TIPLJ: Volume 19

Issue 1 – Summer 2010


Sale or License? UMG v. Augusto, Vernon v. Autodesk, and the First Sale Doctrine

Citation: 19 Tex. Intell. Prop. L. J. 1 (2010)

Author: Vivian F. Wang

About: J.D. 2010, Stanford Law School

Abstract: This paper examines whether routine transfers of promotional CDs and software CDs should be treated as transfers of ownership for purposes of the first sale doctrine. It concludes that the answer is an unequivocal “yes” for promo CDs and a more hesitant “yes” for software CDs. Just as consumers of traditional media, such as books, videotapes, and digital video disks (DVDs), a consumer who has paid for the right to use a software CD indefinitely should be able to transfer those rights if he no longer wants to use the software. The problem, however, with applying the first sale doctrine to software CDs is that § 117 of the Copyright Act permits the original user to retain a copy of the software on his hard drive. This loophole allows for the proliferation of the software without compensation to the copyright owner. Nevertheless, this problem should not be grounds for a court to refuse to apply the first sale doctrine to software CDs.


The Aftermath of TS Tech: The End of Forum Shopping in Patent Litigation and Implications for Non-Practicing Entities

Citation: 19 Tex. Intell. Prop. L. J. 29 (2010)

Author: Mark Liang

About: J.D. 2010, University of Chicago Law School

Abstract: Over the past decade, the Eastern District of Texas has rocketed to the top of patent venue rankings with respect to filings. In 1990, one patent suit was filed in the district. In the first ten months of 2007, a national record 312 patent cases were filed against 1,253 defendants. The Eastern District is not home to any major cities or tech hubs. The choice of hundreds of patentees nationwide to pursue their patent suits in the Eastern District constitutes forum shopping.


Unrepresentative Randomization: An Empirical Study of Judging Panels of USPTO Appeals to the CAFC

Citation: 19 Tex. Intell. Prop. L. J. 79 (2010)

Author: Thomas Froats

About: J.D. 2011, University of Kentucky College of Law; Registered Patent Agent, 2010

Abstract: There is a need for an empirical study that looks at patent appeals from the United States Patent and Trademark Office (USPTO) to determine if there is a truly representative cross-section of judges involved in those decisions. Such a study would provide valuable information to patent prosecutors, those in appellate practice before the Federal Circuit, and those who analyze the current Rule 47 process employed by the Federal Circuit.


Pull Too Hard and the Rope May Break: On the Secondary Liability of Technology Providers for Copyright Infringement

Citation: 19 Tex. Intell. Prop. L. J. 111 (2010)

Author: Lital Helman

About: Intellectual Property Fellow at the Kernochan Center for Law, Media, and the Arts, Columbia Law School

Abstract: This article focuses on the standard of secondary liability for technology providers under copyright law. Drawing on existing literature, it shows that contrary to the conventional understanding of the law as granting a safe harbor for technologies, courts have created a de facto open-ended liability standard. It then argues that the strict and unpredictable nature of that open-ended standard prevents effective direction of market behavior and harms the effectiveness of secondary liability as an enforcement measure in this regard.


Issue 2 – Winter 2011


Beware the Scrivener’s Error: Curing the Drafting Error in the Federal Registration Defense to Trademark Dilution Claims

Citation: 19 Tex. Intell. Prop. L.J. 169 (2011)

Author: Timothy A. Lemper & Joshua R. Bruce

About: Professor Lemper is Clinical Associate Professor of Business Law and Ethics at Indiana University, a former intellectual property litigator at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP in Washington, D.C., and a 2001 graduate of Harvard Law School. Zachary D. Bailey and Frank Odar III contributed to this article as research assistants.

Abstract: This article chronicles in Part II the origins of the drafting error in § 43(c)(6) of the Lanham Act. It begins by tracing the evolution of the federal registration defense, including the creation of § 43(c)(3) as part of the FTDA in 1995. It explores the meaning and intent of § 43(c)(3) by placing it in historical context and explaining the policy goals that the federal registration defense was meant to serve. Part II concludes by describing Congress’s motives for expanding the federal registration defense in the TDRA, and explaining how–as a result of a drafting error–newly created § 43(c)(6) gives federal registrants immunity from liability for dilution under state and federal law, contrary to the legislative history and policy goals of the federal registration defense.

Part III surveys the impact of the drafting error in § 43(c)(6) since its enactment in 2006, including its treatment by courts, the United States Patent and Trademark Office (PTO), and trademark publications. Part III outlines the risks created by the drafting error in § 43(c)(6), including the threat that the error poses to the protection of famous trademarks and to the predictability and uniformity of federal trademark law and practice.

Part IV presents the most compelling arguments for amending § 43(c)(6) to cure the drafting error in the statute before problems arise and proposes language for such an amendment. It explains how the proposed amendment reflects the legislative history of the TDRA, furthers the policy goals of the federal registration defense, promotes greater uniformity in federal trademark law and practice, and ultimately, increases the protection of famous marks. Part IV concludes by drawing on the history of a similar drafting error in the FTDA to argue for the wisdom and prophylactic value of curing the drafting error in the statute by congressional amendment rather than trying to manage the error by judicial or administrative means, and for doing so before the risks created by the drafting error cause serious harm to trademark owners.


International Cooperation and the Patent-Antitrust Intersection

Citation: 19 Tex. Intell. Prop. L.J. 193 (2011)

Author: Stephen Yelderman

About: J.D., University of Chicago. I would like to thank Lisa Bernstein, Anu Bradford, Daniel Crane, Shahar Dillbary, Lee Fennell, Alexandra Levy, Thomas Miles, and Randall Picker for their generous help.


Abstract: This Article models the costs and benefits of offering patent protection when there are spillovers from other patent jurisdictions. It predicts how national policymakers will behave–both with and without formal coordination–and evaluates the consequences of their predicted behavior. This analysis suggests that the current international patent regime is inadequate, and that improved outcomes are available through increased cooperation.

Part I of this Article provides background on the tension between patent and antitrust law and describes several approaches that have been used to address the problem. This Article also introduces the international frameworks affecting patent and antitrust policy today.

Part II of this Article models the costs and benefits of operating a national patent system when the rewards of stimulating innovation are shared across economies. The model predicts how a rational policymaker will set patent terms and patent-antitrust policies, both in the presence and in the absence of a patent treaty constraining the policymaker’s behavior.

Part III of this Article uses the model from Part II to demonstrate that the existing international patent regime is expected to lead to suboptimal results. It then discusses the necessity and feasibility of improving the existing regime through increased coordination of patent-antitrust policies.

Part IV of this Article examines the assumptions of the model and evaluates other factors that could cause the existing regime to produce outcomes better than expected. Part V concludes this Article.


Missing the Mark: The Misplaced Reliance on Intent in Modern Trademark Law

Citation: 19 Tex. Intell. Prop. L.J. 229 (2011)

Author: Blake Tierney

About: Associate, Latham & Watkins (London) LLP. J.D., Brigham Young University (BYU)–J. Reuben Clark Law School; B.S., University of California, Los Angeles (UCLA). The views expressed herein are the author’s, not those of Latham & Watkins.

Abstract: This Article reconsiders the reliance on the intent factor in modern trademark law. Part II begins by evaluating the history of its use and the present state of the law. Part III then considers the factor from a theoretical perspective, examining its implementation in light of the relevant statutes. Reliance on the defendant’s intent is shown to be inconsistent with both the Lanham Act and the Federal Rules of Evidence. Part IV surveys the ways in which courts rely on the factor in practice and identifies numerous problems both in the way courts define it and the sources they rely on to support it. Part V concludes that, in light of all of these considerations, the marginal benefits provided by this factor are far outweighed by the problems it creates. This Article ultimately recommends that courts no longer rely on intent in determining this central issue in trademark law–the likelihood of consumer confusion.


Formalism and Patent Claim Drafting: The Status of De Facto Independent Claims Under the Fourth Paragraph of 35 U.S.C. §112

Citation: 19 Tex. Intell. Prop. L.J. 263 (2011)

Author: Jason M. Nolan

About: Patent Examiner, U.S. Patent & Trademark Office, Technology Center 1600 (Biotechnology, Organic Chemistry and Pharmaceuticals), Alexandria, VA; Ph.D. (Organic Chemistry), North Carolina State University, 2003; B.S. (Chemistry), St. Lawrence University, 1998; J.D. candidate, The Columbus School of Law at The Catholic University of America, 2012. I gratefully acknowledge A.G. Harmon, Professor, The Columbus School of Law, for his incredible help. All errors herein are mine. The views in this article are those of the author and do not necessarily reflect the views of the United States Patent and Trademark Office.

Abstract: This article proposes that the USPTO should revise the Code of Federal Regulations (CFR) rule for patent claims to provide a formal definition of independent claim in a way that is consistent with the law. Logically, independent and dependent claims should have contrary definitions, such that a dependent claim necessarily refers back to a previous claim to define the invention, and an independent claim must define the invention without a reference to another claim. Similarly, the Manual of Patent Examining Procedure (MPEP) should be revised in a manner that is consistent with the holdings of Pfizer and subsequent cases. The proposed revisions would facilitate consistent and predictable claim interpretations during patent prosecution and litigation–the wish of all interested parties.

Part II of this article provides an overview of the formal requirements for patent claims under USC 112 and 37 C.F.R. § 1.75 (CFR 1.75). Part II includes a historical context for the holding in Pfizer and provides an explanation as to how administrative acquiescence to the use of shorthand references allowed the definition of independent and dependent claims to be conflated. Lastly, Part II discusses patents in the context of the pharmaceutical industry and the role of formalism in patent law. Part III presents some of the common mistakes made by claim drafters that have resulted in unpatentability or invalidity holdings under USC 112, P 4 by the BPAI and federal courts since Pfizer. Part IV articulates the limitations imposed by the doctrine of necessity on claims that incorporate by reference subject matter from the written description (commonly referred to as the specification). Additionally, Part IV proposes a rule that would resolve the conflating definitions for independent claim and dependent claim and discusses the likely arguments in opposition of the proposed rule. Next, Part V demonstrates, with hypothetical claims, how the proposed rule would facilitate consistent and predictable claim interpretations and why the rule would simplify the doctrine of claim differentiation. Finally, Part VI provides a summary of the article’s main thesis, findings, and suggestions.


Issue 3 – Spring 2011

The Proper Role of Functionality in Design Patent Infringement Analysis: A Criticism of the Federal Circuit Decision in Richardson v. Stanley Works, Inc.

Citation: 19 Tex. Intell. Prop. L.J. 309 (2011)

Author: Shin Chang

About: J.D., Chicago-Kent College of Law 2011; USPTO registered agent; B.S., Biology and M.S., Biomedical Engineering, University of Texas at Arlington. I would like to thank Richard Stockton from Banner & Witcoff, Christopher Carani from McAndrews, Held & Malloy, and Professor David Schwartz from Chicago-Kent College of Law, for their support and contributions to this note.

Abstract: This note investigates the current debate surrounding the role of functionality in the design patent infringement analysis. The first section discusses the Federal Circuit’s en banc decision in Egyptian Goddess and the test for design patent infringement after the court’s decision. The note then discusses the recent decision in Richardson and the current debate over the role of functionality in infringement analysis. Finally this note argues that, contrary to the holding in Richardson, functionality issues should not play a role in claim construction. Moreover, the fact-finder should not filter individual functional elements of a claimed design when comparing the accused design to the construed claim for substantial similarity. This note then concludes by delineating the proper role of functionality in the design patent infringement analysis and recommends that the Federal Circuit finds an opportunity to clarify the role of functionality in the infringement analysis of design patents and reverse case law to the extent that it conflicts with this proper role.


The Federal Circuit’s Interpretation and Application of the Medimmune Standard for Declaratory Judgment Jurisdiction

Citation: 19 Tex. Intell. Prop. L.J. 331 (2011)

Author: Kelsey I. Nix & Laurie Stempler

About: Kelsey I. Nix is a partner in the Intellectual Property department at Willkie Farr & Gallagher LLP in New York (knix@willkie.com). Laurie Stempler is an associate in the Intellectual Property department at Willkie Farr & Gallagher LLP in New York (lstempler@willkie.com).

Abstract: This article reviews Federal Circuit patent cases decided post-MedImmune. Part II discusses the enactment of the Declaratory Judgment Act, along with the evolving standards that courts have applied to determine whether jurisdiction for a declaratory judgment exists. Part II also briefly introduces the impact of declaratory judgment on patent cases. Part III discusses the Federal Circuit’s significant post-MedImmune decisions. Part IV examines the Federal Circuit’s parallel analysis of declaratory judgment jurisdiction under the Article III constitutional requirements of standing, ripeness, and mootness. Part V briefly discusses district courts’ ability to exercise discretion in determining whether declaratory judgment jurisdiction exists. Finally, Part VI considers some of the long-term implications of MedImmune.


Different Infringement, Different Issue: Altering Issue Preclusion as Applied to Claim Construction

Citation: 19 Tex. Intell. Prop. L.J. 361 (2011)

Author: Matthew A. Ferry

About: J.D. Candidate, UCLA School of Law, May 2011; M.S. Physics, California Institute of Technology, June 2008; A.B. Physics and Astrophysics, University of California at Berkeley, May 2006. The author would like to thank Professor Doug Lichtman at the UCLA School of Law for his diligent guidance, support, and patience in the research and writing of this article.

Abstract: This article discusses the issue preclusive effect of a court’s patent claim construction. Under current law, claim interpretation stands as an issue by itself for purposes of collateral estoppel. This article argues issue preclusion should not apply to claim construction as a solitary issue, but only to the joint issue of claim construction with infringement. This article also discusses the various policy ramifications in adopting the proposed standard.

Part I details the current state of the law on issue preclusion and claim construction. This section first introduces Markman orders and patent claim construction in general, as well as the various requirements for issue preclusion. The article then goes on to review Federal Circuit law and regional circuit law on how claim construction satisfies the four elements of issue preclusion. The seminal cases TM Patents and Kollmorgen are discussed, providing the reader with a background on the most contested area of issue preclusion and claim construction: finality. This section also discusses the pre- and post-Markman Federal Circuit law and how it has developed over time.

Part II focuses on the unique circumstances present in patent law. The article argues the issue before a court is not “what does this claim term mean?” but rather “what does this claim term mean in light of this particular allegedly infringing device?” First, this section shows how Markman briefs are written with the accused product in mind. Second, this section reveals that, to a large extent, judges in patent cases recognize the product-sensitivity of claim construction through their Markman hearing procedures. Given this reality, the article argues that the current standard could be improved to balance the interests of fairness and efficiency.

Part III proposes a new standard. In short, issue preclusion should only apply if the infringement question, as a whole, is the same. Specifically, courts should characterize the “identical issues” prong in collateral estoppel as requiring the same infringement contention in both litigations, encompassing both claim construction of the relevant terms and how the accused product infringes those claims. Repeat litigators would only be bound to a prior construction if the accused product infringes in the same way. Courts may give reasoned deference to the prior court’s determination if found to be logically solid.

Lastly, Part IV discusses the proposed standard’s policy implications as compared to that of the current standard. Although the current standard boasts uniformity and predictability, this article argues the advantages are only surface deep and do not serve any vital public function. Because issue preclusion cannot bind a party that was not in privity to the initial litigation, any “public notice” on the claim construction only refers to what binds a prior party. Any newly accused infringer can subsequently challenge that holding. Connecting issue preclusion to the union of claim construction and accused method of infringement evens the playing field, releasing prior parties from an unjust disadvantage without damaging any actual public utility.


Patent Eligible Medical and Biotechnology Inventions After Bilski, Prometheus, and Myriad

Citation: 19 Tex. Intell. Prop. L.J. 393 (2011)

Author: Joshua D. Sarnoff

About: Associate Professor, DePaul University College of Law, Chicago, IL. The author was Counsel of Record for law professors and AARP in the Bilski case in the Supreme Court and in the Federal Circuit, and co-counsel for the American Medical Association and other medical organizations in the Myriad case in the Federal Circuit and in the District Court. The author thanks the many people who have contributed in various ways to this article. A more extensive historical treatment of subject matter eligibility is the subject of a forthcoming book: Joshua D. Sarnoff, Patents and Morality: Religion, Science, Nature, and the Law (Edward Elgar Press forthcoming 2011). A more extensive theoretical treatment of the benefits of relying on subject matter eligibility doctrine is the subject of a forthcoming article: Joshua D. Sarnoff, Patent Eligible Inventions After Bilski: History and Theory, Hastings L.J. (forthcoming 2011), draft available at http://ssrn.com/abstract=1757272.

Abstract: This article briefly explains the current and conflicting doctrinal standards for eligibility exclusions adopted by the Supreme Court in Bilski that the Federal Circuit and the U.S. Patent and Trademark Office (PTO) will have to apply to claims for the discovery of medical and biotechnological inventions in Part II. Part III analyzes the Federal Circuit’s decision in Prometheus and relates it to the earlier Supreme Court Laboratory Corp. case, which addressed a medical diagnostic patent but did not result in an issued decision. Part IV describes the Myriad case and the issues that it raises. Throughout this article, the focus is on how the current doctrine determines eligible and ineligible applications of categorically excluded science, nature, and ideas. Additionally, this article discusses the difficulty in drawing lines regarding eligibility of claimed inventions, systemic benefits of employing eligibility exclusions, and the utilitarian and deontological moral concerns, e.g., social and innovation harms, raised in regard to such applications. The article concludes with a brief projection of the continuing contested future of medical and biotechnology eligibility determinations, and the recognition that patentable subject matter eligibility will remain a controversial area in the United States and around the globe.


Federal Circuit: The Statistics

Citation: 19 Tex. Intell. Prop. L.J. 419 (2011)

Author: Patrick Doll

About: J.D. Candidate, May 2011, University of Texas School of Law; M.S. Mechanical Engineering, 2009, University of Cincinnati; B.S. Mechanical Engineering, 2005, University of Michigan. The author would like to thank Catherine Garza for her tireless support and Professor John Golden for his insight and guidance.

Abstract: Beginning in 2011, the Journal will publish statistical tables tracking the business of the U.S. Court of Appeals for the Federal Circuit. These tables are intended to supplement the statistics provided on the Federal Circuit’s website1 and the statistics compiled by the University of Houston Law Center. The tables do so by providing data on (1) the voting behavior of individual Federal Circuit judges and (2) the Federal Circuit’s treatment of appeals from different originating fora, including the U.S. International Trade Commission (ITC), the U.S. Patent and Trademark Office (USPTO), and individual district courts.