TIPLJ: Volume 12

Issue 1 – Fall 2003


Eldred v. Ashcroft and the (Hypothetical) Copyright Term Extension Act of 2020

Citation: 12 Tex. Intell. Prop. L.J. 1 (2003)

Author: Thomas R. Lee

About: Professor of Law, Brigham Young University, J. Reuben Clark Law School, and counsel to amicus curiae Senator Orrin G. Hatch in Eldred v. Ashcroft. Thanks to the Intellectual Property Section of the American Bar Association, which gave me an opportunity to present some of the ideas developed in this Article at its 2003 annual meeting in San Diego. Thanks also to Larry Solum and Jeff Lamken (my co-panelists at the ABA meeting) for their comments on earlier drafts, and to Steven Haskins for his helpful research assistance.

Abstract: The Supreme Court’s decision in the case Eldred v. Ashcroft establishes Congress’s power under the Copyright Clause to extend the copyright term applicable to existing works. However, the full extent of this power is unclear, particularly in regards to future extensions put forward by the Congress. The first part of this paper summarizes the arguments put forward by the plaintiffs in Eldred. The second part then goes on to examine the Court’s treatment of the arguments. The main topic of the paper revolves around a hypothetical statute proposed in 2020 in a similar manner to the Sonny Bono Copyright Term Extension Act of 1998, referred to in the paper as the Marshall Mathers Copyright Term Extension Act of 2020. In its final part, the paper analyzes the constitutionality of the Mathers Act with an eye towards the real meaning and eventual impact of the real meaning and eventual impact of the decision in Eldred.


Carving Out a Biotechnology Research Tool Exception to the Safe Harbor Provision of 35 U.S.C. § 271(e)(1)

Citation: 12 Tex. Intell. Prop. L.J. 23 (2003)

Author: Jian Xiao

About: Associate, Morrison & Foerster LLP, Palo Alto, CA; Ph.D., Biological Chemistry, 2000, University of California, Los Angeles; J.D., 2003, University of California at Berkeley School of Law (Boalt Hall).

Abstract: Drug discovery tools made possible by biotechnology have driven a radical evolution in the drug discovery process over the past two decades. Because of the advances, there has been a substantial shift in the drug discovery process with increasing emphasis on early stage research and development activities. The advancement of the biotech industry has led to an increased number of biotech companies, of which many, though they may hope to ultimately transform into fully integrated drug developers, do not have enough resources to reach that goal. However, as biotechnology becomes more advanced and complex, these companies have become a major and indispensable part of the research and development sector for drug discovery. Due to the risky and costly nature of the drug discovery process, gaining and protecting patent rights is vital to the continued success of a biotech company. Because the majority of biotech companies focus on the “drug discovery” aspect of drug development, these companies typically rely on patents that focus on research tools as well as drug products.

A safe harbor provision in the patent statute, 35 U.S.C. § 271(e)(1), was originally enacted to permit generic drug developers to use patented drugs to gain regulatory approval for their generic products. Recent judicial interpretations of the provision, however, have broadened the scope of the provision to potentially exempt all uses of biotechnology research tools. This has caused tremendous concern about the value of biotechnology research tool patents and threatened the existence of small biotech companies. This Article addresses some of the concerns and proposes a solution to the potential problems.


The Madrid Protocol: Special Issues for U.S. Practitioners

Citation: 12 Tex. Intell. Prop. L.J. 69 (2003)

Author: Linda M. Merritt

About: Senior Assoicate, Fulbright & Jaworski L.L.P., Dallas, TX; J.D., 1994, University of Kansas School of Law; M.B.A., 1995, Rockhurst College; Program Vice-Chair and Speaker, American Intellectual Property Law Association’s 2003 Madrid Protocol Seminar.

Abstract: On November 2, 2002, President George W. Bush signed legislation implementing U.S. adherence to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid Protocol” or the “Protocol”) adopted in Madrid, Spain on June 27, 1989. This legislation, known as the Madrid Protocol Implementation Act (“MPIA”), marks what could be considered the most significant development in U.S. trademark law since the Trademark Law Revision Act of 1988 (“TLRA”) enabled the filing of an application for registration on the Principal Register by an applicant with a bona fide intention to use a mark in commerce.

As of November 2, 2003 (the effective date of the MPIA) U.S. trademark owners can take advantage of the Protocol’s provisions for obtaining protection of a mark in more than one country by filing one application, in one place, with one set of documents, in one language, with one fee. The resulting registration will have one number and one renewal date. U.S. trademark owners are expected to benefit from cost savings when international protection of a mark is sought through the Protocol instead of individual national filings. Further benefits to U.S. trademark owners are expected due to the Protocol’s time limitations for examination of an international application as compared to national filings in certain countries. U.S. trademark owners, however, are not the only beneficiaries of U.S. adherence to the Protocol. Under the Protocol, qualified foreign applicants will have the opportunity to extend their international registrations into the United States, providing an alternative to the provisions of Secton 44 of the Lanham Act. The implications of U.S. adherence to the Protocol, both as they pertain to U.S. and to foreign trademark owners, are expected to significantly impact U.S. trademark practitioners.

This paper will explore some of the issues affecting U.S. trademark practitioners as a result of U.S. adherence to the Protocol, including the implications of new rules promulgated by the United States Patent and Trademark Office (“USPTO”) to implement the MPIA (“Final Rules”).


Recent Developments in Copyright Law

Citation: 12 Tex. Intell. Prop. L.J. 111 (2003)

Author: Gretchen McCord Hoffmann

About: Associate, Intellectual Property and Technology Section, Fulbright & Jaworski L.L.P., Austin, TX; B.A., 1991, Rice University; M.S.I.S., 1992, University of North Texas; J.D., 2001, The University of Texas School of Law.

Abstract: This Article reviews copyright opinions in the U.S. courts published between August 2002 and July 2003, as well as legislation affecting copyright passed in that period. The courts addressed a wide array of issues during that period, ranging from traditional copyright issues to the application of new copyright law to the application of traditional law to new technologies. The most exciting and contentious cases represented a similar diversity of topics. Given the large number of copyright cases published during the time period covered, this Article does not attempt a complete review; rather, it focuses on opinions that are likely to be of most concern to practitioners. The “traditional” issues addressed included the merger doctrine, originality, and preemption. Not surprisingly, one of the most entertaining cases involved application of the fair use doctrine (when one is as perfect as poor Barbie, one is doomed to a life of ridicule). Perhaps the most anticipated copyright case in years—the Supreme Court’s decision in Eldred v. Ashcroft—came down during the past year and addressed the traditional copyright issue of term of protection. To be fair, however, the argument can be made that both the Copyright Term Extension Act to which Eldred objected and the filing of the lawsuit were reactions to the range of possibilities presented by new technology. Many cases dealt with the challenges presented by new technology. One court clarified that simple hyperlinks do not infringe copyright. Some cases challenged and attempted to clarify the application of the Digital Millennium Copyright Act, while others reflected the continued and growing conflict between the Recording Industry Association of America and both services and end users engaged in online file sharing.


Issue 2 – Winter 2004


Practical Guide to Application of (or Defense Against) Product-Based Infringement Immunities Under the Doctrines of Patent Exhaustion and Implied License

Citation: 12 Tex. Intell. Prop. L.J. 227 (2004)

Author: Amber Hatfield Rovner

About: Senior Counsel, McKool Smith, P.C., Austin, Texas. Adjunct Professor, The University of Texas School of Law, 1997–2003.

Abstract: “Product-based infringement immunities” is a term that broadly describes the effect that an authorized sale of a product may have on a patent owner’s rights to enforce patents against that product. Such “immunities” from suit are not derived from express licensing or even express permission from the patent owner. Indeed, they may (and often do) arise contrary to the wishes or intent of the patent owner. These immunities are only “product-based,” however, in that they are limited to the further use or resale of the product itself, and do not encompass additional rights under the patent (that is, to make, use, sell, offer for sale or import the invention with respect to additional products). Product-based infringement immunities are typically invoked through the application of two doctrines: patent exhaustion (the “first sale” doctrine) and implied license. This paper summarizes the principles and leading cases underlying each of these doctrines. It also offers suggestions for invoking (or defending against) application of these doctrines.


Where the Bodies are: Current Exemplars of Inequitable Conduct and How to Avoid Them

Citation: 12 Tex. Intell. Prop. L.J. 287 (2004)

Author: David Hricik

About: Professor Hricik is an Assistant Professor of Law at the Walter F. George School of Law, Mercer University, where he teaches patent law and litigation, federal civil procedure, and professional responsibility. He served as chair of the Ethics and Professional Responsibility Committee of the ABA Intellectual Property Section, 2002–03, and was appointed in 2003 to the Professionalism & Ethics Committee of the American Intellectual Property Law Association. He has also taught professional responsibility at The University of Texas School of Law, and e-commerce law at St. Edward’s University Graduate School of Management. His website, www.Hricik.com, contains numerous resources for patent practitioners.

Abstract: The grant of a patent is given in exchange for disclosing a new, useful, and nonobvious invention. To ensure that patents are not granted on inventions that are not new or that are merely obvious variants on those which the public already has the right to use, and that the disclosure is sufficient to permit those skilled in the art to make and use the invention and to practice its preferred embodiments, every person substantively involved in the prosecution of an application has a duty to disclose to the Patent Office (“PTO”) information material to the patentability of the claimed invention.

An attorney’s involvement in prosecution creates duties independent of the inventor. Specifically, the intentional failure of a prosecuting attorney to disclose material information can result in the patent being held unenforceable in a later suit for infringement of that patent, even if the applicant was unaware of that information or of its importance to whether the invention was patentable.

It is tempting to state that there is no such thing as too much disclosure, but practical realities including the time pressure on attorneys, the need for efficient and economic prosecution, and the risk of being accused of burying the most material information demonstrate that is not true. Instead, in the course of prosecuting an application, an attorney must exercise skill and judgment in determining whether and how to disclose information to the PTO in a way that complies with the duty of candor and balances the needs of both the PTO and the client.

This Article briefly describes both the duty of candor as it applies to attorneys and applicants as well as current uncertainties in the black letter law of inequitable conduct. It then provides practical guidance as to the contours of that duty by analyzing its application to specific fact patterns. The Article focuses not so much on the efforts of desperate infringers who have unsuccessfully raised the defense, but rather on where inequitable conduct has been found. In short, this Article discloses where the bodies are.


Wasting Resources: Reinventing the Scope of Waiver Resulting from the Advice-of-Counsel Defense to a Charge of Willful Patent Infringement

Citation: 12 Tex. Intell. Prop. L.J. 319 (2004)

Author: David O. Taylor

About: Associate, Baker Botts L.L.P., J.D., 2003, Harvard Law School; B.S. Mechanical Engineering, 1999, Texas A&M University. I thank my advisor William F. Lee, Managing Partner of Hale and Dorr L.L.P., for his contagious enthusiasm for and extensive knowledge of the field of patent law, for pointing me to the topic this paper addresses, as well as for the helpful instruction and feedback he provided me. I also thank Harvard Law School Professor David B. Wilkins for his helpful comments. My wonderful wife Rachel deserves the most thanks—for putting up with me throughout this endeavor, and more generally for supporting me and sacrificing for me during our stay in Cambridge.

Abstract: Patent infringement cases may be the very definition of “high-stakes litigation.” In addition to the issuance of permanent injuctions and high dollar damage awards, judges also have discretion to award treble damages and attorney’s fees in patent cases. One situation in which judges may exercise this discretion is when infringement is found to be willful. As such, one way for an alleged willful infrigner to rebut an allegation of willfulness is to introduce an opinion of counsel. An opinion of counsel evidences the alleged willful infringer’s good faith effort to investigate the validity, enforceability, and infringement of the patent at issue after receiving notice of potential infringement. Obviously, however, while the opinion of counsel may conclude that invalidity, unenforceability, or non-infringement enabled the party to legally continue the allegedly infringing act, the court could determine that infringement of a valid and enforceable patent had occurred.

The issue becomes defining the scope of waiver of attorney-client privilege and work-product immunity that results when the advice-of-counsel defense is asserted in response to an allegation of willful infringement. District courts have been pondering this issue for two decades, and they have yet to come to any agreement. The courts initially split into two distinct camps. One argued that waiver extends only to communications between the client and opinion counsel. The other extended the waiver to include non-communicated work-product. Only recently a compromise position developed. It would extend the waiver to include non-communicated fact work product only. The Federal Circuit, for its part, has yet to weigh in on the issue or to signal which, if any, of these three approaches the court would adopt.

This Article hypothesizes that the various scopes of waiver adopted by courts reflect various levels of confidence in the ethical and professional responsibility of opinion writers. This Article also comes to the conclusion that whatever the appropriate scope of waiver should be, the Federal Circuit should finally act to announce that scope. To do so, the Federal Circuit should assert some form—any form—of appellate jurisdiction.


Recent Developments in Trademark Law: Reverse Domain Name Hijacking, Mutant Copyrights, and Other Mysterious Creatures of the Trademark World

Citation: 12 Tex. Intell. Prop. L.J. 361 (2004)

Author: William G. Barber

About: Partner, Fulbright & Jaworski L.L.P., Austin, Texas. The author wishes to thank Michael A. Collyard, Patrick J. Gallagher, Alicia Morris Groos, Martin G. Hernandez, Christopher S. Harrison, Susan J. Hightower, Timothy M. Kenny, Stephen P. Meleen, and Elizabeth B. Stinson for their assistance with this Article.

Abstract: For the fourth time in a row since the turn of the millennium, the Supreme Court has considered a Lanham Act claim only to rein in the reach of Section 43. Following the Court’s restriction of trade dress claims in Wal-Mart and TrafFix and dilution claims in Moseley, the Court’s latest pronouncement rejects granting Lanham Act protection to uncopyrighted works under the doctrine of reverse passing off for fear of creating “mutant copyrights.” In the lower courts, a myriad of issues involving the Internet—including some troubling decisions involving “reverse domain name hijacking” claims and dilution—continue to dominate reported decisions. This Article discusses these topics and many other recent developments in trademark law.


Issue 3 – Spring 2004


Valuation of Patent Licenses

Citation: 12 Tex. Intell. Prop. L.J. 423 (2004)

Author: Ted Hagelin

About: Professor of Law, Director, Technology Transfer Research Center, Syracuse University. Work on this Article was supported by a Summer Research Grant from Syracuse University College of Law.

Abstract: The valuation of patents is important in many contexts, including mergers and acquisitions, research and development, corporate taxation, and infringement litigation. However, nowhere is the valuation of patents more important, or more challenging, than in licensing transactions. This paper will consider the problem of valuing patent licenses. The first part of the Article will discuss the two most often used and discussed methods of valuing patent licenses – the industry standard method and the 25 Percent Rule. The Article conveys the strengths and weaknesses of these two methods, and how they are best utilized. The second part of the Article presents a new method of valuing patent licenses called the “Competitive Advantage Valuation” model, or CAV. The Article will explain the basic steps involved in CAV analysis of a patent license and illustrate the use of CAV through a series of hypothetical licensing transactions.


Feet of Clay: How the Right of Publicity Exception Undermines Copyright Act Preemption

Citation: 12 Tex. Intell. Prop. L.J. 443 (2004)

Author: P. Stephen Fardy

About: Partner, Swanson, Martin & Bell of Chicago, Illinois. The author obtained his B.A., with honors, and his J.D. from Indiana University in 1991 and 1994, respectively. The author obtained his LL.M., with honors, in Intellectual Property from John Marshall Law School—Center for Intellectual Property in 2001. The author gratefully acknowledges the assistance of summer associate David Lundeen with research and drafting.

Abstract: Prior to 1978, a dual state and federal system dating back to 1790 governed copyright law in the United States. In an effort to unify copyright law and to create a system compatible with the rest of the world, Congress passed the Copyright Act of 1976 (the “Act”). One of the bedrock principles of the Act is a provision that specifically preempted state-law copyright actions. The right of publicity has a role to play in the legal system independent of that of copyright, and in most circumstances, it operates in a way that does not conflict with the Act. However, the rights, protected by both doctrines, in certain areas, overlap one another. In these areas, some courts have held that the right of publicity avoids or trumps the Act’s preemption provision. In doing so, these courts have created an exception to preemption. This exception limits the copyright holders from fully exploiting their copyrights.

The exception has become problematic, as a small number of celebrities have invoked the right of publicity to prevent owners of copyrights from effectively licensing their copyrights. If left unchecked, this trend will lead to a multiplicity of rules in an area of the law intended to be uniform, discourage investment in intellectual property due to uncertain legal risks, and chip away at the public domain. The victims of the trend include copyright owners, the public, and the legislative goals of the Act. This Article outlines the legislative purpose behind preemption, analyzes the development and expansion of the right of publicity, and examines the injuries resulting from the expansion of the right of publicity.


Litigating Intellectual Property Disputes in Texas State Court

Citation: 12 Tex. Intell. Prop. L.J. 473 (2004)

Author: Steve Malin

About: Senior Counsel in the Dallas office of Sidley Austin Brown & Wood LLP. Mr. Malin received his B.B.A from the University of Texas at Austin in 1984, a J.D., cum laude, from Southern Methodist University in 1988, and a L.L.M. in Intellectual Property and Information Technology from the University of Houston in 2001.

Abstract: Mr. Malin presented the material contained in this Article at the 5th Annual Intellectual Property Symposium at The University of Texas School of Law, January, 2004. Choice of forum is a key tactical decision in any lawsuit. Yet, when it comes to enforcing intellectual property rights, most practitioners automatically choose federal court. Why is this? Perhaps it is because federal courts have exclusive jurisdiction over matters arising from patent, plant variety protection, and copyright laws. Or perhaps it is because intellectual property lawyers with a national practice prefer to work with only one set of civil rules. While there are many benefits to filing in federal court, Texas intellectual property practitioners should consider the strategic advantage of Texas state courts in appropriate circumstances. This paper will outline certain jurisdictional rules affecting intellectual property cases and then address the procedural differences between federal court and Texas state court that should be considered in selecting the best forum.


Recent Developments in Patent Law: Decisions by the U.S. Court of Appeals for the Federal Circuit

Citation: 12 Tex. Intell. Prop. L.J. 497 (2004)

Author: Gale R. Peterson & Derrick A. Pizarro

About: The authors are attorneys at Cox & Smith Incorporated, San Antonio, Texas.

Abstract: The year 2003 was another busy year for the Federal Circuit. The Federal Circuit refined the doctrine of prosecution history estoppel in Festo IX, clarified its holdings with respect to anticipation through inherency, provided more claim construction guidance, and further defined circumstances of inequitable conduct, among other things. This Article discusses these decisions and other recent developments in Patent Law.