TIPLJ: Volume 13

Issue 1 – Fall 2004


Six Patent Law Puzzlers

Citation: 13 Tex. Intell. Prop. L.J. 1 (2004)

Author: Jennifer K. Bush, John E. Gartman, & Elizabeth I. Rogers

About: John E. Gartman is the managing principal of Fish & Richardson P.C.’s San Diego Office. Mr. Gartman has been lead counsel in patent and trade secret litigation for Microsoft, Intel, Adobe, and Marconi. Jennifer K. Bush formerly served as a law clerk to the Honorable Stanley Marcus, U.S. Court of Appeals for the Eleventh Circuit. She is an associate in the law firm of Fish & Richardson, P.C. Her practice emphasizes intellectual property litigation, and Ms. Bush currently represents Microsoft in a number of patent infringement suits. Elizabeth I. Rogers formerly served as a law clerk to the Honorable Arthur J. Gajarsa, U.S. Court of Appeals for the Federal Circuit, and as an associate at Fish & Richardson P.C. and Hale and Dorr LLP. She is now a partner at Willenken Wilson Loh & Stris LLP.

Abstract: This Article follows a presentation given by Mr. Gartman at the 2004 Texas Intellectual Property Law Journal Symposium, “Protecting and Exploiting Ideas: Staying Ahead of the IP Curve,” held at The University of Texas School of Law on January 29, 2004.

Part Two questions what should be the role of dictionaries in claim construction. Part Three discusses whether the presumption of a patent’s validity should be weakened or eliminated. Part Four asks whether the Federal Circuit’s recent en banc decision in Knorr-Bremse Systeme Fuer Nutzfahrzeuge GMBH v. Dana Corp. improved the law regarding willful infringement by abolishing the adverse inference that an opinion of counsel was or would have been unfavorable in cases where the accused infringer fails to obtain or produce an exculpatory opinion, and holding that a substantial defense to infringement is one factor to be considered but is not per se sufficient to defeat liability for willful infringement, and discusses the open questions left in Knorr-Bremse’s wake. Part Five discusses whether intent to cause the infringing acts should be enough to find active inducement. Part Six questions whether the “reasonable royalty” should be calculated before the infringer has sunk its development costs. Part Seven asks whether the Federal Circuit should clarify what constitutes prosecution laches.


Effective Use of the Declaratory Remedy in the Patent Context

Citation: 13 Tex. Intell. Prop. L.J. 43 (2004)

Author: Russell B. Hill & Jesse D. Mulholland

About: Russ Hill and Jesse Mulholland specialize in patent litigation at Howrey Simon Arnold & White LLP in Irvine, CA.

Abstract: A company threatened with a patent infringement suit faces three basic options. First, it can seek a license from the antagonist. Second, it can await the initiative of the patentee while taking precautionary steps, such as obtaining an opinion of counsel. Third, it can bring the dispute to a head through a declaratory judgment action. A host of factors leads one accused of or threatened by patent infringement to the appropriate path. This Article analyzes the third path and discuss how to effectively navigate a declaratory judgment action. The Declaratory Judgment Act (DJA) provides potential patent infringement defendants with a procedural mechanism to obtain judicial resolution of present controversies that would otherwise linger at the discretion of patentees. The DJA affords putative patent infringement defendants an opportunity to remove “uncertainty, insecurity and controversy” created by patentees’ threats that might otherwise debilitate business plans and decisions. Application of the DJA, however, is discretionary. Congress vested the federal courts with broad discretion to hear or decline declaratory patent cases, thereby leading to judicial creation of a hodgepodge of factors courts consider when deciding whether to entertain declaratory claims. Bringing sustainable declaratory patent actions to remove the patentee’s Sword of Damocles therefore requires successful navigation of this discretionary minefield. When properly brought, a declaratory action can serve as a powerful tool for removing the cloud a patentee’s threats can cast over a business. Potential defendants and their counsel must know what factors will kill a declaratory action and understand how to avoid them. In addition, declaratory claims can be a powerful procedural tool in the hands of a patent infringement defendant. Thus, even when first notice of an infringement claim comes through service of a complaint, patent infringement defendants should know and take advantage of the options open to them as declaratory judgment counterclaimants. This Article analyzes the legal issues surrounding application of the DJA in the patent context and offers practical guidance for avoiding the pitfalls associated with declaratory patent actions.


Settlement of Infringement Claims

Citation: 13 Tex. Intell. Prop. L.J. 65 (2004)

Author: Henry L. Self III

About: B.J., University of Missouri-Columbia, 1999; J.D., UCLA School of Law, 2002. Mr. Self is an associate at the entertainment litigation firm of Lavely & Singer Professional Corporation in Los Angeles, California, where he specializes in copyright, trademark, defamation, and privacy law. The author is grateful to Bruce E. Van Dalsem, a copyright litigator with the Los Angeles litigation firm of Gradstein, Luskin & Van Dalsem, for his contributions to this Article. Mr. Self and Mr. Van Dalsem each represented independent music publishers in copyright infringement litigation against MP3.com, Inc.

Abstract: Recent litigation has raised a difficult and important question about the consequences of copyright co-ownership: whether a co-owner may settle claims for infringement of a jointly held copyright without the consent of some or all other co-owners. This is an important issue because its resolution may dramatically affect the structure and valuation of settlements. One who knows that he or she is effectively settling on behalf of all co-owners of the work will likely demand from the alleged infringer more than if settling only for his or her own proportional share. Absence of clarity in this realm can, and indeed does, have the unfortunate effect of co-owners unwittingly settling infringement claims on behalf of all co-owners for far too little without realizing it. This is a windfall to the defendant, who in effect receives a complete settlement for just a fraction of its full value. No federal appellate court has yet offered a definitive resolution of this perplexing question and the few district courts to address the matter have reached divergent answers. A satisfactory solution is difficult to find, as a number of arguments may be made both for and against allowing a settlement with one co-owner to cure all liability for infringement. This Article attempts to identify and analyze some of those points, and concludes that the better rule is that a co-owner should not be able to unilaterally settle claims for infringement.


Beyond Fair Use: Expanding Copyright Misuse to Protect Digital Free Speech

Citation: 13 Tex. Intell. Prop. L.J. 83 (2004)

Author: JuNelle Harris, Ph.D.

About: Stanford University (J.D. with distinction and Order of the Coif 2005; Articles Editor, Stanford Law Review); Harvard University (Ph.D. in History 2008; M.A. 2000); College of Idaho (B.A. in English and in History magna cum laude with honors 1997).

Abstract: In Reno v. ACLU, Supreme Court Justice John Paul Stevens famously heralded the unprecedented “vast democratic forums of the Internet,” where “any person . . . can become a town crier with a voice that resonates farther than it could from any soapbox.” The same technologies that allow realization of a free speech advocate’s fondest dream, however, can herald a copyright holder’s worst nightmare. The ability to quickly create and disseminate high-quality digital copies of expression on the Internet has raised cries of alarm by rights holders. In response, Congress has crafted powerful new legal tools to combat online infringement in the 1998 Digital Millennium Copyright Act (DMCA). Unfortunately, these tools, as well as the more traditional ones available to copyright owners, have been used online not only to combat piracy, but also to stifle criticism, thus chilling the important emerging democratic forums celebrated by Stevens.

Already, a number of cases have arisen involving corporate, religious, and other organizations that claim copyright in leaked or intercepted internal documents to avoid their public disclosure online. These cases clearly also raise important First Amendment issues, as copyright is wielded as a sword rather than as a shield, to silence speakers who are engaged in criticism rather than in economic piracy, and against whom the owner often could not sustain an unlawful interception, misappropriation of trade secrets, or invasion of privacy claim. Criticism and critical dissemination of information, rather than more traditional, commercially motivated copyright infringement and unlawful acts of acquisition, are targeted. Courts have been relatively hostile to outright balancing of free speech arguments against copyright claims, citing a trumping “copyright exception” to the First Amendment grounded both in the history of the two constitutional provisions and in the important utilitarian incentive copyright provides for free expression. Although the Supreme Court has hinted that a reexamination of the copyright exception eventually may be necessary, it thus far has been tempered only by existing judicially crafted doctrines that limit copyright, the most important of which has been fair use. So far, however, for reasons that I explore below, fair use has proved inadequate to protect the critical First Amendment interests at stake. In this piece, I propose that another equitable limiting doctrine, misuse—recently introduced from patent into copyright law—be expanded as a device to protect speech. This Article examines the growing conflict between free speech and copyright protection, particularly in cyberlaw, and presents the possible application of the more novel limiting doctrine of misuse.


Issue 2 – Winter 2005


Revisiting the Visual Artists Rights Act of 1990: A Follow-up Survey About Awareness and Waiver

Citation: 13 Tex. Intell. Prop. L.J. 129 (2005)

Author: RayMing Chang

About: Mr. Chang is a third-year law student at The George Washington University Law School. Mr. Chang is the Executive Production Editor of the American Intellectual Property Law Association Quarterly Journal and a law clerk with the Library of Congress’ Office of the General Counsel.

Abstract: U.S. intellectual property law is primarily utilitarian in nature and, consequently, traditional copyright law has focused on providing rights that center on the economic interests of authors. Yet there are rights that extend beyond the economic interests of an author that protect the author’s personal interest in a work. These non-economic rights are often referred to as “moral rights,” which consist primarily of the right of attribution and the right of integrity. U.S. copyright law nominally included moral rights when the U.S. joined the Berne Convention for the Protection of Literary and Artistic Works (“Berne Convention”). After the U.S.’s accession to the Berne Convention, Congress decided to supplement pre-existing moral rights by incorporating moral rights-specific legislation into American copyright law when enacting the Visual Artists Rights Act of 1990 (“VARA”).

More than thirteen years have passed since VARA was enacted. It is unclear whether VARA’s waiver provisions have had any effect, detrimental or otherwise. There are a number of indications that VARA is still not well known and is little used. The Copyright Office currently has a total of two registrations in the now thirteen-year old VARA Visual Arts Registry, which is a stark contrast to the over six hundred thousand copyright registration applications that the Copyright Office receives annually. There have only been a small number of reported cases, and of those reported cases, a VARA artist succeeded in recovering damages in just one. Scattered newspaper and magazine articles have reported approximately a dozen settlements and threatened lawsuits involving VARA claims since VARA’s enactment.

When Congress passed VARA, it ordered the Copyright Office to conduct a study to gauge the effect of waiver provisions in VARA on visual artists because of its concern over the lack of artists’ bargaining power. The study was due five years after the enactment of the act. The Copyright Office decided to conduct the study by studying case law, surveying the art community, and holding hearings about VARA. The main focus of the Copyright Office’s study was on the effects of VARA waiver provisions. In order to gain a more accurate measure of the state of VARA today, this Article follows up on the Copyright Office’s 1995 study with a new survey regarding VARA to discover whether the circumstances surrounding VARA have changed. This Article analyzes the results of the new survey in light of the 1995 study and offers recommendations to practitioners and to Congress.


The Continuing Debate of Softare Patents and the Open Source Movement

Citation: 13 Tex. Intell. Prop. L.J. 171 (2005)

Author: Grant C. Yang

About: This Article is based on information, as available to the author, as of Feb. 3, 2005. The author is a candidate for a JD and an LL.M. in International & Comparative Law, class of 2005 at Duke University School of Law. The author received his B.S. in Computer Science from Stanford University and was a former patent examiner at the USPTO in Art Unit 2176 (computer software document processing). The author would like to thank Professor David Lange for discussing his opinions on open source and also Jason Yang for his constant guidance and for looking over some early drafts of this Article.

Abstract: The United States, the European Union, and the international community have tried to harmonize patent law for decades. Although several treaties have been proposed to harmonize some procedural aspects of patent law, patentable subject matters continue to remain a major point of contention and a major impediment to harmonization. Particularly, there has been vigorous debate on the subject of software patents, with the United States strongly supporting them and the European Union considering a directive on the subject. This paper focuses primarily on the arguments directed to the harmonization of software patent law and whether or not the European Union should have software patents. Historically, the argument against computer software patents was that programs were algorithms or mathematical formulas and not patentable subject matter. After the U.S. courts shifted their viewpoint, the primary arguments, particularly those voiced by open source supporters contesting the EU Directive, are that software patents do not promote but rather inhibit innovation. Opponents of software patents argue that copyright protection is enough for software and that innovation is plentiful in the software industry, citing the open source movement as an example. This paper argues the case for computer software patents and that software patents and open source should continue to work together harmoniously to promote innovation in the industry.


Equal Treatment Under Patent Law: A Proposed Exception to the On-Sale Bar

Citation: 13 Tex. Intell. Prop. L.J. 209 (2005)

Author: Leah C. Fletcher

About: Yale Law School class of 2005. I received a great deal of helpful advice as I prepared this paper. I particularly wish to thank my faculty advisor, Professor Richard Brooks; other members of the Yale faculty, Professors Henry Smith, Alan Schwartz, and Alvin Klevorick; attorney Michael Mauriel; and my father and grandfather.

Abstract: In Special Devices, Inc. v. OEA, Inc., the Federal Circuit concluded that the “on-sale bar” in patent law, which allows a one-year grace period between the first offer to sell an invention and a patent application for that invention, applies differently depending on whether a company employs a third party to manufacture its invention. If an outside manufacturer is used, the one-year grace period is triggered when the inventing company agrees to pay the outside manufacturer rather than when the inventor first offers to sell the invention to its customers. This paper argues that this interpretation of the on-sale bar is wrong, and that there should be an exception to the on-sale bar for purchases by inventors from outside manufacturers. To support this position, this paper argues that legal precedent and statutory text would have allowed the Federal Circuit to find an exception for a sale by an outside manufacturer to the inventor and that policy and economic considerations strongly favor creating the proposed exception. Such an exception would put small inventors without manufacturing capacity and large inventors with such capacity on the same footing. Further, such an exception would eliminate the penalty now imposed on inventors of any size who use outside manufacturers to produce their inventions in the most efficient way. In the interests of equal treatment of all inventors and economic efficiency, either the Federal Circuit should overrule its decision in Special Devices, or Congress should create an explicit exception for inventors who use outside manufacturers to produce their inventions.


Issue 3 – Spring 2005


Cézanne and Renoir: Analogous Art in Patent Law

Citation: 13 Tex. Intell. Prop. L.J. 243 (2005)

Author: Lance Leonard Barry

About: The author is an Electrical Administrative Patent Judge (“APJ”) at the USPTO. Before becoming an APJ, he worked as an Electrical Engineering Primary Examiner at the USPTO and lectured and developed courses on obviousness for the USPTO’s Patent Academy. Before joining the USPTO, the author was a Senior Electrical Engineer at Booz Allen & Hamilton.

Judge Barry belongs to the Virginia State Bar and the Bar of the District of Columbia. He earned a J.D. degree from the George Mason University School of Law, an M.S. degree in electrical engineering from Johns Hopkins University, and a B.E.E. degree in electrical engineering from The Catholic University of America. The author has been recognized by Who’s Who in American Law since 2003.

Abstract: The curator of the WebMuseum has described the art of Cézanne and the art of Renoir as “analogous.” Patent attorneys, agents, and examiners (collectively “patent practitioners”), however, have a different understanding of “analogous art.” For them, the question of whether art is analogous arises frequently during patent prosecution, litigation, and examination. Cases in federal appellate and district courts addressing analogous art are “legion.”

The question of whether art is analogous asks whether it is too remote to be treated as prior art. In short, analogous art is simply that which is not too remote to be treated as prior art. Analogous art is also called “pertinent,” “relevant,” or “applicable.” Conversely, art that is too remote to be treated as prior art is called “nonanalogous” or “remote.”

Novelty and nonobviousness are the two criteria for patentability vis-à-vis prior art. The question of analogous art is not germane to that of anticipation. If a claim can be “read on” a piece of prior art, the fact that the prior art is drawn from a “different” art is immaterial.

In contrast, the question of analogous art is “subsumed” under that of nonobviousness. Nonobviousness is determined based on several factual inquiries. The first factual inquiry, which addresses the “scope and content of the prior art,” includes the question of analogous art. More specifically, analogous art relates to the scope of the prior art. Accordingly, a finding of the relevance of prior art is a finding of the scope of the prior art. Given the ubiquity of the question of analogous art and its importance in determining obviousness, it is imperative that patent practitioners understand the guidance available on the question. The three parts of this Article aim to increase their understanding.


Proposal for a Uniform Federal Common Law of Attorney-Client Privilege for Communications with U.S. and Foreign Patent Practitioners

Citation: 13 Tex. Intell. Prop. L.J. 279 (2005)

Author: James N. Willi

About: LL.M., Intellectual Property and Information Law, University of Houston (2005); J.D. cum laude, South Texas College of Law (1995); M.B.A., University of Houston (1989); B.S.E.E., University of Texas at Austin (1985). The author’s law practice has included commercial and intellectual property litigation involving patents, copyrights, trademarks, claims of unfair competition, and trade secret misappropriation. He may be contacted at Willi Law Firm, P.C. in Austin, Texas, at (512) 301-3369, or by email at jwilli @willilawfirm.com. The author would like to express sincere appreciation to Professor Paul M. Janicke of the Intellectual Property and Information Law Institute at the University of Houston Law Center for his helpful editorial comments.

Abstract: In U.S. patent litigation, a party may seek production of confidential documents and communications associated not only with the prosecution of the U.S. patent in suit, but also with all priority U.S. patent applications related to the U.S. patent in suit, all communications with foreign practitioners related to all foreign counterpart patents to the U.S. patent in suit, and all priority patent applications related to the foreign counterpart patents to the U.S. patent in suit. In situations in which patent holders have asserted their patent rights in both the United States and in a foreign country, parties in U.S. patent litigation also seek production of all communications between clients and foreign counsel generated during litigation related to foreign counterpart patents to the U.S. patent in suit. It is well settled that the federal common law of attorney-client privilege protects communications between clients and U.S. patent attorneys in U.S. patent litigation. Yet the case law regarding whether the attorney-client privilege protects confidential communications made between U.S. patent agents or foreign patent practitioners and their clients for the purpose of obtaining or providing legal assistance is largely unsettled and confusing. All of the case law has been created by U.S. district courts, and the issue has not reached a U.S. court of appeals. As a consequence, several different approaches have evolved over time, which have provided highly unpredictable results. This is unacceptable because “[a]n uncertain privilege, or one which purports to be certain but results in widely varying applications by the courts, is little better than no privilege at all.” This Article proposes a uniform federal common law of attorney-client privilege in U.S. patent litigation, so that the same federal common law of attorney-client privilege applies regardless of whether the client is foreign or domestic, whether the patent practitioner is foreign or domestic, and whether the patent is foreign or domestic. An expanded privilege, which protects confidential communications between clients and U.S. and foreign patent practitioners, including U.S. and foreign patent agents, made for the purpose of obtaining or providing legal advice in the field of patent law is supported by the Supreme Court’s analysis in Jaffee v. Redmond. It is further supported by the Rules of Evidence for United States Courts and Magistrates that the U.S. Supreme Court recommended to Congress in 1972, the Uniform Rules of Evidence since 1974, the American Law Institute’s Restatement (Third) of The Law Governing Lawyers promulgated in 2000, the Rules of Evidence of many states, and Dean Wigmore’s Evidence treatise. The proposed uniform federal common law of attorney-client privilege is a logical extension of the Supreme Court’s holding in Sperry v. Florida providing that patent agents are authorized to practice patent law.


Technology Outpacing the Law: The Invention Secrecy Act of 1951 and the Outsourcing of U.S. Patent Application Drafting

Citation: 13 Tex. Intell. Prop. L.J. 351 (2005)

Author: Eric B. Chen

About: J.D., Arizona State University College of Law. The author wishes to thank Samuel J. Sutton for his valuable insight and feedback.

Abstract: The outsourcing of American jobs to foreign countries has emerged as a controversial issue. The American legal profession has not been immune from the practice of outsourcing. Law-related services, including legal research, contract drafting, and the drafting of patent applications, have been outsourced to lawyers in India, New Zealand, and South Korea. New Zealand has become a popular venue for the outsourcing of patent work due to similar patent laws. Foreign attorneys can easily communicate the results of their research to the U.S. by posting information to proprietary Internet sites. Despite the attraction of inexpensive labor markets, outsourcing to foreign counsel presents a host of problems, including ethical conflict issues, confidentiality, and quality of legal services. Moreover, American corporations may be reluctant to release sensitive intellectual property and trade secrets to foreign professionals due to security concerns. Furthermore, the outsourcing of legal services related to patent prosecution may run afoul of federal law, namely the Invention Secrecy Act of 1951, a statute authorizing the USPTO to screen patent applications and prevent the exportation of potentially sensitive technology. This Article provides an overview of the Invention Secrecy Act and subsequent case law interpretation, discusses a conflicting provision in the Patent Act, and argues that the Invention Secrecy Act has become an antiquated statute that unfairly burdens U.S. inventors.