal board ptab and dpi filed one of seven comments on the proposal dpi s full comment can be found here currently parties appearing before the ptab who are represented by counsel must designate lead and backup counsel lead counsel must be a uspto registered practitioner meaning that they have technical training and have passed the registration exam commonly known as the patent bar exam backup counsel may be non registered if they are recognized pro hac vice under the proposed rule counsel can switch roles with a non registered practitioner acting as lead counsel and a registered practitioner acting as backup counsel additionally parties who can show good cause including financial hardship can waive the backup counsel requirement though the party s sole counsel must still be a registered practitioner finally the proposed rule streamlines the pro hac vice recognition process for non registered practitioners though they still must be accompanied by a registered practitioner in the lead or backup role as explained in more detail in the full comment dpi views the proposed rule as a modest step toward reducing the accessibility gap for potential patentees patent practitioners and patent challengers the goal of the proposed rule is laudable and it may provide a solid foundation for future efforts to diversify the patent bar and the patent system more broadly if it can effectively expand the pool of eligible practitioners in proceedings before the ptab the proposed rule may support wider uspto efforts to increase the participation of underrepresented communities in the innovation ecosystem read more posted at 3 03 pm labels diversitypilots thursday may 30 2024 gaia bernstein on unwired gaining control over addictive technologies posted by camilla hrdy guest post by gaia bernstein technology privacy and policy professor of law co director of the institute for privacy protection and the gibbons institute for law science and technology seton hall university school of law based on her recent tedx talk nine years ago when i sat down to research in a coffee shop took out my laptop kindle and phone but hours later realized that i accomplished little but felt fatigue what happened i realized the hours were wasted on emails texts and mostly aimless web surfing i started understanding them that something was wrong read more posted at 5 03 pm labels health innovation science saturday may 25 2024 catalog of court mandated ai disclosures cf uspto guidance posted by lisa larrimore ouellette guest post by victoria fang a jd candidate at stanford law before law school fang worked as a patent examiner at the uspto in the medical imaging and diagnostics space in the past year two chatgpt lawyers a california eviction law firm michael cohen and a colorado attorney have each made headlines for making the same mistake citing fake cases in legal filings in attempts to speed up their legal research these lawyers used generative ai tools like chatgpt and google bard that hallucinated nonexistent case law indeed use of generative ai by litigants raises issues of accuracy and confidentiality chatgpt has been known to hallucinate and has other limitations including being limited to information on the internet before certain date cutoffs and not actively searching the internet or dedicated legal databases for new information courts have responded to the increased use of generative ai by litigants through judge or case specific guidance standing orders and local rules which i have summarized in this spreadsheet these court mandates have been collated from various news articles ropes gray s artificial intelligence court order tracker launched in january 2024 and independently searching uscourts gov as summarized in the catalog only a few courts or judges outright prohibit the use of ai among courts that do not prohibit the use of ai some courts require disclosure and or certification and others make clear that verification by a human is required a number of judges even put a special emphasis on confidentiality more recently judges have begun requiring litigants to keep a record of the prompts and responses they used in case issues arise read more posted at 11 23 am labels ai thursday april 25 2024 diversity pilots initiative blog post series posted by lisa larrimore ouellette happy 1 year anniversary to the innovator diversity pilots initiative dpi today we feature two new posts one by lolita darden ppac chair and one by colleen v chien jillian grennan on unpacking the innovator inventor gap evidence from engineers see below for links below to all the diversity pilots initiative blog posts so far cross posted at diversitypilots org and patently o read more posted at 12 51 pm labels diversitypilots guest post by chien grennan unpacking the innovator inventor gap evidence from engineers posted by lisa larrimore ouellette guest post by colleen chien professor of law at the university of california berkeley school of law and co director of the berkeley center for law and technology and jillian grennan associate professor of finance and sustainability at the university of california berkeley haas school of business this post is part of a series by the diversity pilots initiative which advances inclusive innovation through rigorous research the first blog in the series is here and resources from the first conference of the initiative are available here which ip professionals ascend to partnership or top counsel roles which professors publish in the top journals and which innovators become inventors this question of who among lawyers academics or innovators reaches the next milestone in the progression of a career is relevant in many settings it has been a central focus in the world of innovation since uspto s director kathi vidal s urgent call to ensure that we get everyone off the bench in order to solve world problems and foster economic prosperity this call is motivated by the observation that while women comprise 35 of the stem workforce they make up only 13 of inventors black professionals represent 9 of stem workers but only 1 2 of inventors what explains this innovator inventor gap the reduced rate at which underrepresented innovators become in...
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