Legal Thinking for the 21st Century Economy.
  Andrew Chin  

Andrew Chin Andrew Chin

Andrew Chin
Software Patents

Biotechnology Patents

Patent Theory

Antitrust Principles in Information Technology

Antitrust and Industrial Organization


Quantitative Legal Analysis

Administrative Law

Information Technology in the Legal System

Asian American Studies

Parallel Algorithms and Architectures

Boolean Function Complexity 

Software Patents

Ghost in the New Machine: How Alice Exposed Software Patenting's Category Mistake, 16 N.C. J. L. & Tech. 623 (2015)
The Alice Court's characterization of computer programming has effectively repudiated, inter alia, the doctrine that programming a general-purpose computer creates a patent-eligible "new machine." This Article revisits In re Bernhart, the first holding based on the "new machine" principle, concluding that the Court of Customs and Patent Appeals committed a category mistake in conducting its nonobviousness analysis. This suggests that § 101 has a unique role to play in ensuring the analytical coherence of the other tests for patentability, and that step two of the Mayo/Alice test could helpfully enforce the doctrinal distinction between a patent-eligible "method or means" and an unpatentable "result or effect."

Alappat Redux: Support for Functional Language in Software Patent Claims, 66 SMU L. Rev. 491 (2013)
The Federal Circuit has suggested in some recent cases that any algorithm can serve as adequate structural support for a means-plus-function element in a software patent claim under § 112(f). A recent proposal by Mark Lemley fully endorses this proposition and seeks its broader application. The concept of an algorithm, however, is too slippery to serve as the basis for such a rule. In this Article, I argue that this overreliance on the algorithm concept originated in a revisionist gloss on the Federal Circuit's 1994 Alappat decision. Informed by a closer reading of what Alappat actually has to say about claim construction under § 112(f), I propose a more stable "concrete causation" standard that is applicable to all technologies, but would be especially well-aligned with the reforms in the software field intended by Lemley's proposal.

Computational Complexity and the Scope of Software Patents, 39 Jurimetrics 17 (1999)
This article proposes that the reverse doctrine of equivalents should allow as a defense to software patent infringement those improvements in computational complexity that are superlinear in the parameters of the problem solved by the underlying algorithm, and presents four independent rationales for such an approach.

On Abstraction and Equivalence in Software Patent Doctrine:  A Response to Bessen, Meurer and Klemens, 16 J. Intell. Prop. L. 197 (2009)
Recent books by Professors James Bessen and Michael Meurer and by economist Ben Klemens have argued that software warrants technology-specific treatment in patent doctrine. This article argues that the authors' categorical claims about software are unsupported by computer science, and therefore cannot support their sweeping proposals regarding software patents as a matter of law. Such proposals remain subject to empirical examination and critique as policy choices, and are unlikely to be achieved through judicially developed categorical distinctions.

Biotechnology Patents
Gene Probes as Unpatentable Printed Matter, 20 Fed. Cir. B.J. 528 (2011)
This article argues that the printed matter doctrine is applicable to DNA oligonucleotide molecules because they are disposed to store nucleotide sequence information in a manner analogous in all relevant respects to other substrates that may be more intuitively recognizable as information storage media, such as laser-printed text on paper.

Artful Prior Art and the Quality of DNA Patents, 57 Ala. L. Rev. 975 (2006)
This article argues that a focus on disclosed molecular structure in evaluating DNA patent claims has resulted in a significant discrepancy between the prior art that is available to the patent system and the scientific community’s understanding of the state of the art. To illustrate and address this problem, this article presents an example of an “artfully drafted” prior art reference: a digital document [On the Preparation and Utilization of Isolated and Purified Oligonucleotides, CD-ROM (2002)] that discloses the sequences of 11 million oligonucleotides (short DNA molecules) and methods of making and using each, which was derived from the previous scientific literature without further inventive skill, and has now been cited in more than 30 pending prosecutions.

Research in the Shadow of DNA Patents, 87 J. Pat. & Trademark Off. Soc'y 846 (2005)
In recent years, the Federal Circuit and the Patent Office have characterized the legal doctrines governing the patentability of DNA molecules as essentially settled. This Article argues that the factual premises underlying those doctrines are increasingly being undermined by ongoing developments in biotechnology. Specifically, it may soon be possible to demonstrate that the patenting of DNA molecules retards the identification and sequencing of so many other useful DNA molecules that patent-driven DNA research is a self-defeating enterprise. To this end, this Article provides quantitative evidence of the preclusive effects of DNA patenting on specific laboratory procedures in genetic research.

Patent Theory
Surgically Precise But Kinematically Abstract Patents, 55 Hous. L. Rev. 268 (2017)
This Article critically examines kinematically abstract claims in the U.S. surgical robotics industry, where claims purporting to cover all mechanisms exhibiting a specific kinematic property are widespread. First, it describes the role of patents and kinematic claiming in Intuitive Surgical’s emergence as the industry’s monopolist in 2003 and in some of the subsequent challenges the company has faced from competing innovators and patent owners. Second, it draws on results from physics and geometry to explain why kinematically abstract claims logically fall under longstanding doctrinal exclusions of mathematical theorems and abstract ideas from patent-eligible subject matter. Finally, it examines the patent-eligibility of a claimed surgical manipulator whose design incorporates kinematic data captured from procedures performed by kinesthetically skilled surgeons. From this case study, broader questions emerge about the kinds of progress and skill that fall within the patent system’s ambit, with further consequences for the political economy of labor and downstream innovation in the age of automation.

The Ontological Function of the Patent Document, 74 U. Pitt. L. Rev. 263 (2012) 
With the passage and impending implementation of the “first-to-file” provisions of the America Invents Act of 2011, the U.S. patent system must rely more than ever before on patent documents for its own ontological commitments concerning the existence of claimed kinds of useful objects and processes. This Article provides a comprehensive description of the previously unrecognized function of the patent document in incurring and securing warrants to these ontological commitments, and the respective roles of legal doctrines and practices in the patent system’s ontological project. Among other contributions, the resulting metaphysical account serves to reconcile competing interpretations of the written description requirement that have emerged from the Federal Circuit’s recent jurisprudence, and to explain why the patent system is willing and able to examine, grant and enforce claims reciting theoretical entities. While this Article is entirely descriptive, it concludes by identifying promising normative and prescriptive implications of this work, including the formulation of an appropriate test for the patent-eligibility of software-implemented inventions in the post-Bilski era.

The Elusive "Marketplace" in Post-Bilski Jurisprudence, 34 Campbell L. Rev. 663 (2012)
The Supreme Court's 2010 decision in Bilski v. Kappos appears to have provided inadequate guidance to the courts and the Patent Office regarding the scope of the abstract-ideas exclusion from patentable subject matter.  Federal Circuit Chief Judge Randall R. Rader, however, appears to have found in that decision a clear vindication of his own view that the machine-or-transformation test is incorrectly grounded in "the age of iron and steel at a time of subatomic particles and terabytes," and thus fails, for example, to accommodate advances in "software [that] transform[] our lives without physical anchors."  Chief Judge Rader has subsequently authored a series of opinions identifying the "marketplace" as an operational context in which a claimed invention is not likely to be unpatentably abstract.  This article argues that this reliance on the "marketplace" is untenable and should form no part of patent-eligibility doctrine.

Antitrust Principles in Information Technology
Antitrust Analysis in Software Product Markets: A First Principles Approach, 18 Harv. J. L. & Tech. 1 (2004)
This article argues that antitrust analysis in the software industry should proceed from the understanding that software products confer intellectual property rights and technological capabilities incident to a copy of the vendor’s software code, and are not comprised of the software code itself. The article shows how to use this more precise understanding of a software product in defining the relevant product market, a central inquiry in antitrust analysis. These methods are illustrated with discussions of the Syncsort and Grokster cases.

Decoding Microsoft: A First Principles Approach, 40 Wake Forest L. Rev. 1 (2005)
Applying the methods developed in “Antitrust Analysis in Software Product Markets,” this article argues that the courts, the litigating parties, and most commentators misconstrued the Microsoft tying claim by relying on the inaccurate intuition that the allegedly tied software products were comprised of software code. The article reviews the complex litigation history of the tying claim, pointing out where these errors occurred. The article then reexamines the tying claim under each of the three proposed alternative approaches (the Jefferson Parish, “facially plausible benefits” and rule of reason standards), and concludes that the factual record on remand to Judge Kollar-Kotelly would have supported tying liability and that Microsoft now enjoys illegitimately acquired monopoly power in the market for Web browser software products.

Installed Base Opportunism and the Scope of Intellectual Property Rights in Software Products, 10 Wake Forest Intell. Prop. L.J. 323 (2010)
In contrast to the D.C. Circuit’s dismissal of Microsoft’s copyright counterclaims, antitrust challenges to IBM’s current mainframe licensing practices thus far have encountered broad judicial deference to IBM’s patent rights. The purpose of this Article is to analyze and critique these contrasting approaches and to situate the current litigation and investigation involving IBM in the still-unsettled doctrinal context at the intersection of intellectual property and antitrust law.

A Case of Insecure Browsing: Exploring Missed Opportunities in the Microsoft Antitrust Suit, Raleigh News & Observer, Sept. 30, 2004
As the deadline for certiorari passed, officially ending the Microsoft litigation, this op-ed article argues that the failure to redress Microsoft's tying conduct has resulted in serious security hazards and wasted judicial resources.

Antitrust and Industrial Organization

An Anti-Competitive Get Together, Raleigh News & Observer, Oct. 4, 2011 (with Barak Richman)
Determining how an acquisition or a merger will affect the larger economy is routinely complicated and often invites vigorous debate. But the proposed AT&T-T-Mobile deal presents an easy case.

Analyzing Mergers in Innovation Markets, 38 Jurimetrics 119 (1998)
This article presents a probabilistic framework for the analysis of mergers in innovation markets, and shows that this technique is preferable to the current approach in four ways.  First, it more thoroughly accounts for the uncertainty inherent in definitions of innovation markets and in allegations of anticompetitive effects in innovation markets.  Second, it more accurately measures the structural effects of a merger on a market that faces the prospect of technological change.  Third, it separates the fact-specific allegation that a merger will reduce the probability of successful innovation from the controversial general proposition that mergers hamper innovation.  Finally, it construes innovation markets in a way that clearly falls within the cognizance of Section 7 of the Clayton Act.

Antitrust By Chance: A Unified Theory of Horizontal Merger Doctrine, Note, 106 Yale L.J. 1165 (1997)
This note reinterprets the federal antitrust agencies’ Horizontal Merger Guidelines as an internally consistent system of statistical inference that accounts for the dynamic behavior of market structure.

Differential Privacy as a Response to the Reidentification Threat: The Facebook Advertiser Case Study, 90 N.C. L. Rev. ___ (2012) (with Anne Klinefelter)
This article uses a reverse-engineering approach to infer that Facebook appears to be using differential privacy-supporting technologies in its interactive query system to report audience reach data to prospective users of its targeted advertising system, without apparent loss of utility.  This case study provides an opportunity to consider criteria for identifying contexts where privacy laws might draw benefits from the adoption of a differential privacy standard similar to that apparently met by Facebook's advertising audience reach database.  United States privacy law is a collection of many different sectoral statutes and regulations, torts, and constitutional law, and some areas are more amenable to incorporation of the differential privacy standard than others.  This Article highlights some opportunities for recognition of the differential privacy standard as a best practice or a presumption of compliance for privacy, while acknowledging certain limitations on the transferability of the Facebook example.

Opening Up Facebook's Privacy Technology, Raleigh News & Observer, May 18, 2012
If the reverse-engineering study reported in Differential Privacy is correct about the kind of privacy technology Facebook is using, there is no reason for Facebook to keep its details secret.

Making the World Wide Web Safe for Democracy: A Medium-Specific First Amendment Analysis, 19 Hastings Comm. & Ent. L.J. 309 (1997)
This article provides theoretical and empirical analyses of the impact of the Web’s hyperlinked architecture on the structure of democratic discourse, and argues that the First Amendment does not foreclose redistributive, content-neutral regulation of media power on the Internet.

Quantitative Legal Analysis
The Learned Hand Unformula for Short-Swing Liability, 91 Wash. L. Rev. 1523 (2016)
Section 16(b) of the Securities Exchange Act of 1934 allows for the recovery of short-swing profits realized by certain insiders from trading in a corporation’s stock within a period of less than six months. Three generations of corporate law students have been taught the “lowest-in, highest-out” formula that is intended to maximize the disgorgement of short-swing profits under section 16(b). Arnold Jacobs’s 1987 treatise presented two hypothetical examples where the formula fell short of the intended maximum, but courts, commentators, and practitioners have largely ignored these theoretical challenges to the formula’s validity. This Article identifies Gratz v. Claughton as the first reported real-world example of the formula’s failure. Ironically, Gratz has been taught and cited for more than sixty years as a leading authority for the formula’s use, not least because of its distinguished author, Judge Learned Hand. This Article argues that Gratz has been misunderstood and that Hand wisely adjudicated this complex case without prescribing or endorsing the formula in any way. It also shows that the formula has no need of Gratz’s endorsement, as long as the formula is correctly interpreted as limited to simpler cases where it is mathematically valid. It formalizes and extends Jacobs’s results by showing that the formula may fall short of the maximum by up to fifty percent when misused in more complex cases, and has actually fallen short in another more recent case. Finally, it provides online tools to enable practitioners and judges to calculate short-swing liability correctly in all cases.

Accurate Calculation of Short-Swing Profits Under Section 16(b) of the Securities Exchange Act of 1934, 22 Del. J. Corp. L 587 (1997)
This article provides a general method for accurately calculating short-swing profits under § 16(b) of the Securities Exchange Act of 1934, correcting the widely taught but potentially erroneous “lowest-in, highest-out” algorithm.

Administrative Law
Spoiling the Surprise: Constraints Facing Random Regulatory Inspections in Japan and the United States, 20 Nw. J. Int'l L. & Bus. 99 (1999)
This article examines the use of random administrative inspections in the United States and Japan in the wake of the 1998 Japanese Ministry of Finance scandal.
Information Technology in the Legal System
Search for Tomorrow: Some Side Effects of Patent Office Automation, 87 N.C. L. Rev. 1617 (2009)
The Patent Office’s move to a paperless search facility and the public’s growing involvement in prior art search have recently elevated the role of search engine technology in the patent examination process.  This Article reports on an empirical study of how this technology has systematically changed not only how patent references are found, but also which patents are cited as prior art.  A longitudinal analysis of an imputed data set indicates that examiners became increasingly reliant on keyword full-text search in the late 1990s, as the technology became accessible from their desktop computers.  This change in examination practice appears to have had a substantive effect on the choice of patents to be cited as prior art.  Specifically, patent citations imputed to keyword search tend to be co-classified (according to the Patent Office classification system) more frequently than patent citations in general and patent citations imputed to citation tracking methods.  These findings support the concerns of some commentators about Patent Office automation and the outsourcing of prior art search. In particular, it appears that the Patent Office classification system is not being fully utilized to improve the precision of search results.
Asian American Studies
The 1995 National Asian American Studies Examination in U.S. High Schools, 21 Amerasia J. 121 (1995)
Because of effective professional networks and extraordinary individual efforts, a relatively small number of Asian American Studies departments have had a disproportionate influence on the formulation of Asian American political values and discourse during the past decade.  Nevertheless, Asian American perspectives are rarely recognized in most parts of the United States, despite the continuing growth of Asian American communities in all regions of the country.  The recent proliferation of Asian American Studies programs beyond the leading universities of the West Coast, Hawaii, New York and New England is therefore of vital importance.  American high schools are also beginning to provide an exposure to Asian American perspectives as part of their required multicultural curricula. More often than not, however, the teachers being asked to provide these perspectives are unaware of Asian American Studies as an academic discipline.  The National Asian American Studies Examination is a new initiative to encourage the development of rigorous programs in multicultural education at the high school level.  As a co-curricular activity, it motivates students and teachers to engage in a meaningful exploration of the Asian American experience, even in the absence of administrative support.

The KKK and Vietnamese Fishermen, in DIVERSTORY (working title) (Frank Wu, ed., forthcoming 2002)
This article describes the successful use of an antitrust claim in litigation in the early 1980s to protect a community of Vietnamese American fishermen from racial harassment and intimidation by a private army of white supremacists.

Hate's Harms Persist 25 Years After Raleigh Murder, Raleigh News & Observer, July 26, 2014
A racially motivated murder in Raleigh 25 years ago led to the first federal conviction of a person for hate crimes against an Asian-American.

Parallel Algorithms and Architectures
Locality-Preserving Hash Functions for General Purpose Parallel Computation, 12 Algorithmica 170 (1994)
Consider the problem of efficiently simulating the shared-memory parallel random access machine (PRAM) model on massively parallel architectures with physically distributed memory.  To prevent network congestion and memory bank contention, it may be advantageous to hash the shared memory address space.  The decision on whether or not to use hashing depends on (1) the communication latency in the network and (2) the locality of memory accesses in the algorithm.

We relate this decision directly to algorithmic issues by studying the complexity of hashing in the Block PRAM model of Aggarwal, Chandra and Snir, a shared-memory model of parallel computation which accounts for communication locality.  For this model, we exhibit a universal family of hash functions having optimal locality.  The complexity of applying these hash functions to the shared address space of the Block PRAM (i.e., by permuting data elements) is asymptotically equivalent to the complexity of performing a square matrix transpose, and this result is best possible for all pairwise independent universal hash families.  These complexity bounds provide theoretical evidence that hashing and randomized routing need not destroy communication locality, addressing an open question of Valiant.

Virtual Shared Memory: Algorithms and Complexity, 113 Info. & Computation 199  (1993) (with W.F. McColl)
We consider the Block PRAM model of Aggarwal et al.  For a Block PRAM model with n/log n processors and communication latency l=O(log n), we show that prefix sums can be performed in time O(l log n/log l), but list ranking requires time Ω(l log n); these bounds are tight.  These results justify an intuitive observation of Gazit et al. that algorithm designers should, when possible, replace the list ranking procedure with the prefix sums procedure.  We demonstrate the value of this technique in choosing between two optimal PRAM algorithms for finding the connected components of dense graphs.  We also give theoretical improvements for integer sorting and many other algorithms based on prefix sums, and suggest a relationship between the issue of graph density for the connected components problem and alternative approaches to integer sorting.

Permutations on the Block PRAM, 45 Info. Processing Letters 69 (1993)
In present-day parallel computers, the complexity of permuting N data items in shared memory varies, depending on whether large blocks can be used for communication.  The Block PRAM model of Aggarwal, Chandra and Snir is unique among shared-memory models of parallel computation in modeling this phenomenon.  We characterize the Block PRAM complexity of some useful classes of permutations, improving known results.

Complexity Issues in General Purpose Parallel Computing, D.Phil. thesis, University of Oxford (1991)

Boolean Function Complexity
On the Depth Complexity of the Counting Functions, 35 Info. Processing Letters 325 (1990)
We use Karchmer and Wigderson’s characterization of circuit depth in terms of communication complexity to design shallow Boolean circuits for the counting functions.  We show that the MOD3 counting function on n arguments can be computed by Boolean networks which contain negations and binary OR- and AND-gates in depth c log2n, where c ≈ 2.881.  This is an improvement over the obvious depth upper bound of 3 log2n.  We can also design circuits for the MOD5 and MOD11 functions having depth 3.475 log2n and 4.930 log2n, respectively.
Andrew Chin   Andrew Chin