Ted Sichelman

Hieken Visiting Professor in Patent Law

Fall 2016

Biography

Ted Sichelman is a Professor of Law at the University of San Diego, where he is also Director of the Center for Intellectual Property Law & Markets and Executive Director of the Center for Computation, Mathematics, and the Law. He teaches and writes in the areas of patent law, intellectual property, law and entrepreneurship, empirical legal studies, law and economics, and law and artificial intelligence. His current research efforts explore the nature of intellectual property in the era of “big data,” the history of patent law, the effects of non-competition agreements on innovation, intellectual property law theory, the use of trade secrets by startups, and mathematical and logical models for legal artificial intelligence systems.

Professor Sichelman's works have been or will be published in the Stanford Law Review, Northwestern University Law Review, Texas Law Review, Journal of Empirical Legal Studies, Harvard Journal of Law & Technology, Berkeley Technology Law Journal, and many other journals and books. Professor Sichelman’s publications have been highly cited. As of May 2016, his articles include the 6th-most cited law journal article published in 2011 (Life After Bilski), the 12th most-cited law journal article published in 2010 (Commercializing Patents), and the 21st most-cited law journal article published in 2009 (High Technology Entrepreneurs and the Patent System) (according to HeinOnline). As of April 2016, his articles Commercializing Patents and Life After Bilski are the first and second most-cited of all intellectual property law articles published since 2010 (according to HeinOnline). Life After Bilski has also been cited by the U.S. Supreme Court (Mayo v. Prometheus (2012)) and over 20 other judicial opinions.

Professor Sichelman has participated in a number of U.S. Supreme Court cases, including playing a substantial role in a win for an injured employee in MetLife v. Glenn (2008); drafting an amicus brief in the patent case, Bilski v. Kappos (2010), in which the court largely adopted the recommendations and reasoning of the brief; and drafting an amicus brief in Global-Tech v. SEB (2011), a patent case involving the scope of indirect infringement. In 2011, he worked with the office of U.S. Representative Zoe Lofgren to draft proposed language for the recently passed America Invents Act, the most substantial revision to the Patent Act since 1952. In 2012, he served on the Lieutenant Governor of California’s task force to place a satellite office of the U.S. Patent & Trademark Office in California.

Professor Sichelman earned an undergraduate degree in the History of Philosophy of Science, with distinction, from Stanford University and a Master’s degree in Physics from Florida State University. He founded and ran a venture capital-backed software and services company, Unified Dispatch, which was later acquired by a publicly traded company. Professor Sichelman designed the company’s software and is a named inventor on several issued and filed patents and applications. After graduating from Harvard Law School, magna cum laude, he clerked for the Honorable A. Wallace Tashima of the U.S. Court of Appeals for the Ninth Circuit. He practiced in the areas of intellectual property litigation and appeals at the law firms of Heller Ehrman and Irell & Manella. In 2008 and 2009, he was a Ewing Marion Kauffman Foundation Fellow at the UC Berkeley School of Law.

Ted Sichelman, Purging Patent Law of ‘Private Law’ Remedies, 92 Tex. L. Rev. 517 (2014).
Categories:
Civil Practice & Procedure
,
Property Law
Sub-Categories:
Private Law
,
Intellectual Property - Patent & Trademark
Type: Article
Abstract
In this Article, Professor Sichelman rejects the fundamental “private law” premise of patent law remedies that courts should always attempt to make the patentee “whole” in the event of infringement because the overarching aim of patent law is to promote innovation, not to remedy private wrongs. Specifically, make-whole damages may thwart optimal innovation incentives when they concern small components of complex products involving high-switching costs, generate large consumer deadweight losses, result in substantial duplicated costs during the pre-invention R&D process, or create transaction costs far in excess of the value of the invention. In other situations, a patentee should be made more than whole. For example, inducing socially valuable innovations that do not command large profits in the private market—such as drugs for rare diseases and technologies for the disabled—may require more than make-whole compensation. More generally, Professor Sichelman argues that the statutory remedies provisions of the Patent Act rest on a flawed foundation. Instead of correcting for private wrongs inflicted on private parties, patent law remedies should be tailored simply to promote the types and levels of innovation that most benefit society, taking into account administrative and error costs. As such, Professor Sichelman proposes that the patent system and its associated remedies should be viewed as part of a public regulatory regime designed to further societal goals rather than a private law system that protects individual interests.
Ted Sichelman, The Vonage Trilogy: A Case Study in "Patent Bullying," 90 Notre Dame L. Rev. 543 (2014).
Categories:
Property Law
,
Technology & Law
Sub-Categories:
Intellectual Property - Patent & Trademark
,
Communications Law
Type: Article
Abstract
This Article presents an in-depth case study of a series of infringement suits filed by “patent bullies.” Unlike the oft-discussed “patent trolls”—which typically sell no products or services and perform no R&D—patent bullies are large, established operating companies that threaten or institute costly patent infringement actions of dubious merit against smaller companies, usually in order to suppress competition or garner licensing fees. In an ideal world of high-quality patents and optimal patent licensing and litigation, infringement suits by aggressive incumbents would have a cleansing, almost Darwinian effect. Yet, defects and distortions in patent examination, licensing, and litigation—the very problems that are raised constantly in the context of patent trolls—generally apply with equal and, often, greater force to patent bullies. Nonetheless, patent bullies have scarcely been discussed in the academic literature or popular press, especially in recent years. This Article examines three patent infringement suits filed by incumbent telecommunications carriers—Sprint, Verizon, and AT&T—against Vonage, then an early-stage company providing consumer telephone services over the Internet. Based on a detailed analysis of the patentsat-issue, prior art, court documents, and news accounts, it shows that the incumbents were able to exploit defects in the patent system in order to prevent disruptive technologies from competing with their outmoded products and services. Because startups like Vonage typically lack the resources to vigorously defend against even weak patent suits, patent bullying can result in severe anticompetitive effects. The incumbents in the Vonage suits achieved their intended result— drastically reducing Vonage’s stock price, severely weakening its position in the market, and placing it at the brink of insolvency. This case study demonstrates that further theoretical and empirical study is warranted to assess the full extent of the patent bullying problem.
Ted Sichelman, Commercializing Patents, 62 Stan. L. Rev. 341 (2010).
Categories:
Property Law
Sub-Categories:
Intellectual Property - Patent & Trademark
Type: Article
Abstract
About half, probably more, of all patented inventions in the United States are never commercially exploited. Even many of the most commercially significant inventions take decades to come to market. In this article, I contend that the patent system is substantially retarding the commercialization of valuable inventions. This neglect should not come as a surprise -- the dominant framework undergirding patent law, the "reward" theory, is premised on providing incentives for nascent inventions, not commercialized end-products. Although more recent "prospect" theories properly recognize the importance of patent protection for commercializing inventions, they incorrectly conclude that strong, real property-like rights for inventors are necessary to spur robust commercialization -- sometimes, weaker rights are preferable. In analyzing these dominant theories of patent law, I conclude that it is effectively impossible to adjust the timing, duration, and scope of traditional patent rights in order to encourage substantial commercialization. In place of efforts to reform the traditional patent, whose quid pro quo is the disclosure of new and non-obvious information, I propose a new "commercialization" patent, granted in exchange for the commitment to make and sell a substantially novel product. Decoupling the invention and commercialization functions of patent law into dual rights would yield more commercialization than the existing system, without unduly decreasing competition, encouraging rent-seeking, or increasing administrative costs.

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