57 Wm. & Mary L. Rev. 2197 (2015-2016)
Virtually every significant legal doctrine in IP is either about whether the plaintiff has a valid IP right that the law will recognize (validity); whether the defendant's conduct violates that right (infringement); or whether the defendant is somehow privileged to violate that right (defenses). IP regimes tend to separate doctrines in these three legal categories relatively strictly. They apply different burdens of proof and persuasion to infringement and validity. In many cases they ask different actors to decide one doctrine but not the other. And even where none of that is true, the nature of IP law is to categorize an argument in order to apply the proper rules for that argument. The result of this separation is that parties treat IP rights "like a nose of wax, which may be turned and twisted in any direction." When infringement is at issue, IP owners tout the breadth of their rights, while accused infringers seek to cabin them within narrow bounds. When it comes to validity, however, the parties reverse their positions, with IP owners emphasizing the narrowness oftheir rights in order to avoid having those rights held invalid and accused infingers arguing the reverse. Because of the separation between validity, infringement, and defenses, it is often possible for a party to successfully argue that an IP right means one thing in one context and something very different in another. And courts will not necessarily detect the problem because they are thinking of only the precise legal issue before them. The result is a number of IP doctrines that simply make no sense to an outsider. The culprit is simple, but fundamental: IP regimes largely lack an integrated procedure for deciding the proper extent of an IP right. Without some way of assessing the breadth ofan IP right that considers validity, infringement, and defenses together, courts will always be prone to make mistakes in applying any one of the doctrines separately. In this Article, we suggest that IP regimes need a process for determining the scope of an IP right. Scope is not merely validity, and it is not merely infringement. Rather, it refers to the range of things the IP right lawfully protects against competition. Only by evaluating scope in a single, integrated fashion can courts avoid the nose of wax problem that has grown endemic in IP law. Scope is, quite simply, the fundamental question that underlies everything else in IP law, but which courts rarely think about expressly.
McKenna, Mark and Lemley, Mark A., "Scope" (2016). Journal Articles. 1259.