TIPLJ: Volume 17

Issue 1 – Fall 2008


The Future of Inline Web Designing After Perfect 10

Citation: 17 Tex. Intell. Prop. L.J. 1 (2008)

Author: Lee Burgunder & Barry Floyd

About: Lee Burgunder and Barry Floyd are, respectively, Professor of Business Law and Technology Policy and Professor of Management Information Systems at California Polytechnic State University.

Abstract: The Internet has created a challenging environment for applying intellectual property laws because it requires legal policies that were originally devised for physical creations to be adapted to a digital world. For instance, the structure of the domain name system and the development of keyword advertising practices have raised numerous questions in the context of trademarks. Likewise, the introduction of web-based business models has led to contentious issues in the patent arena. Without question, though, the vast majority of intellectual property disputes involving the Internet are based on copyrights, as the lawsuits regarding Napster, Grokster, and YouTube so markedly demonstrate.

In 2007, copyrights once again took center stage when the Ninth Circuit Court of Appeals addressed the legality of two key Internet practices in Perfect 10, Inc. v. Amazon.com, Inc. One aspect of this case, which perhaps garnered the most attention in the popular press, sanctioned the creation of thumbnail images by search engines. The other topic may be the more significant, though, since it dealt with inline linking and framing (as referred to here as “inline web designing”) techniques, which are pervasively used by Internet websites. The decision drew a sigh of relief from website developers because it indicated that inline web designing typically will not infringe the display rights enjoyed by copyright owners. It also formalized a marked turnaround for the court, which previously had resolved the issue differently in an opinion that it later withdrew.

This article evaluates the application of copyright law to inline web designing in light of the Ninth Circuit’s decision in Perfect 10 v. Amazon.com. Although the court’s conclusion about display rights may require some observers to alter their philosophical orientation regarding the nature of website visits, the result is definitely appropriate, given the structure and operation of the Internet. Nevertheless, the court’s legal analysis is not entirely persuasive, and so requires some clarification. Perhaps, more significantly, website developers might be tempted to now assume that all potential uses of inline web designing will steer clear of copyright law, at least when the incorporated material was posted lawfully by the operator of the alternative site. This sweeping conclusion, however, would be a serious mistake because these practices still might violate the copyright owner’s derivative rights in their works. Although some authors believe that inline web designing does not implicate derivative rights, the courts have addressed several analogous situations, which demonstrate that they may not agree. Rather, it appears that courts would be willing to rule that inline web designing could, indeed, violate derivative rights depending on the extent of any alterations, the degree of integration, potential economic effects, and the amount of control given to website visitors over the appearance of copyrighted content.


Fragging the Patent Frags: Restricting Expressed Sequence Tag Patenting Using the Enablement-Commensurate-in-Scope-with-Claims Requirement

Citation: 17 Tex. Intell. Prop. L.J. 49 (2008)

Author: Kevin T. Kelly

About: J.D. (2006), LL.M. in Biotechnology and Genomics (2006), Sandra Day O’Connor College of Law, Arizona State University. He is currently a judicial law clerk to the Honorable Peter C. Lewis, United States District Court, Southern District of California.

Abstract: DNA sequences have a dual character in that they are both chemical compositions as well as carriers of information. As a chemical compound made up of strings of units called nucleotides, DNA, or deoxyribonucleic acid, ultimately “control[s] the structure and metabolism of living things.” As an informational molecule, DNA contains “the detailed instructions for assembling proteins [] in the form of a four-character digital code.” In the U.S., while product patent claims on a DNA sequence have focused facially on its chemical composition, it is unclear to what extent such claims may comprise the large quantities of information that a single nucleotide sequence may contain.

Currently, the Patent and Trademark Office (PTO) and the federal courts analyze DNA patent claims using the basic principles of molecular biology and genetics. Under U.S. law, a DNA product patent could cover the DNA sequence  as an isolated and purified chromosomal gene or as a transcribed gene in the form of complementary DNA (cDNA), which is made by reverse transcribing a messenger RNA (mRNA) transcript.8 Most DNA patents must “(1) identify novel genetic sequence, (2) specify the sequence’s product, (3) specify how the product functions in nature–i.e.[,] its use, [and] (4) enable one skilled in the field to use the sequence for its stated purpose.” Even a short DNA fragment of a gene might be patentable by satisfying these requirements. In In re Fisher, the seminal case on gene fragment patenting, the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) suggested that an expressed sequence tag (EST), which is generated by sequencing a small number of nucleotides of a cDNA molecule, usually at either end, may be patentable if the patentee identifies “the function for the underlying protein-encoding gene[].” The inventor need only disclose “one utility, that is, teach others how to use the invention in at least one way.” More simply, to get a broad product-claim patent on a particular EST, the patentee is not required to “disclose all possible uses,” but merely a “‘specific and substantial’ use,” that is, identify the underlying gene and a resultant protein.

However, a broader view of the underlying science behind the gene should dictate a more limited exclusionary right grant in an EST patent than is now seemingly possible in the United States. Currently, the U.S. patent system does not account fully for the following two scientific facts: that a single gene can code for more than one type of protein and that the sequence of a DNA fragment can match more than one type of gene. Consequently, a broad patent claim on an EST may enable one to assert exclusionary rights over DNA sequences covering many different proteins and fragments thereof or to assert rights over several different genes. To bring U.S. patent law in line with these two facts, the PTO and the federal courts should require patentees to delineate in their patent claims the particular use or uses of the claimed ESTs that are described in their corresponding specifications. Such a requirement need not be implemented through the legislative process as the basis of such a requirement may be developed by the PTO and the judiciary using the current statutory framework.

The PTO and the Federal Circuit missed an opportunity to tighten the drafting of claims for EST inventions in In re Fisher. This case dealt with the patentability of five purified fragments of DNA described as ESTs that “encode proteins and protein fragments in maize plants.” The Federal Circuit held that such fragments as disclosed in the patent application were not patentable as the application failed to disclose a specific and substantial utility for the DNA sequences.18 The court held that the two stated uses for the DNA sequences in the patent application–as research tools to identify polymorphisms or to isolate promoters–were mere hypothetical possibilities. Moreover, the court summarily held that the patent application failed to satisfy the enablement requirement of 35 U.S.C. § 112 for a circular reason–because it failed to satisfy the utility requirement of § 101.20 The court stated that the utility requirement demands a patent applicant to research and understand a claimed EST to the point where the patentee identifies “the function for the underlying protein-encoding gene[]” with which the EST would match up.

In a future case, the PTO and the Federal Circuit should go farther in delineating patent law’s requirements for an EST patent. In addition to grounding the unpatentability of DNA fragments like those in the In re Fisher case on §§ 101 and 101/112 for lack of utility and enablement, respectively, the PTO and the Federal Circuit should invoke the § 112 enablement-commensurate-in-scope-with-the-claims requirement in such a context. The patent system should acknowledge that the type of DNA sequences claimed in the In re Fisher case are informational molecules with several potential matches to different genes or to a single gene that encodes multiple different proteins. In doing so, the patent system should state that the major reason why Fisher-type product claims to gene fragments are invalid is that the scope of the broad claims in an application does not bear a reasonable correlation to the scope of enablement provided by the specification. To legally claim the ESTs described in In re Fisher, a patentee should be limited to claiming only a specific known use or uses–that is, the DNA sequence coupled to its corresponding known protein or proteins–that are specifically described and enabled in the specification. In other words, the only type of claim to a novel EST that can be enabled with proper disclosure in the specification on how to use the EST with no “undue experimentation” necessary would be a use-type patent claim.22

Thus, Part II of this article explores in depth the science behind ESTs. Part III discusses the different ways DNA sequences can appear in patent claims. Part IV discusses the current legal framework for patenting ESTs developed by Congress, the

PTO, and the federal courts. Part V proposes an additional way of restricting the patentability of ESTs in light of the science and the positive law of patents in the U.S.


Dumb Inventors Rejoice: How Daiichi Sankyo v. Apotex Violated the Federal Patent Statute

Citation: 17 Tex. Intell. Prop. L.J. 81 (2008)

Author: Nicholas J. Gingo

About: Juris Doctor, May 2008, Chicago-Kent College of Law. Thank you to Dean Krent as well as my fellow Honors Scholars for your comments, questions, and encouraging words. Thank you to my wife, the most beautiful editor the world has ever known.

Abstract: “Nonprecedential Opinion Issued: July 11, 2007. Precedential Opinion Issued: Sept. 12, 2007.”

With those two lines, the Federal Circuit Court of Appeals quietly reissued its opinion in Daiichi Sankyo Co. v. Apotex, Inc. last autumn. At the time the opinion did not cause much of a stir in the patent community, but it should have had practitioners up in arms. Daiichi not only adds another twist to the existing tangle of case law within the Federal Circuit regarding its test to determine the level of ordinary skill in the art, it also violates § 103(a) of the Patent Act.


Goldilocks and the Three Federal Dilution Standards: An Empirical Review 

 Citation: 17 Tex. Intell. Prop. L.J. 101 (2008)

Author: Justin J. Gunnell

About: Justin Gunnell is an associate in the New York office of Latham & Watkins LLP. He received his J.D. from Cornell Law School and B.A. in Policy Analysis and Management with Honors from Cornell University.

Abstract: The Federal Trademark Dilution Act of 1995 (FTDA) amended § 45 of the Lanham Act, 15 U.S.C. § 1127, to define dilution as “the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception.” Although at the time the FTDA was passed, approximately twenty-five states had made dilution actionable, Congress reasoned that a “federal dilution statute [was] necessary because famous marks ordinarily are used on a nationwide basis . . . and some courts [were] reluctant to grant nationwide injunctions for violation of state law.” Congress’s intent in passing this legislation was to protect “the substantial investment the owner has made in the mark and the commercial value and aura of the mark itself” even in the absence of direct competition and confusion. Congress felt confusion “leads to immediate injury, while dilution is an infection, which if allowed to spread, will inevitably destroy the advertising value of the mark.” Some actionable examples members of Congress contemplated in passing this legislation were “DUPONT shoes, BUICK aspirin, and KODAK pianos.”

Dilution law, in contrast to trademark infringement law, is directed at protecting trademark holders rather than consumers. Dilution does not require actual or even likely confusion in potential purchasers; its protection is broad and is designed at its core to protect the mental associations that firms invest large sums of money creating and maintaining. It is no surprise, then, that dilution law finds much of its grounding in cognitive psychology.

It is well known that marketing can have powerful psychological effects. In fact, there are entire fields of marketing designed to modify consumer perceptions of brands. These techniques have been coined “neuromarketing.” Neuromarketing research indicates that marketers can succeed not only in inciting demand but in changing consumer opinions. Most shockingly, marketers can change opinions formed even after a product has been consumed and judgments about the product have been made.

There is extreme value, then, in the enigmatic workings of influencing the consumer subconscious. Dilution law protects associations, snap judgments, and sub-cognitive brand information that lurk in the inner depths of the consumer’s mind. The obvious problem, though, in protecting such intangibles is measurement. How does one measure whether the strength of subliminal associations or subconscious positive feelings have been harmed or diminished–especially in light of the fact that its very operation is somewhat mystifying?

Since the FTDA was signed into law, courts have struggled in determining exactly what is required for a successful showing of dilution, mostly because of these inherent measurement difficulties. Some federal courts at first took the more concrete route and held that to levy a successful dilution claim, the FTDA requires “actual economic harm to the famous mark’s economic value by lessening its former selling power.” In contrast, other courts ruled that “‘[c]ontextual factors’ have long been used to establish infringement . . . [so there is] no reason why they should not be used to prove dilution.” The Supreme Court resolved this circuit split in Moseley v. V Secret Catalogue, Inc.


Issue 2 – Fall 2008


Trade Secret Prices and High-Tech Devices: How Medical Device Manufacturers are Seeking to Sustain Profits by Propertizing Prices

Citation: 17 Tex. Intell. Prop. L.J. 187 (2008)

Author:  Annemarie Bridy

About: Associate Professor of Law, University of Idaho College of Law. B.A, Boston University; M.A. & Ph.D., University of California, Irvine; J.D., Temple University James E. Beasley School of Law. The author would like to thank David Post, Scott Burris, and Joyce Meyers for helpful feedback on an earlier draft of this article.

Abstract: The business practices of medical device manufacturers have come under increasing scrutiny over the last several years following a spate of product recalls that precipitated hundreds of class action product liability lawsuits starting around 2004. When compared with stories of prematurely failing defibrillator batteries and unwanted surgical explants of pacemakers containing faulty seals, the modest headline in the November 17, 2007 Business Section of The New York Times announcing the eleventh-hour settlement of a lawsuit between Boston Scientific (formerly the Guidant Corporation) and the Emergency Care Research Institute (ECRI) promised nothing in the way of drama. Behind the ho-hum headline, however, is an important legal story about the quietly expanding scope of trade secrecy and the ways in which that expansion might contribute to the unsustainably rising cost of health care.

As Richard Epstein has noted, trade secrets have taken a back seat to copyrights and patents in the explosion of scholarship on intellectual property issues in recent years. While scholars concerned for the future of the public domain have argued forcefully and persuasively against the continuing expansion of rights–both in scope and duration–for holders of copyrights and patents, they have said little about the corresponding “creep” that has been occurring in the law of trade secrets. The Guidant-ECRI litigation is a prime example of both how this creep is occurring and how it may succeed, if not through the creation of legal precedent, then through the creation of a litigation-induced chilling effect on the sharing of information that is alleged, though never proven, to be a trade secret. Because the case settled before a decision on the merits of Guidant’s novel claim that the prices paid for its cardiac rhythm management (CRM) devices are trade secrets, the legality of sharing device prices remains indeterminate, and the practice of sharing them is therefore fraught with risk for Guidant’s hospital customers and the consultants who advise them.

What is at stake for device manufacturers like Guidant in the legal transformation of device prices into intellectual property is the perpetuation by new means of an imperfectly competitive and highly profitable market for implantable devices that has historically been all but indifferent to price. What is at stake for hospitals, and indirectly for third-party payers and patients, is the ability of buyers in the health care marketplace to bring basic comparative price information to bear in high-cost purchasing negotiations and decisions. The Guidant litigation thus demonstrates that whether device prices can be trade secrets as a matter of law is more than a doctrinal question about the proper scope of intellectual property rights; it is also a health care policy question, the answer to which may directly impact national health care spending over the coming decades. Through analysis of Guidant’s trade secret claims, the evolution of trade secret doctrine, the peculiar price dynamics of the market for CRM devices, and the implications of price secrecy for health policy, this Article advances the argument that trade secret protection for medical device prices should be precluded as a matter of both trade secret law and health law.


The Search Engine Advertising Market: Lucrative Space or Trademark Liability?

Citation: 17 Tex. Intell. Prop. L.J. 223 (2008)

Author: Jonathan J. Darrow & Gerald R. Ferrera

About: Darrow is an Assistant Professor of Business Law, Plymouth State University; Harvard University (LL.M. candidate 2009), Duke University (J.D.), Boston College (M.B.A.), Cornell University (B.S.). Ferrera is a Gregory H. Adamian Professor of Law, Bentley College; Executive Director of the Bentley Global Cyberlaw Center, New England School of Law (J.D.), Bentley College (M.S.T.), Boston College (B.S.).

Abstract: This Article is divided into six parts: Part II provides a brief description of the search engine industry and Google’s AdWords program, then sketches a framework of the basic laws of trademark infringement, trademark dilution, and unfair competition. Part III suggests that the underlying goals of trademark law, including the protection of consumers and the promotion of a fair and freely competitive market, should guide the resolution of the search engine advertising debate. Part IV offers several analogies for comparison to the search engine advertising issue. From traditional real estate to the yellow pages to recent high technology services offering product recommendations, each of these analogies provides insight into the validity of criticisms and accolades prompted by the practice of search engine advertising. Part V explains how the initial interest confusion doctrine has been overextended in the Internet context and posits a critical flaw in the seminal initial interest confusion case of Brookfield Communications v. West Coast Entertainment. Drawing on the goals of trademark law, search engine advertising is distinguished from other online uses of trademarks, including metatags, pop-up advertisements, and domain names. The Article concludes in Part VI with recommendations for search engines and litigants and advocates for the judicial and legislative encouragement of search engine advertising while maintaining a watchful eye to guard against consumer confusion.


Global Warming Trend? The Creeping Indulgence of Fair Use in International Copyright Law

Citation: 17 Tex. Intell. Prop. L.J. 267 (2008)

Author: RIchard J. Peltz

About: Professor of Law, William H. Bowen School of Law, University of Arkansas at Little Rock. The author gratefully acknowledges the Center for International Legal Studies, www.cils.net, which provided a forum to present this paper in draft from at a symposium on Lawyering in the International Market at the Pilanesberg National Park in South Africa in May 2008. The author is deeply indebted to Esther Seitz, LL.M., Munich, Germany, Intellectual Property Law Center at the Max-Plank Institute for Intellectual Property; without her feedback and assistance, this article would have been sorely deficient. The author is indebted also to Jada A. Aitchison, acquisitions librarian for the University of Arkansas at Little Rock Law Library, whose considerable talents developed the K1420 section that made researching this article a bibliophile’s delight.

Abstract: In her 2000 article Toward an International Fair Use Doctrine, Professor Ruth Okediji hypothesized that the internationalization of copyright law would threaten the freedom of expression if some doctrine akin to U.S. fair use were not established as an international legal norm. Acknowledging the central concern of the Okediji article, this Article analyzes research and legal developments since that article to determine how the present state of the “fair use” concept in international copyright law differs from its state in 2000. The Article concludes that in the last eight years, although there has been no formal adoption of an international fair use doctrine, the concept has escaped its disfavored status as a U.S. peculiarity and achieved some traction in international legal circles. This change is likely a reaction to legal and technological developments that have shifted the copyright balance to favor the property rights of copyright holders over the free expression rights of content users. This conclusion is significant for both groups of rights holders. Users now have unprecedented opportunities to push the international copyright balance toward freedom of expression through expanding legal notions of the public interest. Copyright holders, meanwhile, are in a complicated position. If they insist on an economic protectionist international copyright regime in the short term, they might ultimately win a copyright balance so devoid of free expression as to yield a dearth of creativity and diversity. Or they might ultimately face a backlash that pushes the copyright balance to reckless exception from copyright holder rights.

In the end, the Okediji thesis remains vital. It is in the best interests of government, business, and consumers to exploit present legal and technological circumstances to press for the introduction into domestic legal regimes, if not into the international system, a well crafted public interest doctrine that cuts across the now common array of context-dependent copyright exceptions.


Plain Language Patents

Citation: 17 Tex. Intell. Prop. L.J. 289 (2008)

Author: Robin Feldman

About: Professor of Law, Director, Law & Bioscience Project, U.C. Hastings College of the Law. I wish to thank participants in the Annual Intellectual Property Scholars’ Conference, the Chicago Intellectual Property Colloquium, and the Stanford Program in Law, Science, and Technology for their comments. An expanded version of this essay is included in a chapter of my book, Robin Feldman, The Role of Science in Law (Oxford University Press) (forthcoming March 2009).

Abstract: Nowhere is the process of interpretation more difficult than where law and science interact in the form of drafting and interpreting patents. The multitude of unfamiliar terms and concepts exacerbates the problems inherent in developing appropriate legal doctrines to encourage scientific innovation. Where the legal system must interact with science in this challenging manner, we should move towards speaking in a common language, one that will be susceptible to the process of interpretation and adaptation that is essential to law. Whenever possible, we should avoid the creation of languages and forums that are insulated from the common discourse.


If You Ain’t Cheating You Ain’t Trying: “Spygate” and the Legal Implications of Trying Too Hard

Citation: 17 Tex. Intell. Prop. L.J. 305 (2008)

Author: Samuel J. Horovitz

About: J.D., 2008, University of Florida Levin College of Law; B.S. in Journalism, 2005, University of Florida. Thanks to Professor Elizabeth Rowe for her comments and guidance; to the members of the Texas Intellectual Property Law Journal for their numerous contributions; and to my brother, Max, for his suggestions.

Abstract: For those of us who find solace in post hoc rationalization whenever reality diverges from our presuppositions, the explanation for the New York Giants’ upset victory over the New England Patriots in Super Bowl XLII is now maddeningly obvious: it was, quite simply, a stunning proclamation of power by the Karma Gods. While the loss was the first imperfection on the Patriots’ then-undefeated season, it was hardly the first blemish. “Spygate”–the popular name (with the obligatory suffix “gate” that is socially required of all conspiracy nicknames) for the Patriots’ week-one cheating scandal involving the use of video-recording equipment to try to steal play signals from the New York Jets–had not only earned the Patriots enough negative karma to ensure a to-be-determined loss of the most grueling proportions, but it had also cast a shadow of doubt upon the team’s prior accomplishments: a dynasty that included three Super Bowl victories in the span of less than a decade. As the facts of the scandal unfold, the Patriots will certainly be required to defend their actions in the court of public opinion. Focusing on trade secret jurisprudence, this Article examines the extent to which the team might also be required to defend those actions in a court of law. Part II provides the facts of Spygate. Part III applies the facts to the Uniform Trade Secrets Act (UTSA). Part IV applies the facts to the Economic Espionage Act of 1996 (EEA). Part V examines the broader implications of this Article with respect to the culture of cheating prevalent in sports. Part VI concludes.


Issue 3 – Spring 2009


Conditions and Covenants in License Contracts: Tales From a Test of the Artistic License

Citation: 17 Tex. Intell. Prop. L.J. 335 (2008)

Author: Robert W. Gomulkiewicz

About: Professor of Law and Co-Director, Intellectual Property Law & Policy Graduate Program, University of Washington School of Law. Washington Law Foundation Scholar. I am grateful to David Vaver for inviting me and Justine Pila for hosting me during my visit at Oxford University during the 2008-09 academic year when I wrote this article. Thanks are due to Mike Madison, Heather Meeker, David McGowan, and McCoy Smith for useful comments and discussions. I am especially and deeply indebted to Andrea Lairson for her rigorous editing of my early drafts. Copyright 2008 Robert W. Gomulkiewicz.

Abstract: Pity the poor Artistic License version 1.0 (ALv1). The Free Software Foundation criticizes the license as “too vague” with some passages “too clever for their own good.” The Open Source Initiative suggests that it has been “superseded.” ALv1’s authors at the Perl Foundation even acknowledge its flaws. Yet it is the ALv1, not the venerable GNU General Public License (GPL), which the Federal Circuit upheld in Jacobsen v. Katzer, establishing at long last that open source licenses are enforceable.

Although that outcome received most of the headlines, the case’s greater significance lies elsewhere. Jacobsen v. Katzer teaches valuable lessons about conditions and covenants in license contracts, lessons that apply to software licenses of all persuasions, open source and binary use alike. Moreover, the case raises an important issue about the interplay between contract and intellectual property law: can licensors manipulate the distinction between covenants and conditions in such a way that upsets the delicate balance in copyright law.

This article begins with a short description of open source licensing, followed by a discussion of the Jacobsen v. Katzer case and the lessons that it teaches about license contracts. Then, this article presents the questions left unresolved by Jacobsen v. Katzer: (1) Can licensors manipulate the distinction between covenants and conditions, thereby positioning themselves to obtain copyright remedies, particularly injunctive relief, on top of contract remedies; (2) If so, does this unwisely enhance a licensor’s power under copyright law, tipping the balance too far in the direction of copyright holders?

The article explores two approaches to resolving this open issue. One approach leaves the distinction between pure covenants and license conditions in the hands of the contracting parties. The other approach attempts to create a principled distinction between pure covenants and license conditions. This article concludes that leaving the distinction to the contracting parties, though not perfect, better supports business model innovation, particularly open source licensing, which contributes significantly to innovation and healthy competition in the software industry. Courts can temper the power of licensors when necessary by utilizing the boundaries already inherent in intellectual property licensing law. These boundaries, coupled with prudence in granting injunctive relief for breach of license conditions, should maintain the appropriate balance within copyright law while preserving the positive role of license contracts.

Finding a Foundation: Copyright and the Creative Act

Citation: 17 Tex. Intell. Prop. L.J. 363 (2008)

Author: Darren Hudson Hick

About: Darren Hudson Hick (Ph.D., University of Maryland) is Visiting Professor of Philosophy at Bucknell University. My thanks to Jerrold Levinson, Christopher Morris, Judith Lichtenberg, Samuel Kerstein, and Craig Derksen for criticism and comments on drafts of this article.

Abstract: What is a reasonable ground for the right of copyright? Approaches to grounding the “right” of copyright come in a variety of forms. In the United States, two views dominate the field, both historically and theoretically: that of copyright as a natural right, and that of copyright as a positive instrumental right. The first is typically framed in terms of Lockean property rights and the second in terms of a state-sanctioned monopoly stemming from the U.S. Constitution. In this paper, I outline these two views and show why each ultimately fails to adequately ground our current notion of copyright law, for reasons both internal and external to each theory. Having shown that the right to copyright, as it is traditionally understood, cannot be supported by these theories, I sketch my own view of copyright as a creative right and then consider some reasonable and probable responses to this view.


Inequitable Conduct: Shifting Standards for Patent Applicants, Prosecutors, and Litigators

Citation: 17 Tex. Intell. Prop. L.J. 385 (2008)

Author: Kate McElhone, Ph. D.

About: Dr. McElhone is currently serving as a Law Clerk to the Honorable Jeffrey T. Miller, United States District Court for the Southern District of California. She received her A.B. in Chemistry from Duke University and her Ph.D. in Organic Chemistry from the University of California, Berkeley. Prior to law school, Dr. McElhone performed pharmaceutical research, investigating potential therapeutics for psoriasis, Alzheimer’s Disease, and depression. She graduated from the University of San Diego School of Law, magna cum laude, in 2008.

Abstract: Part II of this Article discusses the historical and analytical underpinnings of the doctrine of inequitable conduct and how the standards have changed and expanded over time. Part III looks at additional complications for patent prosecutors and litigators caused by the conflict between recent Federal Circuit law and proposed regulations promulgated by the PTO. In Part IV, several proposals for comprehensive reform are presented and evaluated.


Of Mice and Men: Why an Anticommons Has Not Emerged in the Biotechnology Realm

Citation: 17 Tex. Intell. Prop. L.J. 413 (2008)

Author: Chester J. Shitu

About: J.D., conferral expected May 2009, The University of Texas School of Law. Chester Shiu received his M.S. in Biomedical Informatics from Stanford University School of Medicine in 2006 and B.S. in Biomedical Computation from Stanford University in 2005. Before attending law school he performed research in molecular dynamics, bioinformatics, and oncology. The author would like to thank Professors John Golden at The University of Texas School of Law and Russ Altman at Stanford University School of Medicine, as well as Brenda Simon, a Fellow at the Stanford Law School Center for Law and the Biosciences, for their comments and encouragement.

Abstract: Modern biology has its origins in the discovery of microscopy during the seventeenth century, though the modern experimental disciplines that make up the life sciences today did not emerge until the end of the nineteenth century. As a practical matter, this relative youth means that a great number of fundamental discoveries have yet to happen in the biological sciences. It also means that the ability of the patent system to fairly apportion the intellectual property rights stemming from these nascent fundamental discoveries is relatively unsettled and is still the subject of much discussion within both the legal and scientific communities.

In particular, there has been a worry that excessive patenting of these new pioneering discoveries may inhibit further exploratory work in these fields. In a seminal paper, Michael Heller dubbed this type of problem a “tragedy of the anticommons.” A tragedy of the anticommons can occur when “multiple owners are each endowed with the right to exclude others from a scarce resource, and no one has an effective privilege of use. When too many owners hold such rights of exclusion, the resource is prone to underuse–a tragedy of the anticommons.” In the biomedical realm, Heller and Rebecca Eisenberg identified two specific anticommons scenarios in which patents might unduly increase the costs of downstream product development. In the first scenario, patents on numerous “upstream” technologies, or research tools, act like “tollbooth[s] on the road to product development, adding to the cost[s] and slowing the pace of downstream biomedical innovation.” In the second scenario, reach-through license agreements on patented upstream technologies are used to obtain “rights in subsequent downstream discoveries” (e.g., royalties on sales and licenses on future discoveries). However, in the ensuing decade, the predicted biomedical anticommons problem has largely not come to pass.