Dmitry Karshtedt

The Completeness Requirement in Patent Law

This Article argues that courts have created a de facto extra-statutory condition of patentability, herein termed the “completeness” requirement. This requirement bars patents on certain inventions whose chief value lies in their function as inputs into downstream research. The Article contends that the notion of completeness explains doctrinal innovations that are difficult to rationalize any other way. Although it reflects an important policy of limiting unduly preemptive patent claims on foundational, building-block inventions, the completeness requirement in its current form fails to implement this policy in a way that is coherent and consistent with patent law’s utilitarian goals. In addition, courts’ attempts to develop the completeness requirement based on existing statutory provisions have resulted in controversial interpretations of the Patent Act, generating legitimacy costs. The Article argues that these problems are best addressed by explicitly recognizing completeness as a separate requirement of patentability and modifying the doctrinal tools used to enforce this requirement. To determine whether a patent claim passes completeness, the Article proposes a new test that focuses on the generality and unpredictability of a claimed invention’s applications. Further, it argues that an amendment to the Patent Act codifying the requirement of completeness is the most effective way to implement the proposal. Finally, the Article explores the possibility of awarding a limited patent right, which it terms “Research Patent,” to claims that satisfy existing requirements of pa-tentability, but fail completeness. This right would provide the intellectual property incentives that are likely needed to develop and commercialize foundational inventions, and also help decrease the potential for stifling downstream innovation created by granting full patent protection to such inventions.

Damages for Indirect Patent Infringement

In many patent infringement cases, the only practical way that the plaintiff can obtain relief is on a theory of secondary liability, which is generally referred to as indirect infringement. The remedy in patent cases frequently includes damages for past infringement. Because jury verdicts in patent cases can amount to hundreds of millions of dollars, patent damages have become a hotly litigated issue. Nevertheless, much to the frustration of the litigants in these high-stakes lawsuits, the courts continue to struggle to clarify how damages for indirect infringement should be determined.The Court of Appeals for the Federal Circuit, which has exclusive appellate jurisdiction over patent cases, has deepened the confusion over calculating damages. Two opinions from the Federal Circuit have made contradictory pronouncements on the issue of accounting for proven acts of primary (i.e., direct) infringement in determining damages for indirect infringement. Lucent Technologies, Inc. v. Gateway, Inc. held that the extent of directly infringing use of the patent should be viewed as one of many pieces of evidence for measuring the extent of damages (“the evidentiary approach”). In contrast, Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc. endorsed a rule that enables trial judges to limit damages as a matter of law to proven, enumerated acts of direct infringement of the asserted patents (“the atomistic approach”). The conflict between the two approaches raises fundamental, unanswered questions concerning the relationship between patent infringement and ordinary torts. This Article fills a gap in the literature by identifying, and working toward unraveling, one of the puzzles of indirect infringement. Specifically, it examines what the legal fiction of formally imputing an act of one entity to another — an important tenet of secondary liability in tort — means for patent damages. The answer is surprising: the atomistic approach is consistent with the principles of tort law, but is at odds with well-established, general rules for determining patent damages. Conversely, the evidentiary approach seems to ignore tort law’s imputation principle and embodies the pragmatic, patent-specific damages rules that the atomistic approach eschews. This Article resolves the tension in favor of the evidentiary approach and explains that considerations of policy, logic, and precedent support a damages analysis that reflects fundamental differences between patent law and tort law.