TIPLJ: Volume 21

Issue 1 – Summer 2012

A Dynamic Framework for Patent Claim Construction: Insights from a Philosophical Hermeneutic Study

Citation:  21 Tex. Intell. Prop. L.J. 1 (2012)

Author: Huang Yan

About: NA

Abstract: It is the contention of this Article that modern philosophical hermeneutics helps us to reshape the principles for claim interpretation. Hermeneutics is the task of deciphering text. Philosophical hermeneutics is especially relevant for law, which is grounded in the interpretation of authoritative texts from the past to resolve present-day disputes. It holds that the interpretive process is full of individual subjectivity, creativity, and community involvement. Based on the new theory, this Article proposes a dynamic framework for claim interpretation in the context of infringement. Under the dynamic approach, a claim term conveys a practical and operational meaning. This meaning “involves characterization of the [technical content] to which it is applied.” However, due to continuous technology change and development, a gap of understanding about what the technical content is may be formed between the context in which the invention was made and the current context in which new technologies emerge. According to philosophical hermeneutics, interpretation involves a “fusion of horizons” where past and present are merged. A shared expression of the technical content is identified through a skilled person’s expectation of properties at the time of the invention and his evaluation of properties at the time of interpretation.

Patent claim construction is the means to an end to determine an appropriate scope of protection. In analyzing the infringement issue, interpreters can explore the implication of the gap of understanding technical properties between different contexts: whether the actual properties fall below, meet, or exceed the original expectation, and how these results affect the balance between the protection of monopoly rights and the diffusion of innovation. The dynamic approach emphasizes the relatedness of language to reality, thereby strengthening the interpreter’s engagement with the science and technological community and increasing the likelihood of acceptance of a decision. It also encourages the interpreter to make practical reasoning on different understandings of the claim meaning between the past and present technology contexts, as well as their effects upon the determination of patent scope. The dynamic approach attempts to make the interpretive process more transparent and justifiable. Philosophical hermeneutics can hopefully bring fresh insights into the ongoing issues in claim interpretation.


Narrativizing the Architectural Copyright Act: Another View of the Cathedral

Citation:   21 Tex. Intell. Prop. L.J. 33 (2012)

Author: Xiyin Tang

About: Yale Law School, J.D. 2012; Columbia University, B.A. 2009. Thank you to Barton Beebe, for his helpful commentary, to Ariane Lourie Harrison, for a wonderful class on architectural theory, to the editors of the Texas Intellectual Property Law Journal, for their amazing editorial assistance, and to Paul Laskow, who continues to surprise me each day with his insight and infinite patience. This Article benefited greatly from comments received at the Yale Law Teaching Series Workshop. An earlier version of this Article won the Yale Law School Nathan Burkman Memorial Prize for Best Paper(s) on Copyright Law. For details, see http://www.law.yale.edu/intellectuallife/xtang.htm.

Abstract: This Article argues that the latter stance misreads the legislative history of the Act, and that the former stance is simply wrong. First, this Article examines how the House Report unfairly endorses Graves’s mode of storytelling about architecture, inadvertently resulting in a preference for his strain of postmodern building, codified via the Act, to the detriment of all other architectural styles that avoid such populist, decorative symbolism. Consequently, those who have internalized such arguments cling to the idea that any architectural element that is shaped in some way by efficiency or economic concerns is patently uncopyrightable because it lacks choice. However, such deterministic views are overly simplistic and patently wrong–a dodged adherence to just one view of the so-called “cathedral.”

Rather, I argue that a broader, more protective “total concept and feel” test, like the one applied in the 2005 S.D.N.Y. opinion Shine v. Childs, is a valid reading of the Act, and contrary to prior arguments, is the best standard for promoting progress in the architectural field. This point is all the more elucidated with a look at current developments in architectural theory and work that have made an aesthetic mantra out of externally-determined factors like zoning laws and economic efficiency, or at architecture that yearns to be revolutionary, rather than the mere puppet of market demand. For these reasons, I propose a simple two-step standard that addresses the fear of undue monopolies on useful forms while ensuring broad copyrightability for all styles of architecture.

Above all, this Article argues that to deride architectural protection as merely a necessary evil–a by-product of the Berne Convention–that is at odds with the traditional limitations against copyrightability of useful articles is to restrict the very definition of architecture itself. That is, the argument (which Congress equivocally adopts) necessarily rests on a specific notion of what architecture is and promotes a definition that relies wholly on just one narrative of architectural design and meaning-making. By widening our understanding of architecture beyond that of the legislative history, this Article also hopes to reconcile the current split in the courts (as well as within the scholarly literature) between progress and protection by showing that the two, like Graves’s man vs. machine dichotomy, are not mutually exclusive.


Overview of the New Patent Law of the United States

Citation:   21 Tex. Intell. Prop. L.J. 63 (2012)

Author: Paul M. Janicke

About: Professor at University of Houston Law Center

Abstract: The Leahy-Smith America Invents Act (AIA) is now law. Well, sort of. The transition provisions are complex and many of them depend heavily on the effective filing dates of the various claims in a patent application or issued patent. As a result, the “old” 1952 law’s provisions on novelty will remain until all the claims of a patent involved in an infringement suit have effective filing dates after March 2013. So in litigations the old law cannot be forgotten for the next twenty years or so; in patent prosecution the old provisions end somewhat sooner, persisting in a significant degree for perhaps only another ten years.


The Dubious Legal Rationale for Denying Copyright to Fashion

Citation:   21 Tex. Intell. Prop. L.J. 89 (2012)

Author: Samson Vermon

About: Visiting Scholar, U. Miami, School of Law, E-mail: svermont@mac.com.

Abstract: The Copyright Office’s view, and the conventional wisdom, has long been that clothing design is uncopyrightable. Accordingly, the creative segment of the fashion industry has long pressed for an amendment to the Copyright Act or for sui generis protection. The latest bill, the Innovative Design Protection and Piracy Prevention Act, is modest enough to stand a fighting chance at passage. Its protection is short: 3 years, as opposed to the regular copyright term of life of the author plus 70 years. Its protection is also thin: to infringe P’s clothing design, D’s clothing design must be “substantially identical,” meaning “so similar in appearance as to be likely to be mistaken for” P’s clothing design. In other words, D’s design must be a near counterfeit, not merely “substantially similar” to a portion of P’s design.

Opponents of the bill might want to reconsider. The official rationale for denying copyright to clothing, that a garment is a “useful article” whose aesthetic features are inseparable from its utilitarian function, is unsound and thus may give way in time, especially if the bill fails. That is, if the bill fails, and if clothing designers appeal registration denials by the Copyright Office or file declaratory judgments to compel the Office to stop classifying clothing as per se uncopyrightable, and if the designers ask the appellate courts to squarely confront the issue on its substantive merits, the courts may eventually hold that fanciful clothing is protectable under regular copyright.

If the bill passes, the sui generis protection would likely preempt regular copyright, partly as a matter of statutory construction and partly because sui generis protection would eliminate an otherwise compelling policy reason for protecting clothing under regular copyright. The compelling policy reason is that clothing design needs protection more than in the past, because clothing designs can now be copied so easily that the copies sometimes hit the shelves before the originals.


Strategies to Save Resources and Reduce E-Discovery Costs in Patent Litigation

Citation:   21 Tex. Intell. Prop. L.J. 103 (2012)

Author: Peter J. Corcoran, III

About: Associate, Winston & Strawn LLP, Houston, Texas. This paper’s contents do not reflect the views of Winston & Strawn LLP or any of its clients.

Abstract: Patent infringement actions have reached costs exceeding $5 million when greater than $25 million is at risk. More than half of those costs are related to discovery. This paper examines the strategies that can be used to reduce these spiraling discovery costs that result from the production of electronically stored information (ESI). Such measures include using the latest electronic discovery (e-discovery) production tools, such as predictive coding. Predictive coding is emerging as a faster, more cost-effective and efficient alternative to traditional manual or linear document review. This tool, which may save litigants millions of dollars in discovery costs, is obtaining increased acceptance in the courts and the legal community.

Another strategy litigants can use to reduce e-discovery costs includes implementing versions of the Federal Circuit’s and the Eastern District of Texas’s “Model Orders Regarding E-Discovery in Patent Cases,” the Seventh Circuit’s “E-Discovery Pilot Program and Model Order,” the District of Delaware’s “Electronic Discovery Default Standards and Access to Source Code,” and the Southern District of New York’s “Pilot Program for E-Discovery.” These model orders, standards, and pilot programs are the result of successful collaboration between the bench and bar to address, specifically, the rising costs and difficulties of managing e-discovery in patent and complex commercial cases.

While tools like predictive coding and model orders can reduce ESI production costs, the joinder provision of the recently-enacted Leahy-Smith America Invents Act (AIA) may create some challenges for defendants who want to continue to share their discovery and litigation costs. This paper discusses the strategies that defendants can use under the AIA to continue to share these costs. It also discusses how the courts are managing the many pre- and post-AIA filed patent infringement cases and how the courts’ management of these cases may affect discovery costs.


Patent Law 101: The Threshold Test as Threshing Machine

Citation:   21 Tex. Intell. Prop. L.J. 135 (2012)

Author: David Swetnam-Burland & Stacy O. Stitham

About: NA

Abstract: Recent cases suggest that the Federal Circuit is primed for a post-Bilski, post-Mayo, Section 101 dispute. But a funny thing happens on the way to the Federal Circuit: patent infringement actions pass through federal district courts. At least some of those district courts appear to see Section 101 not as a jurisprudential “morass,” but as the straightest line to a final judgment. In this article, we lay out the terms and the stakes of the debate between the functional and jurisdictional views articulated in the Federal Circuit’s post-Bilski case law. We then consider what light district court decisions applying Section 101 at an early stage of litigation can shed on the respective merits of those views by asking how the decisions were reached; what their fate was (or may be) on appeal; what influence they may have on district court practice in patent cases; and, most importantly, what they tell us about the proper role of Section 101 in patent litigation. We conclude by casting our lot with the jurisdictionalists.


Issue 2 – Winter 2013

Aesthetic Functionality

Citation:   21 Tex. Intell. Prop. L.J. 155 (2013)

Author: Michael S. Mireles Jr.

About: Professor of Law, University of the Pacific, McGeorge School of Law. The author is grateful for comments from the participants, including William H. Brewster, T. Robert Rehm, Jr., Simone Rose and Jeff Slattery, of the March 2012 Wake Forest University Journal of Business and Intellectual Property Law Symposium “Avenue of the Arts: Connecting Creativity, Economics and the Law” on an early version of this Article. The author is also thankful for the comments from Gary Pulsinelli, and the editors of the Texas Intellectual Property Law Journal, including Matthew Tanner and Jill Harris.

Abstract: This Article relies on several cases that demonstrate how aesthetic functionality can be used to suppress the cumulative excesses of trademark law. Based on those cases, this Article first proposes that functionality be used to police the boundary of copyright and trademark to prevent trademark protection of subject matter ordinarily protected by copyright law or in the public domain. Second, this Article asserts that aesthetic functionality is used in its defensive sense to relieve some alleged infringers or diluters from trademark infringement or dilution. Finally, this Article argues that functionality can be used as a policy lever to exempt certain subject matter from trademark protection in industries where that subject matter is fundamental to innovation in that field. Again, these three uses of functionality should be moored to the protection of competition.

The first section is a brief introduction. The second section discusses the troubling nature of trademark law and its cumulative excesses. The third section provides a discussion of the functionality doctrine with an emphasis on aesthetic functionality. The fourth section analyzes three new roles for aesthetic functionality to restrain trademark law’s cumulative excesses. Finally, a brief conclusion is offered.


Biopharmaceuticals Under the Patent Protection and Affordable Care Act: Determining the Appropriate Market and Data Exclusivity Periods

Citation:   21 Tex. Intell. Prop. L.J. 213 (2013)

Author: Donna M. Gitter

About: Professor of Law, Baruch College, New York, New York; J.D., University of Pennsylvania Law School; B.A., Cornell University College of Arts and Sciences. E-mail: Donna.Gitter@Baruch.cuny.edu. I would like to thank Professors Daniel Cahoy and Lynda Oswald for inviting me to present this Work at the May 2012 Intellectual Property Law Colloquium at the University of Michigan Law School, Ross School of Business. The participants at that Colloquium offered valuable comments for which I am grateful. Thanks are also due to my colleagues in the Law Department at Baruch College, City University of New York, who offered helpful suggestions and insights at our Faculty Scholarship Workshop.

Abstract: Part II of this Article will discuss the importance of biologic pharmaceuticals, also known as biologics, in the health care market. Part III will examine Congressional intent when enacting the BPCIA, with respect to the establishment of market and data exclusivity periods for biosimilar pharmaceuticals, analyzing the plain language and legislative history of the Act. Part IV will then consider, apart from the legislative intent at the time the BPCIA was enacted, what the appropriate data exclusivity period ought to be. This Part will examine the academic literature relating to market and data exclusivity for biosimilar pharmaceuticals, in addition to the effect that the negotiation of international trade agreements has upon questions of data and market exclusivity.


The Past and Future of Admitted Prior Art

Citation:   21 Tex. Intell. Prop. L.J. 237 (2013)

Author: Moshe Wilensky

About: Mr. Wilensky is a Patent Examiner and former associate at the law firm of Oliff & Berridge, PLC. The author would like to thank Jessica Cahill, Chris Crutchfield, Yankee Wilensky, and Chellie Goldwater for their comments and suggestions. The views in this Article are those of the author and do not necessarily reflect the views of the United States Patent & Trademark Office.

Abstract: Admitted prior art is a potent type of private prior art that can irreversibly limit patent rights. The Manual of Patent Examining Procedure (MPEP) succinctly defines admitted prior art as:

A statement by an applicant in the specification or made during prosecution identifying the work of another as “prior art” . . . which can be relied upon for both anticipation and obviousness determinations, regardless of whether the admitted prior art would otherwise qualify as prior art under the statutory categories of 35 U.S.C. 102. The effects of these admissions are binding, even if made in error. Yet despite the severity of such admissions, some aspects of the admitted prior art doctrine are still vaguely defined by case law. This Article will highlight two important areas where case law is unclear and discuss how future courts might rule on the subjects. This Article will also discuss how the 2011 America Invents Act affects admitted prior art law.

Section I summarizes the established portions of the admitted prior art doctrine. Section II discusses the unclear topic of the threshold between a mere statement and a binding admission in the background section of a specification. Finally, Section III addresses whether admitted prior art can be disqualified under 35 U.S.C. § 103(c).


Damned If You Do, Damned If You Don’t, and Damned in Between: An Economic Approach to the Cross-Market Repercussions of the Application of 35 U.S.C. §271 to Internationally Implemented Process Patents

Citation:   21 Tex. Intell. Prop. L.J. 255 (2013)

Author: Alejandro Valencia

About: NA

Abstract: Owners of patents on internationally implemented processes could soon find themselves caught between a rock and a hard place in terms of legal remuneration. That is because process patents, made up of a number of discrete steps, receive no protection from infringement in the U.S. so long as one of any number of steps takes place abroad. In part due to the misusage of a statutory provision, 35 U.S.C. § 271(f), and in part due to judicial and legislative reluctance to create new law, this process patent problem represents an ongoing disjunction between what the law is–a fact-based, black-and-white determination of infringement–and what the law should be–a balanced and incremental finding of infringement where deserved. Not only does this process patent problem affect those patent owners who seek to enforce court-made judgments on infringement, it also affects patent owners seeking to resolve alleged infringement via alternative avenues. This note identifies the legal problem at its most fundamental level and attempts to address the problem’s inefficiencies and unintended consequences through the application of both positive and normative economic concepts.


Issue 3 – Spring 2013


Mode, Method, Madness, and Mayhem: Section 15 of the Leahy-Smith America Invents Act

Citation:   21 Tex. Intell. Prop. L.J. 271 (2013)

Author: Wayne A. Kalkwarf

About: B.S. Indiana University 1982; J.D. Indiana University 1985; LL.M. Candidate in Intellectual Property and Technology Law University of Dayton 2013. Copyright © 2013 Wayne A. Kalkwarf. All rights reserved.

Abstract: The biggest revision in American patent law in nearly six decades, the Leahy-Smith America Invents Act (AIA), Pub. L. No. 112-29, 125 Stat. 284 (2011) (codified as amended in scattered sections of 35 U.S.C.), was signed into law by President Obama on September 16, 2011. Despite six years and numerous unsuccessful bills attempting to reform this country’s patent system, Congress finally passed what has been called a compromised bill. The word “compromise” could not be more descriptive for section 15 of the statute. Congress allowed to continue the requirement that inventors must specify in a patent application the best mode or method for their inventions as inventors have been required to do for over 150 years. However, Congress also provided that the failure to reveal a patent’s best mode does not render the patent invalid, or subject to challenge during litigation. This unnecessary conflict can be resolved with only one solution which certain interests, including Congress, will find extremely distasteful.


Daubert for “Dummkopfs” – Judge Posner Hypothetically Disparages Patent Damages Experts in Apple and Brandeis

Citation:   21 Tex. Intell. Prop. L.J. 301 (2013)

Author: Patrick Doll & L. Joseph Denbina

About: Both authors are associates at Sidley Austin LLP in Dallas, Texas. The views expressed herein are our own. Any errors that remain are our own.

Abstract: Sitting by designation in two patent infringement cases in the Northern District of Illinois, Judge Posner presented a stricter approach to dealing with the adequacy of expert damages testimony than had previously been applied. In Apple, Inc. v. Motorola, Inc. he controversially dismissed a high profile case between electronics giants after striking all the testimony of both sides’ patent damages experts. He similarly struck most of the damages experts’ theories in Brandeis University v. Keebler Co. In deciding these two cases, Judge Posner fashioned new rules for determining reliability of expert damages analysis. In several hypotheticals, he also colorfully speculated on what a real-world corporation might say to an outside expert it had employed in a non-litigation context when presented with such unreliable analysis: “Dummkopf! You’re fired.”

In this article, we analyze Judge Posner’s rationale and holdings based on the controlling law and possible outside norms that may have influenced Judge Posner. In Part II, we discuss the legal background upon which these decisions rest, including recent judicial trends in patent remedies and the standards for scrutiny of expert reports. In Part III, we review Judge Posner’s Daubert analysis in Apple and Brandeis and the subsequent dismissal of Apple. In Part IV, we analyze Judge Posner’s approach under the principles of legal pragmatism, including both economic and non-economic norms. Finally, in Part V, we consider whether Judge Posner’s approach could be adopted by district courts nationwide.


A “Likelihood of Confusion”: Circuit Courts Attempt to Reconcile Sixty Years of SCOTUS Silence Since Bulova

Citation:   21 Tex. Intell. Prop. L.J. 345 (2013)

Author: John Sokatch

About: NA

Abstract: Part I of this Article introduces the issue by briefly explaining the federal trademark registration process and the global costs associated with trademark infringement. Part II introduces the judicial framework under which the Supreme Court analyzed the extraterritoriality issue of the Lanham Act and the major circuit cases since the Supreme Court’s decision. Part III offers a possible solution to the resulting judicial confusion by adapting an approach from the First Circuit. Finally, Part IV explains why the First Circuit’s approach serves as an ideal model for the Supreme Court to consider adopting if and when it re-addresses the extraterritorial jurisdiction issue under the Lanham Act.


Is the Prototypical Small Inventor at Risk of Inadvertently Eliminating Their Traditional One-Year Grace Period Under the America Invents Act? – Interpreting “Or Otherwise Available to the Public” per New §102(a) and “Disclosure” per New §102(b)

Citation:   21 Tex. Intell. Prop. L.J. 373 (2013)

Author: Eric A. Kelly

About: J.D. candidate, University of La Verne, College of Law, May 2013; Patent Agent, USPTO No. 70302.

Abstract: On September 16, 2011, President Obama signed the largest overhaul of the U.S. patent system in nearly 60 years, commonly known as the Leahy-Smith America Invents Act. The United States Patent and Trademark Office (USPTO) asserts that this legislation is the greatest overhaul since the 1836 Patent Act. While the changes are many, this Comment provides much-needed guidance in interpreting new statutory language undefined in the AIA itself, as we await the development of case law in the years to come.

The AIA amends Title 35 of the United States Code (35 U.S.C.). In this Comment, the 1952 Patent Act (as amended) will hereinafter be referred to as the “Old” Act and the AIA § 102(a) and (b) will hereinafter be referred to as “New” § 102(a) and (b). New § 102(a) and (b) contain some new terminology absent from the Old § 102(b), although much other terminology remains identical in both versions. This Comment focuses on the new statutory language in AIA’s New § 102(a) and (b) which will be replacing Old § 102(b) of the 1952 Patent Act. The new language is: “or otherwise available to the public” from New § 102(a) and “disclosure” from New § 102(b). As noted above, the motivation driving this statutory interpretation is to ensure small inventors have at least the same protections as under the Old Act.

Part II sets out why interpreting the new statutory language is important to the practice of patent law; Part III presents the statutory changes; Part IV provides an analysis of the legislative history ending with the author’s suggested interpretations; and Part V applies the suggested interpretations to existing patent case law. The Comment concludes with a suggested practice point for small inventors on how to best protect themselves under the AIA in the interim period until new case law emerges.