25 IPL Newsl. 1 (2006-2007)

handle is hein.journals/iprolane25 and id is 1 raw text is: 












A  Publication of The ABA  Section of Intellectual Property Law  www.abanet.org/intelprop
                                                                              Volume 25, Number 1: Fall 2006

 Judicial Support for Serniconductor

                        Reverse Engineering

                                         BY TERRY LUDLOW


                   The lights are bright in the
                   surgery, but this isn't a hospital.
                   A man in a lab coat is engaged in a
                   delicate operation. By means of a
                   precise and rigorous exploratory
                   surgery, he will find out exactly
                   what he needs to know- Let's take a
                   closer look. He's operating on...a
    Terry Ludlow   cell phone?
                      The expert analyst in this sce-
nario is not employing a surgical procedure to repair the
cell phone; in fact, he is making use of reverse engineer-
ing to determine how the phone works in order to gain
competitive intelligence on it and possibly to see if it
might be infringing any patents. Reverse engineering
brings to mind one main question for the intellectual
property lawyer: Is it legal? By exploring the historical
context of reverse engineering and looking at a few
modern cases dealing with reverse engineering and
intellectual property regimes, it is discovered that not
only is reverse engineering legal, but it is also a means
of maintaining competition that is fair and healthy for
the marketplace.

Historical Context
Historically, the ethical basis for reverse engineering is
linked to the importance that copyright law ascribes to
copying as an integral step in advancing knowledge.
   In 1989, in Bonito Boats Inc. v. Thunder Craft Boats,'
Justice Sandra Day O'Connor of the U.S. Supreme
Court stated:
   From their inception, the federal patent laws have embod-
   ied a careful balance between the need to promote innova-
   tion and the recognition that imitation and refinement
   through imitation are both necessary to invention itself and
   the very lifeblood of a competitive economy. The novelty
   and nonobviousness requirements of patentability embody
   a congressional understanding, implicit in the patent clause
Terry Ludlow is the founder and CEO of Chipworks, a
reverse-engineering company. He may be reached at
Tludlow@ chipworks.com.


  itself, that free exploitation of ideas will bt  the rule to
  which the federal protection of a patentis the exception.
  The public at large remains free to discover and exploit
  the trade secrets through reverse engineering of products
  in the public domain or by independent develop-
  ment... Reverse engineering of chemical and mechanical
  articles in the public domain often leads to significant
  advances in technology.
  The competitive reality of reverse engineering may act as
  a spur to the inventor creating an incentive to develop
  inventions which meet the rigorous requirements of
  patentability.
  Reverse engineering is widely accepted in industry as
a means for companies to obtain competitive intelli-
gence. Every year, General Motors, for example, strips
down dozens of brand new vehicles from their competi-
tors to see what those competitors are doing.2 In this
way, it can find new ways to improve its own processes
and perhaps lower costs. Every progressive company
does competitive intelligence as a means to anticipate or
                                (continued on page 30)



       pp

   Keeping Current with the Chair ................. 3
   Patent Securitizations, Patently Bad Idea? Risk/Benefit
   Approach Reveals Possible Reasons for Lack of Patent
   Securitizations  ........... ..................... 4
   The eBay Effect: Real Change or Status Quo? An
   Examination of Requests for Injunctive Relief in Patent
   Actions since eBay v. MercExchange .............. 14
   The Myth of Copyleft Protection: Reconciling the
   GPL and Linux with the Copyright Act ............ 22
   Tax Strategies Are Not Patentable Inventions ........ 35
   FP Group News ............................... 40
   Recent Developments in Intellectual Property Law .... 44


THE A PropN CF
Intellectual Property Law


Defending Liberty
Pursuing lustice


VISIT THE SECTION WEB SITE AT WWW.ABANET.ORG/INTELPROP

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