TIPLJ: Volume 15

Issue 1 – Fall 2006


Inter Partes Reexamination of Patents: An Empirical Evaluation

Citation: 15 Tex. Intell. Prop. L.J. 1 (2006)

Author: Roger Shang & Yar Chaikovsky

About: Roger Shang and Yar Chaikovsky are, respectively, Associate and Partner in the Global Patent Litigation Practice Group of Weil Gotshal & Manges LLP.

Abstract: The inter partes reexamination procedure was created by Congress in 1999 as a litigation alternative to challenge a patent’s validity. While it is certainly less expensive than litigation, it has been criticized as unfair and unfavorable to challengers of patent validity. What is missing, however, is an empirical study of the results of inter partes reexamination proceedings—how the examiners at the United States Patent & Trademark Office (PTO) made final decisions in these proceedings.

To determine whether inter partes reexamination is a realistic alternative to litigation for third party challengers, we studied all inter partes reexamination requests filed through the end of 2005 and focused on those where the PTO examiner issued a final decision. The results are quite interesting and not entirely expected. Notably, we found that examiners readily rejected claims—often in the absence of a single anticipating prior art reference.


In Defiance of Bridgeman: Claiming Copyright in Photographic Reproductions of Public Domain Works

Citation: 15 Tex. Intell. Prop. L.J. 31 (2006)

Author: Colin T. Cameron

About: J.D., The University of Texas School of Law. Mr. Cameron graduated from the University of Colorado-Boulder with a B.A. in Music with Honors. Prior to attending law school he worked in the music publishing industry in Nashville.

Abstract: When a museum obtains a work for its collection, it gains the ability to control access to the work. Once a photograph of this work appears online, however, locking the gallery doors at night becomes largely a symbolic gesture. Museums and art libraries have turned to copyright law in order to maintain as much control as possible over their collections. In so doing, they assert rights over photographic reproductions of artworks that may not be copyrightable.

Bridgeman Art Library, Ltd. v. Corel Corp. stands as a singular case that produced two judgments favoring public access to public domain works. Although the decisions sparked a brief academic discussion, Bridgeman has subsequently been ignored. Museums and art libraries alike persist in claiming copyright in uncopyrightable photographic reproductions of public domain artworks. This paper examines the Bridgeman decision and its ramifications.


Faulkner v. National Geographic Enterprises, Inc.: Driving a Truck Through the Eye of a Needle

Citation: 15 Tex. Intell. Prop. L.J. 63 (2006)

Author: Thomas Dallal

About: Thomas Dallal is a third-year law student at Rutgers School of Law. Mr. Dallal may be contacted directly at: tdallal@pegasus.rutgers.edu.

Abstract: This Note argues that the Supreme Court should have granted the writs of certiorari requested by the Faulkner v. National Geographic Enterprises, Inc. plaintiffs. Because Congress failed to clearly define the scope of the § 201(c) revision privilege, the judicial branch should clarify how the holding and analysis in N.Y. Times Co. v. Tasini, the Supreme Court’s landmark 2001 interpretation of the scope of § 201(c), should be applied to the facts of Faulkner and Greenberg. Further, the Supreme Court should have reversed the Second Circuit’s Faulkner decision because it: (1) substantially deviates from the essential analysis and interpretation of § 201(c) in Tasini; (2) concludes that the § 201(c) revision privilege is freely transferable; (3) eviscerates the core public-interest design of the Copyright Clause and Congress’s legitimate and unambiguous purpose in enacting the 1976 Copyright Act; and (4) creates uncertainty for authors and publishers that will lessen incentives for the production and distribution of new works, thereby decreasing public access to such works.


Encouraging Willful Infringement? Knorr-Bremse Leaves Due Care in Patent Litigation in a State of Flux

Citation: 15 Tex. Intell. Prop. L.J. 91 (2006)

Author: Andrew M. Newton

About: University of Kansas School of Law

Abstract: The Knorr-Bremse holding is an important first step in patent reform, for it alleviates some problems created by the adverse inference doctrine. However, the Federal Circuit missed an ideal opportunity to address several flaws in the doctrine of willful infringement in patent litigation. Specifically, after the re-affirmation of the duty of due care to avoid a finding of willful infringement, the Federal Circuit failed to address what measures would be sufficient to satisfy the duty of due care. How to avoid a finding of willful infringement is unclear to the legal community, much less to infringers that could potentially be liable, such as corporations, inventors, scientists, and technologists. Several members of Congress recognized the shortsightedness of the Federal Circuit’s decision in Knorr-Bremse and proposed the Patent Reform Act of 2005 in response to the court’s failure to address the problems raised in the decision.28 The Act addresses multi-ple issues involving patent litigation including proposed changes to the doctrine of willful infringement. Unfortunately, if the Act is passed, it will only exacerbate the patent litigation landscape.

Therefore, this Comment will argue that the Federal Circuit should have ruled that obtaining a well-reasoned, timely, competent, and good-faith based opinion of counsel should be sufficient to satisfy the affirmative duty of due care requirement to defeat liability for willful infringement.


The Ghost Is the Machine: Protection of Process Patents Under 35 U.S.C. § 271(f)

Citation: 15 Tex. Intell. Prop. L.J. 123 (2006)

Author: Keith Bradley

About: Dr. Bradley will graduate from Columbia Law School in May 2007. He is a registered patent agent and a former physicist with expertise in nanotechnology and materials science. Any questions or comments concerning this note may be addressed directly to Dr. Bradley via e-mail at: kb2188@columbia.edu.

Abstract: This Note will focus on one aspect of § 271(f)—its possible application to process inventions. Although it had been assumed that § 271(f) simply does not apply to processes, the Federal Circuit recently negated, or at least confused, that assumption in four cases in rapid succession. On March 2, 2005, in Eolas Technologies Inc. v. Microsoft Corp. (Eolas III), and on July 13, 2005, in AT&T Corp. v. Microsoft Corp. (AT&T II), a panel of the court imposed liability under § 271(f) for foreign sales of software. On October 3, 2005, in Union Carbide Chemicals & Plastics Technology Corp. v. Shell Oil Co. (Union Carbide IV), another panel held that export of a non-patented catalyst for foreign use in the inventive process may infringe § 271(f). Conversely, on August 2, 2005, in NTP, Inc. v. Research In Motion, Ltd. (NTP III), a panel of the Federal Circuit declared that processes are not, in general, covered by § 271(f). Taken together, these four decisions have left a great deal of confusion over whether and to what extent § 271(f) covers process or method inventions.

Ultimately, the four opinions argue about the proper rules for interpreting patent statutes. This Note will conclude that using the best rule, Union Carbide IV was correctly decided—processes are subject to § 271(f). The statute does not expressly include or exclude processes, and I will argue that the Federal Circuit should interpret statutes in a category-neutral fashion whenever possible. The sources for this rule include the Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement, which has been implemented in U.S. law, and a variety of prudential considerations. As an example of those prudential considerations, the facts of the Union Carbide case itself demonstrate the futility of a category-specific approach.


Issue 2 – Winter 2007


Open Source, Free Software, and Contractual Issues

Citation: 15 Tex. Intell. Prop. L.J. 157 (2007)

Author: Dr. José J. González de Alaiza Cardona

About: Dr. José J. González de Alaiza Cardona is a professor at the University of the Balearic Islands. He received an LLM from Harvard in 2006.

Abstract: This paper discusses free software foundations and contractual issues. The emergence of free software and its implications in different fields will be exposed and this paper will seek to explain how the copyleft clause affects the ways in which software is developed and distributed. Moreover, this paper will explain the common points and differences between free software and “open source software.”

Furthermore, this paper argues that a license agreement which contains the copyleft clause is not a mere non-contractual copyright license, but a contract. This argument triggers a number of contract-related questions which I will seek to resolve from the U.S. perspective. In particular, I will address concerns about lack of consideration; validity of clickwrap and shrinkwrap licenses; possible consequences of lack of privity between licensor and licensee; the enforceability of the warranty disclaimer included in most copyleft licenses; and the relation between copyright and contractual provisions.


Intellectual Property Licenses and Assignments Under Chapter 11 of the Bankruptcy Code: A Brief Survey of the Nature of Property Rights Conferred and Implications Due to Reorganization

Citation: 15 Tex. Intell. Prop. L.J. 213 (2007)

Author: Brett T. Cooke

About: J.D. University of Houston, magna cum laude (2006); B.S.E.E. Texas A&M University, magna cum laude (1991); U.S. Navy Nuclear Power School, Orlando, Florida (1992). The author’s law practice includes intellectual property matters involving patents, trademarks, copyrights, and trade secrets. He is an associate at Andrews Kurth, L.L.P., 600 Travis Street, Suite 4200, Houston, Texas 77002 and may be reached at 713-220-3813 or at brettcooke@andrewskurth.com.

Abstract: In today’s information age and global economy, substantial amounts of intellectual property are transferred with regularity between parties. Notwithstanding the general rule that a vested property right in a res transferred to the nondebtor prior to bankruptcy should not be disturbed, the res may be recovered by the debtor under the strong arm clause of the Bankruptcy Code under certain circumstances. For example, a prepetition assignment of a patent to the debtor in exchange for a series of payments continuing over time acts as a completed transfer of the patent res; the patent is owned by the estate and, unless the nondebtor has a security interest in the patent, the nondebtor has only an unsecured claim against the estate for damages in the amount of the unpaid contractual consideration. If the contract is for less than the remaining term of the patent, it is a license and transfers only an intellectual property right by way of executory contract and not by transfer of a res.


How the Other Half Lives (Revisited): Twenty Years Since Midler v. Ford

A Global Perspective on the Right of Publicity

Citation: 15 Tex. Intell. Prop. L.J. 239 (2007)

Author: Alain J. Lapter, Esq.

About: Trademark Examining Attorney, United States Patent and Trademark Office, Alexandria, VA; B.S., 1998, University of Colorado; J.D., 2004, University of Connecticut School of Law; LL.M. (Intellectual Property), 2006, The George Washington University School of Law.

Abstract: From headlining a movie, to starring in a commercial, to endorsing a product, a celebrity’s persona is potentially worth thousands to millions of dollars. Since Midler, the Ninth Circuit, as well as most jurisdictions recognizing the right of publicity, continues to struggle in establishing definitive boundaries for protecting a celebrity’s likeness and persona. The right of publicity has gone from unrecognized at the turn of the twentieth century to finding its roots through an expanded interpretation of privacy law to protecting not only name and likeness but additional traits of a celebrity’s persona. As several cases implicitly hold, the fact that the person’s likeness at the time of misappropriation has no celebrity-esque value will not serve as a bar to a remedy if the unauthorized use was for commercial gain, which arguably creates the requisite value. Two main problems exist when relying on these international laws for a right of publicity claim alleging the unauthorized commercial use of a celebrity’s name or likeness. Consequently, TRIPs drafters recognized, though narrowly, the need for a certain level of publicity protection because the unabated use of a celebrity’s name has the potential to cause severe consumer confusion, which trademark law at its root attempts to prevent.


Issue 3 – Spring 2007


The (Boundedly) Rational Basis of Trademark Liability

Citation: 15 Tex. Intell. Prop. L. J. 331 (2007)

Author: Jeremy N. Sheff

About: Associate, Cravath, Swaine & Moore, LLP, New York. B.A., Columbia University, 1999. J.D., Harvard Law School, 2002.

Abstract: Federal trademark law stands at a crossroads. In this view, trademark liability—whether imposed under the label of infringement or dilution—serves neither to protect property rights of trademark owners, nor to protect them against the unfair trade practices of competitors, but to shape consumer markets in such a way as to conform to the innate cognitive processes of boundedly rational consumers. These related policies are in turn connected to the anti-confusion policy of infringement law, and juxtaposition of the doctrines—including the proxy factors by which they are analyzed—suggests a more generalized theory of trademark law rooted in the cognitive psychology of consumer behavior. However, as the degree of mark similarity and market proximity between the two marks decreases, it becomes far less likely that affective response to the plaintiff’s mark will form a basis for the response to the accused mark.


The Law of Negative Knowledge: A Critique

Citation: 15 Tex. Intell. Prop. L. J. 387 (2007)

Author: Charles Tait Graves

About: Charles Tait Graves is an associate at Wilson Sonsini Goodrich & Rosati in San Francisco, California. This Article is the fifth in a series that seeks to clarify frequently-litigated but obscure areas of trade secret law in the interest of protecting employee mobility and the right to use information in the public domain.

Abstract: Perhaps the strangest theory of trade secret law is the concept of negative know-how, a theory under which an employee who resigns and joins a different business can be liable for not repeating the mistakes and failures of his or her former employer. Under the theory of negative know-how and the modification rule, trade secret law provides that a former employer can raise accusations based on use of negative knowledge. Allowing claims based on non-use of non-secret negative information would make any worthless, well-known mistake a weapon to use in litigation against a former employee. The second area of trade secret law in which negative information is a factor is the modification rule. The modification rule involves negative knowledge because a trade secret defendant may take a plaintiff’s trade secret, decide that it can be improved or should be modified, and thus the defendant’s end product may not copy the plaintiff’s positive product. With a working definition of negative knowledge and a review of how the courts have treated the related concepts of negative know-how and the modification rule, it is possible to critique negative knowledge as it relates to trade secret law.


Permanent Injunctions After eBay v. MercExchange: The Year in Review

Citation: 15 Tex. Intell. Prop. L. J. 417 (2007)

Author: Darryl J. Adams & Victoria Wicken

About: Darryl J. Adams is a partner and Victoria Wicken is an associate at Dewey Ballantine LLP.

Abstract: The Supreme Court decision in eBay Inc. v. MercExchange, L.L.C. redefined permanent injunction jurisprudence in patent law. Prior to the eBay decision, a patentee enjoyed a presumption of irreparable harm that typically predominated the permanent injunction analysis. Similarly, in all but one post-eBay case in which the patentee did not actively compete in the market for the infringing product, a permanent injunction was denied. Additionally, the cases show that a patentee must rely on its own harm rather than harm of its licensees, and the “irreparable harm” and “inadequate remedies at law” factors dominate the permanent injunction analysis. In Novozymes A/S v. Genencor International, Inc., the court granted a permanent injunction based on harm to the patentee caused by harm to its sole licensee, its wholly-owned subsidiary. The decisions to grant or deny a permanent injunction in the post-eBay cases have been dominated by the “irreparable harm” and “inadequate remedy at law” factors. Novozymes A/S v. Genencor International, Inc. is of interest because it is the only post-eBay case when a patentee who had licensed, but did not practice its patent obtained a permanent injunction.


Did Markman and Phillips Answer the Right Question? A Review of the Fractured State of Claim Construction Law and the Potential Use of Equity to Unify It

Citation: 15 Tex. Intell. Prop. L. J. 457 (2007)

Author: Andrew B. Dzeguze

About: Adjunct Professor, Indiana University School of Law, Indianapolis, Indiana.

Abstract: To anyone who has participated at the fringes of patent litigation, such as in-house counsel, business people, and the public at large, the claim construction process presents a series of seemingly contradictory axioms and promulgations. Although the focus of Keystone Driller was using litigation misconduct (particularly, active efforts at suppressing evidence of a potential prior public use of the invention) as a basis for denying enforcement of a patent, an idea that has evolved into the doctrine of inequitable conduct, its guiding principle was that there is a fundamentally equitable aspect to all patent litigation. Although words in a claim are generally given their ordinary and customary meaning, a patentee may choose to be his own lexicographer and use terms in a manner other than their ordinary meaning, as long as the special definition of the term is clearly stated in the patent specification or file history. From the beginning there were also panels that seized on the idea of ordinary meanings cited in Vitronics Corp. as the primary focus of claim construction.


Patenting Tax Strategies: The Case for Excluding Legal Methods From the Realm of Patentable Subject Matter

Citation: 15 Tex. Intell. Prop. L. J. 491 (2007)

Author: Brian C. Banner

About: The University of Texas School of Law, J.D. candidate, expected graduation May 2007.

Abstract: In January 2006, a lawsuit was filed in the United States District Court for the District of Connecticut. This lawsuit sounded an alarm for tax lawyers across the country; but the suit, which is still in the discovery phase of litigation, is not the type that one would expect to have the tax bar up in arms. Rather, the suit is a patent suit where the owner of a patent is suing an individual based on allegations of patent infringement.

The tax planner applied for a patent covering the method he developed, and the U.S. Patent and Trademark Office (USPTO) gave him a patent for that tax strategy. Thus, the incentive to achieve the best possible result is already a vital piece of the tax system. In allowing tax strategy patents, the patent system seems to be injecting inefficiencies into the tax system—costs that are borne by individual tax payers and tax planners alike. The advantages of this approach include: (1) the USPTO does not have to be concerned with classifying a patent application as a tax strategy or legal method, and (2) the patent system policy of disclosure of novel ideas is, to some extent, furthered. In the debate over tax strategy patents, comparing a method such as the one described in the SOGRAT patent with, for example, a patent on software to help individuals file a tax return highlights this difficulty. Tax strategy patents present unique concerns for the patent system and highlight the different policies between it and the tax system.