From Patents to Privacy: Northwestern Law’s IP Scholars Are Leading The Field

Associate professor Laura Pedraza-Fariña’s path to the study of law began during protests at Yale University, where she was studying for a PhD in genetics. A Doctors Without Borders clinic in Khayelitsha Township, outside Cape Town, was pressing Yale to allow South Africa to make or import generic versions of an HIV breakthrough drug for which Yale held the patent. The drug in question, d4T, an antiretroviral drug also known as stavudine or by the brand name Zerit, sold exclusively by Bristol-Meyers Squibb, was one of the first components of the multiple therapy cocktail that brought AIDS largely under control in the United States. At the time, d4T was earning Yale over $30 million in annual revenue. A full 50,000 Khayelitsha Township residents were HIV positive, and none could afford antiretroviral therapy at the U.S and European prices: $10,000 to $15,000 per patient, per year.

In response to student demands, Yale took steps to remove barriers in its contracts with Bristol-Meyers Squibb, helping the drug become more readily available in South Africa. The protests ended, but they inspired Pedraza-Fariña to consider some important questions: What were a health-related patent holder’s rights and what was too much protection? And at what point did the patent on a valuable breakthrough become bad for access and innovation? “It was not my planned path to go to law school,” Pedraza-Fariña says. “But, like many former scientists, I became interested in the history and sociology of science and the consequences of scientific research at the human level.”

Professor Peter DiCola, a Searle Research Fellow and copyright law scholar, was a hobbyist musician at Princeton booking storied indie bands like Stereolab and the late Elliott Smith in his free time, just before the world shifted irrevocably from analog to digital. The internet was nascent, and Jenny Toomey and Kristin Thomson, members of the local band Tsunami, were in the process of creating the Future Music Coalition (FMC), an advocacy group with a mission to ensure a legitimate music marketplace in the digital age. “There was all this optimism that the internet would open things up for musicians, as the great equalizer,” DiCola says. He joined forces with Toomey and Thomson early on and worked as a researcher for FMC policy summits, which brought stakeholders within the music ecosystem — working musicians, artist advocates, policymakers, industry leaders and lawyers — together to understand the changing landscape of music distribution. DiCola’s resulting scholarship, at the intersection of economics and copyright law, has been shape-shifting. Essays on Regulation of Media, Entertainment, and Telecommunications, his dissertation for his PhD in economics at the University of Michigan, was informed by his experiences with the FMC and led him to author a series of white papers submitted to Federal Communications Commission (FCC) proceedings. One of those papers, “Radio Deregulation: Has It Served Citizens and Musicians?”, was cited by the Third Circuit Court of Appeals in Prometheus Radio Project v. FCC, a series of cases from 2003 to 2010 that challenged new media ownership rules and the threat of media concentration to free speech and the public interest.

In an era of rapid technological change, the members of Northwestern Law’s Intellectual Property (IP) faculty are focused on the study of innovation and the law. Collectively, the group represents impressive strength and influence — their scholarship guides countless courts and policymakers who must keep pace with staggering innovations.

David Schwartz, associate dean of research and intellectual life and professor of law, is interested in a study of patent law that goes beyond the common practitioner approach of “just reading cases,” he says. This has been an evolution for Schwartz, who joined the Northwestern Law faculty in 2015 after 11 years in private practice, both as a partner at two IP boutiques and an associate at Jenner and Block. Schwartz’s scholarship is focused on discovering novel ways to synthesize empirical and experimental data — especially in an age of Big Data — and his scholarship has assisted the agencies and courts that adjudicate patent related issues, including the inevitable disputes that follow. He has studied the rise of contingent fee representation in patent litigation and is a national expert regarding patent assertion entities, known as “patent trolls” — companies who buy patents often from the original inventor, then enforce the patents against infringing corporations, either by charging licensing fees or threatening to bring lawsuits. In the latter case, companies often settle. His article “Understanding the Realities of Modern Patent Litigation,” which appeared in the Texas Law Review, was cited by the U.S. Supreme Court in its decision in SCA Hygiene Products Aktiebolag v. First Quality Baby Products in 2017.

Recently, Schwartz hit the motherlode for his research in the form of a large data set of patent applications, released by the U.S. Patent and Trademark Office. Schwartz reviewed the abandoned patent applications and studied how they’re used in evaluating new applications. He presented his findings, “The Hidden Value of Patent Applications to the Patent System,” at The Munich Summer Institute, Bavarian Academy of Sciences & Humanities in June 2019 and the University of San Diego IP Speaker Series in February 2019, among other conferences. “Thirty years ago, [patent law] was not an important area,” Schwartz says. “In the ’90s, the economy picked up, tech companies boomed, and we saw a shift to a pro-patent stance. Patents were becoming more commercially valuable. Now we see industries like software, medical technology and diagnostics interested in the scope of patents and what is patentable subject matter. Uncertainty breeds litigation. There have been four Supreme Court cases in the past 10 years regarding what is patentable subject matter.”

In the adjacent area of trademark law, Shari Seidman Diamond, Howard J. Trienens Professor of Law and professor of psychology, has spent close to 50 years studying the presentation of scientific evidence in courtrooms and its evaluation by judges and juries. Diamond authored the Reference Guide on Survey Research for the Reference Manual for Scientific Evidence, a heavily cited and essential manual that assists federal judges in managing cases involving scientific and technical evidence. First published in 1994 by the Federal Judicial Center, judges often refer to the manual to help them evaluate the relevance and reliability of evidence being proffered. “I described scientific standards as a benchmark for federal judges,” Diamond says. “Over time, the number of trademark surveys and the court’s ability to evaluate them increased. Now the standards are widely accepted.”

Trademark survey methodology in particular — designed to measure consumer response to the strength of a trademark, such as the recognition of elements of a logo — is a growing area that is becoming more complex. Diamond is at the forefront of these methodologies, noting that their not-so-distant predecessors now seem archaic. “The early use of surveys was an improvement over the previous ways of proving consumer confusion, which traditionally involved a parade of witnesses selected by the parties,” Diamond says. “But early surveys were paper and pencil tests conducted in malls or over the telephone. Today, trademark surveys have changed dramatically because of the internet, presenting a whole new set of challenges for both courts and attorneys. They have to learn new skills to evaluate these new technologies and their validity.” Diamond co-edited Trademark and Deceptive Advertising Surveys: Law, Science, and Design (2012), a treatise published by the American Bar Association, which includes chapters on surveys in modern litigation, trademark dilution cases, and internet surveys. She currently serves on the Seventh Circuit Committee on Pattern Criminal Jury Instructions and, in 2012, she was elected to the American Academy of Arts and Sciences, a distinguished honorary society founded in 1780 to advance learning in service to the public good.

As the longest serving member of the Northwestern Law IP faculty, Diamond is pleased that the faculty has expanded over the years to reflect IP’s growing importance in the law, not just covering the core areas — patent, copyright and trademark — but also growing tentacles into newer areas. Associate professor Matthew Kugler joined the Northwestern Law faculty in 2016, with a keen focus in the areas of cybersecurity, bioethics, privacy, criminal procedure and trade secrets. Kugler holds a PhD from Princeton in psychology and social policy, was a law clerk to the Honorable Richard Posner in the Seventh Circuit Court of Appeals, and received the Casper Platt Award for the best paper by the University of Chicago Law School, for “Affinities in Privacy Attitudes.”

One of Kugler’s primary areas of study is biometric identifiers, such as fingerprints or facial scans, which have become fixtures of daily life. Take tagging devices on social media, for example, or thumbprints to open smartphones. Kugler’s scholarship investigates whether the public believes it has a reasonable right to privacy with regard to biometric data and whether the collection of biometric identifiers could put consumers at risk. He is busy writing a forthcoming paper “From Identification to Identity Theft: Public Perceptions of Biometric Privacy Harms,” that specifically considers the Illinois Biometric Information Privacy Act. “Courts are dealing with this on a daily basis,” Kugler says. “Illinois has the strongest biometric privacy statute in the country. It was passed early, in 2008, before the technology industry had fully mobilized around the issue of privacy. At the time, the public was scared by the bankruptcy of a company called Pay by Touch, and the law was passed without opposition. Now we are seeing lawsuits by employees against employers who use biometric timeclock technology, like fingerprint readers, and against technology companies that use facial recognition without having gotten the proper written consent under statutory requirements.” According to Kugler, this area will be more stringently regulated in the future, so the question he’s considering is how it should it be regulated. “In many cases, data is being collected and the owner isn’t doing anything with it. It’s just a loaded gun lying there with all the potential uses of the information,” he says.

Kugler’s research and advocacy work is helping advance an understanding of privacy law not just in Illinois, but also in the federal courts, which are wrestling with the intersectional aspects of criminal law, privacy rights, and Constitutional law. Kugler posits that the growing field of privacy will be led by criminal procedure. Criminal defendants are bringing claims, often under the Fourth Amendment, as seen in the recent landmark privacy case Carpenter v. United States, in which the Supreme Court held that a warrant is required for police to access cell-site location information (CSLI) from a wireless carrier. In Carpenter, the police accessed the detailed movements of the defendant, an armed robber, over 127 days, without first securing a warrant. The Supreme Court noted the recent seismic shifts in digital technology which allow carriers to collect deeply revealing information about cellphone owners, incriminating evidence that, under the Court’s holding, should be protected by the U.S. Constitution. Kugler co-wrote a 2017 op-ed in the Los Angeles Times, “Your phone knows where you’ve been, and the government wants to know too,” in advance of the Carpenter decision, arguing that criminal cases such as these will set the standards for the public’s expectation of privacy. Kugler and his co-author, Sarah O. Schrup, clinical associate professor of law and director of the Appellate Advocacy Center, along with 17 other lawyers and legal scholars, filed an amicus brief in the case, citing the “mountain of research” on the privacy beliefs of ordinary citizens, who in most cases don’t know their location information is being collected and do not expect it can be freely shared.

The IP faculty are all in agreement that what makes Northwestern Law an exceptional place to be an intellectual property scholar is the unparalleled access to an array of resources crucial to their research. “Not only does Northwestern Law value and put resources behind empirical research, but it understands the value of interdisciplinary practices,” Kugler says

He cites the Law School’s affiliation with the Northwestern University Center on Law, Business, and Economics (CLBE). The CLBE is a nonprofit research organization committed to studying the impact of laws and regulations on economic growth, and is led by Matthew Spitzer, Howard and Elizabeth Chapman Professor of Law. The CLBE regularly organizes events on innovation and antitrust economics, in addition to housing a database for academic researchers regarding technology standards and Standard Setting Organizations (SSOs). “We research the economics of how things get invented, such as compensation incentives for inventors and the abuse of patents,” Spitzer says. “We are currently working on an experimental piece on attitudes toward risk, testing for factors such as how certain the compensation will be and whether it matters if an invention is socially conscious.”

In another example of interdisciplinary research, Pedraza-Fariña partners with Northwestern’s Science in Human Culture Program, which brings social scientists together to study world-wide transformations in science, technology and medicine. “It is a deep collaboration outside of the law, to inform the law,” she says.

The IP faculty also notes the immense value of its proximity to the Chicago IP bar. “Outside of Washington, by virtue of the Patent & Trademark Office being there, and the Bay Area, with high tech, the Chicago IP legal community is among the strongest in the country,” Schwartz says. “Many of the judges in the Northern District of Illinois, including Judges Holderman, Kennelly, Kendall, Lefkow, and Gottschall, have taken a strong interest in IP cases.”

Kugler echoes that sentiment, citing recent visiting professors, including the co-chair of a large law firm’s global privacy and cybersecurity practice and two assistant U.S. Attorneys. “The IP faculty is able to meld the theoretical and the practitioner experience,” he says. “Practitioners, who rightly have an obligation to be a zealous advocate for their clients, unfortunately do not have the ability to see the issues with the detachment we do, it’s not a conversation they are allowed to have. As academics, we are able to be detached and see the larger picture, and add empirical data on top of that.”

In October 2018, Northwestern Law students had the opportunity to attend live proceedings of the United States Court of Appeals for the Federal Circuit, the only appellate-level court with jurisdiction to hear patent appeals, on the Northwestern Law campus. The Federal Circuit annually hears arguments outside of Washington, DC as part of its nationwide statutory requirement to provide reasonable opportunities to citizens to appear before the court. The oral arguments focused on patent infringement and a federal employee dispute, and was open to Northwestern students, faculty, alumni, staff, and the general public. In October 2019, for the first time, the Law School will host the Patent Trial and Appeal Board, an administrative law body created in 2012, under the America Invents Act, to decide issues of patentability. Select students will have the opportunity to present summaries of the cases before the administrative law judges, supervised by Pedraza-Fariña and Schwartz.

During their tenures, each member of the IP faculty has witnessed large transformations in their specialties, propelled by rapidly changing technologies and economic forces, and their deft scholarship will continue to navigate such shifts. In the music industry, according to DiCola, “there has been a shift in economic forces to a concentration by the tech platforms and they now have the power to set the price for music. Google, Facebook, Apple and Amazon are at the center and wield enormous economic power. Google is bigger than Exxon Mobil. Tech platforms know their customers by the data they collect and want to cross-sell on their platforms.” DiCola’s Arizona Law Review article, “Money from Music: Survey Evidence on Musicians’ Revenue and Lessons About Copyright Incentives,” has been downloaded more than 4,000 times. “Much of the music industry has become what is known as a ‘loss leader,’” DiCola notes, “meaning music is now a product sold at a loss to attract customers to tech platforms more generally. They may lose money on music, but they make it up elsewhere, by cross-selling gifts or subscriptions.” The focus of DiCola’s scholarship also included the topic of digital sampling, or the appropriation of a snippet of a sound recording—such as a recognizable rhythm or melody copyrighted by another musician—without a license, and investigates whether there is room for such creative practices short of licensing, under the fair use doctrine or de minimis thresholds. DiCola authored the book Creative License: The Law and Culture of Digital Sampling (with Kembrew McLeod) and is also studying copyright in the context of professional photography, after receiving a grant from Case Western Reserve University School of Law’s Spangenberg Center in 2016.

While Pedraza-Fariña’s research has focused on health-related patents, the implications in her findings, like all of her colleagues’ work, are much broader. “Innovations are typically created by communities, not this mythical person, the lone wolf,” Pedraza-Fariña says. “Leaps happen when knowledge from one network is shared with another.”

Pedraza-Fariña cites the Northwestern Consortium for Oncofertility as a successful model of innovation, with its key area of study the question of fertility post cancer treatment. “You would think it’s an obvious question to study, but the models of gynecologists and endocrinologists did not include a post-cancer model,” Pedraza-Fariña says. “Research oncologists had incorrect conceptions of the priorities of women. They believed a woman’s priority should be eradicating cancer, not preserving her fertility, so they assumed she would be interested in aggressive treatment. There were no studies of the effect of chemotherapy drugs on fertility. There was this huge gap.” Questions like these, where there is a gap between fields, can get tossed back and forth before meaningful studies occur, Pedraza-Fariña says. Inspired by interviews with Oncofertility Consortium members, she has published several articles analyzing the dynamics of scientific collaboration. Her study of how scientific social norms can interfere with breakthrough innovation, “Anti-Innovation Norms,” was published in 2018 in the Northwestern University Law Review.

“Perhaps patent law is not the best policy lever to foster breakthrough innovation. Patentable or not patentable should not be a binary switch for innovation. To encourage breakthroughs, what we want is to remove barriers to collaboration by addressing harmful social norms. To develop good patent law, you have to understand the underlying social norms and incentive structures of communities of innovators.”