TIPLJ: Volume 24

Issue 1

Marvel, Cisco, and Teva: The U.S. Supreme Court Decides Three Patent Cases in 2015, Respecting Stare Decisis

Citation: 24 Tex. Intell. Prop. L. J. 1 (2016)

Author: Sue Ann Ganske

About: Clinical Professor of Business Law, School of Accounting, College of Business, Florida International University; J.D., University of Toledo College of Law, Order of the Coif, Business Editor, Law Review; M.A. and B.A., Bowling Green State University. 

A New Era for Patent Infringement Pleading: Twombly, Iqbal, and the Demise of Form 18

Citation: 24 Tex. Intell. Prop. L. J. 15 (2016)

Author: Jun Zheng

About: J.D., 2016, The University of Texas School of Law; M.Sc. in Electrical and Computer Engineering, 2011, The University of Texas at Austin; M.Phil. in Electrical and Electronic Engineering, 2009, The University of Hong Kong; B.S. in Electrical Engineering, 2005, University of Electronic Science and Technology of China.

Innovative Contracting for Better Material Transfers

Citation: 24 Tex. Intell. Prop. L. J. 49 (2016)

Author: Karen E. Sandrik


Assistant Professor, Willamette University College of Law.


Empirical studies find that contrary to expected outcomes, it is not patents that most often impede research. Instead, it is access to tangible research inputs that is more likely to cause the delay or abandonment of promising research. Difficulty in the negotiation and execution of material transfer agreements (MTAs), the contractual agreements governing the transfer of materials, research tools, and data, is the cause. This Article addresses a new trend in MTA practice that is both exciting and problematic.

In the past, MTAs largely functioned as a recording mechanism to track who had what materials and to set expectations in the case of a laboratory accident or infringement lawsuit involving the transferred material. Now, however, some industry parties are using MTAs to gain more than just a record of the transfer and basic representations and warranties. Industry parties are using MTAs to develop and build relationships. This, in turn, is leading to more shared innovative activity, a key factor in moving scientific fields forward. Yet this progress towards more shared innovative activity is not without cost. Most notably, this modern MTA practice is increasing transaction costs and the likelihood of bargaining breakdowns because not everyone is using MTAs in this way. In order to facilitate access to materials, tools, and data while also furthering shared innovative activity, non-industry parties, most notably, academic institutions, should join the modern MTA regime. Lawyers have an opportunity to improve the material transfer process through innovative contracting practices. This Article provides suggestions on how to accomplish this by overcoming contested terms and using a modern MTA to give access to materials and help develop collaborative relationships.

The “UNLIMITLESS”: On How to Remedy the Inadequacies of a Language-Based System for Patent Claims

Citation: 24 Tex. Intell. Prop. L. J. 103 (2016)

Author: Amir H. Khoury

About: Senior Lecturer, Faculty of Law, Tel Aviv University; and Distinguished Visiting Professor, University of Kansas, (2013-2014).

Issue 2

TRIPS Non-Discrimination Principle: Are Alice and Bilski Really the End of NPEs

Author: Fusco, Stefania

Ongoing Royalties for Patent Infringement

Author: Sidak, J. Gregory

Does It Have to Be a Copyright Infringement: Live Game Streaming and Copyright

Author: Matsui, Shigenori

Applying Doctrine of Equivalents Tests to Products of Nature Decisions

Author: Lesser, W.

Issue 3

The Patent Trial and Appeal Board’s Evolving Impact on Claim Construction

Citation: 24 Tex. Intell. Prop. L. J. 301 (2016)

Author: Timothy R. Holbrook

About: Professor of Law, Emory University School of Law.

The Youngest Patent Validity Proceeding: Evaluating Post-Grant Review

Citation: 24 Tex. Intell. Prop. L. J. 333 (2016)

Author: Saurabh Vishnubhakat

About: Associate Professor, Texas A&M University School of Law; Associate Professor, Texas A&M University College of Engineering; Fellow, Duke Law Center for Innovation Policy. 

Fee Shifting for PTAB Proceedings

Citation: 24 Tex. Intell. Prop. L. J. 367 (2016)

Author: Megan M. La Belle

About: Associate Professor, Catholic University of America, Columbus School of Law.


Fee shifting in patent litigation has been a hot topic in recent years.  In Octane Fitness v. ICON and Highmark v. Allcare, the Supreme Court made it easier to shift fees under 35 U.S.C. § 285, which allows courts to award reasonable attorney’s fees to prevailing parties in patent cases.  Moreover, several bills have been introduced in Congress since 2013 that would expand courts’ power beyond the parameters of § 285.  Various aspects of these proposals have been heavily debated, including whether fee shifting should be mandatory or discretionary, how to recover fees from the “real party in interest,” and whether to adopt a one-way or two-way fee shifting scheme.

These sort of design choices regarding a fee shifting regime are not simply about who should pay for patent litigation.  Fee shifting schemes also provide a roadmap from lawmakers about whether and how litigation ought to proceed.  Fee shifting regimes, in other words, are used to influence litigation conduct.  Thus, if Congress is going to alter the fee shifting landscape for patent litigation, it must make careful choices in order to incentivize certain types of patent disputes, while simultaneously discouraging others.

This Article does not advocate for a new fee shifting regime for patent litigation, nor does it endeavor to design one.  Instead, it focuses on one narrow but important question about fee shifting in patent cases that has received surprisingly little attention:  whether prevailing parties should be able to recover attorney’s fees incurred for litigation before the Patent Trial and Appeal Board (PTAB)—the administrative tribunal of the U.S. Patent & Trademark Office that was created by the America Invents Act (AIA).  With the steep rise in both PTAB proceedings (post-AIA) and fee motions (post-Octane/‌Highmark), district courts are bound to face this question more frequently.  While the U.S. Court of Appeals for the Federal Circuit has allowed for the recovery of such fees in the past, the Federal Circuit’s analysis was flawed in light of Supreme Court precedent.  Thus, this Article proposes that Congress enact legislation allowing parties who prevail at the PTAB to recover their attorney’s fees.

A Nonobvious Comparison: Nonobviousness Decisions at the PTAB and in the Federal Courts

Citation: 24 Tex. Intell. Prop. L. J. 403 (2016)

Author: Gregory N. Mandel

About: Interim Dean and Peter J. Liacouras Professor of Law, Temple University—Beasley School of Law.