TIPLJ: Volume 3

Issue 1 – Fall 1994


Antitrust Counterclaims in Patent and Copyright Infringement Cases

Citation: 3 Tex. Intell. Prop. L.J. 1 (1994)

Author: Mark A. Lemley

About: Assistant Professor, The University of Texas School of Law. Of counsel, Arnold, White & Durkee. J.D., Boalt Hall School of Law, University of California at Berkeley. A.B., Stanford University.

Abstract: Antitrust counterclaims are a significant part of intellectual property litigation. Many, perhaps most, patent infringement suits involve counterclaims by defendants alleging that the patentee has violated the antitrust laws, either by fraudulently obtaining and enforcing the patent, or by bringing the infringement action for anticompetitive purposes. The legal rules governing antitrust counterclaims in intellectual property litigation were changed dramatically by the Supreme Court’s 1993 decision in Professional Real Estate Investors v. Columbia Pictures. This Article summarizes the new rule established by PREI, and addresses some of the unresolved issues with which lower courts have been grappling since this decision.

The Supreme Court’s recent decision in PREI has placed significant limits on the ability of defendants in infringement cases to successfully assert antitrust counterclaims. In spite of attempts by some courts to limit the scope of the decision, PREI establishes an almost insurmountable hurdle for infringement defendants asserting a wide range of counterclaims. While the precise contours of this new rule are still being drawn, I expect that the result will be to favor large intellectual property owners—the ones most likely to be sued for monopolizing a market—at the expense of generally smaller infringement defendants.


Tamale Sales and Carburetor Tune-ups: The Implications For Computer Software Developers and Owners—A Trade Dress Analysis

Citation: 3 Tex. Intell. Prop. L.J. 9 (1994)

Author: H. Dale Langley, Jr.

About: Johnson & Wortley, P.C., Austin, Texas. The author is co-counsel, together with Thomas L. Cantrell and Roger L. Maxwell of the same firm, in a case styled Engineering Dynamics, Inc. v. Structural Software, Inc. The case involves computer software issues, including trade dress infringement. Engineering Dynamics, Inc., the plaintiff represented by the author, prevailed on certain copyright claims in the U.S. District Court, Eastern District of Louisiana. The district court decision, found at 785 F. Supp. 576 (E.D. La. 1991), was then appealed by Engineering Dynamics, Inc. to the U.S. Court of Appeals for the Fifth Circuit on certain computer software copyright and trade dress issues. The Court of Appeals rendered its decision in the case on July 13, 1994. The opinion of the Court of Appeals is found at 26 F.3d 1335 (5th Cir. 1994). The views expressed herein are solely the author’s and are not necessarily those of the author’s firm or his co-counsel.

Abstract: A strange title? Strange indeed! What could such seemingly diverse matters as tamales and carburetors imply for computer software? Amazing as it may seem, there may be implications. Tamale sales and carburetor tune-ups were just some of the subjects reviewed in recent court decisions involving the legal doctrine of trade dress. The decisions indicate that the applicability of the trade dress legal doctrine is widespread and includes the computer software trade.


Intellectual Property Mediations: Special Techniques For a Special Field

Citation: 3 Tex. Intell. Prop. L.J. 23 (1994)

Author: Margaret E. Anderson

About: Browning, Bushman, Anderson & Brookhart, Houston, Texas.

Abstract: Statistics indicate that mediation itself is a powerful process; approximately 60% of all cases that go into mediation do settle, i.e., without regard to the skill of the mediator. I know of no studies or statistics breaking out intellectual property mediations, but my personal guess is that the success rate is probably a bit lower. I have found, however, that my own personal success rate has improved since I have tried different techniques, not typical of many attorney mediator styles.

This paper is not about “the” way to do IP mediations; it is about flexibility and making educated choices. Many attorneys (and even mediators) are not fully aware of the wide range of styles and techniques possible. I believe that the success rate of intellectual property mediations could be increased far beyond the 60% average if both counsel and mediators in the field expand their repertoire.


Recent Developments in Patent Law: Mathematical Algorithm Patentability—A Major Area of Activity

Citation: 3 Tex. Intell. Prop. L.J. 33 (1994)

Author: William L. Martin, Jr.

About: Intellectual Property Counsel, Dell Computer Corp., Austin, TX; M.S., University of Texas at Dallas, 1980; J.D., The University of Texas School of Law, 1975.

Abstract: Many practitioners believe that the Patent and Trademark Office (PTO) has been ignoring the Arrhythmia case. This term, an en banc panel of the Court of Appeals for the Federal Circuit (Federal Circuit) has rejuvenated Arrhythmia, and has expanded upon it in significant ways. This summer’s opinions in Alappat, Warmerdam, and Lowry appear to have provided strong support for the patentability of standard computing machinery controlled by novel software to produce some sort of unique “data structure.”

Alappat was in part an outgrowth of In re Donaldson, decided last February. That was the case requiring the Patent Office to apply paragraph six of 35 U.S.C. § 112, to patentability determinations.

Among other significant developments is the opinion in Amsted declaring inadequate for actual notice a letter that purported to notify the entire industry of a patent. In the Amsted case, barring proper marking, the defendant’s knowledge of the patent or of its infringement was declared irrelevant in the absence of a letter specifically charging infringement and specifying an infringing device.

While Alappat and Amsted probably contain the most surprising developments over the summer, there were also interesting opinions relating to claim interpretation, inventorship, public use, obviousness, equivalents, and attorney misconduct.


Recent Developments in Trademark Law

Citation: 3 Tex. Intell. Prop. L.J. 47 (1994)

Author: William G. Barber

About: Arnold, White & Durkee, Austin, Texas.

Abstract: This Article reviews a selection of trademark and unfair competition decisions reported in the United States Patents Quarterly Second Series, Vol. 29, No. 7 (Feb. 14, 1994) through Vol. 31, No. 9 (Aug. 29, 1994).


Selected Recent Developments In Copyright Law

Citation: 3 Tex. Intell. Prop. L.J. 57 (1994)

Author: Jeff A. McDaniel

About: Conley, Rose & Tayon, P.C. Mr. McDaniel is a shareholder of the firm resident in its Austin office. He gratefully acknowledges the contributions to this Article made by Shannon T. Vale of the law firm of Arnold, White & Durkee, his friend and colleague.

Abstract: The last few months have seen two landmark Supreme Court copyright decisions and a number of interesting decisions in the lower courts. In the first Supreme Court decision, handed down in March, the Supreme Court resolved a conflict among the circuits in ruling that for purposes of awarding costs (including a reasonable attorney’s fee) under Section 505 of the Copyright Act in infringement actions, prevailing plaintiffs and prevailing defendants are to be treated evenly. In the second Supreme Court decision, decided in June, the Supreme Court gave us additional insight into the fair use calculus in holding that 2 Live Crew’s parody of the lyrics from Roy Orbison’s song “Oh Pretty Woman” was a fair use.


Reported below by topic are selected copyright decisions reported in Volumes 29 through 31 of the United States Patents Quarterly.


Issue 2 – Winter 1995


Process and Review of State Trademark Applications with the Office of the Secretary of State of Texas

Citation: 3 Tex. Intell. Prop. L.J. 67 (1995)

Author: Elizabeth B. Yahiel

About: Elizabeth B. Yahiel is a corporate and trademark attorney with the Corporations Section of the Statutory Filings Division of the Office of the Secretary of State of Texas. The opinions expressed in this Article are only the current views of the author, and are not necessarily those of the Office of the Secretary of State.

Abstract: This author has been asked frequently by both patent and trademark attorneys about the purpose of filing state trademark applications. Alternatively, these attorneys have questions regarding specific state procedures. The twofold purpose of this Article is to respond to these inquiries and to inform members of the Intellectual Property Law Section and the State Bar at large about the application and review process for state trademark and service mark applications. Where relevant, I will discuss the relationship between state and federal trademark application procedures and how state practice compares to some recommended provisions of the Model State Trademark Bill (“MSTB”). I will also review briefly the purpose and benefits of filing state trademark applications.


An American Practitioner’s Guide to the Developing System of Trademark Law Within the European Union

Citation: 3 Tex. Intell. Prop. L.J. 85 (1995)

Author: Shilpa Mehta & Leslie Steele Smith

About: J.D. candidates, St. Mary’s School of Law, May 1995.

Abstract: Practitioners in the United States must begin to familiarize themselves with the new European system now. Although the Regulation was passed in 1993, it will take some time before the Community will have a functioning system of trademark protection. Plans are to begin taking applications for CTMs in mid-1995. More detailed administrative guidelines, referred to as the “Implementing Regulation” within the text of the Regulation, must still be passed to set up the operation of the office responsible for the Community trademark system (the “CTM Office”). Until the Implementing Regulation is available for review, there is no detailed information available on the exact procedures and policies of the CTM Office. Hence, U.S. businesses must prepare to register their trademarks with the CTM Office, and U.S. practitioners must become aware of the procedures for obtaining a CTM.


Selected Recent Developments In Copyright

Citation: 3 Tex. Intell. Prop. L.J. 107 (1995)

Author: Arthur I. Navarro

About: Mr. Navarro is an associate with the Dallas law firm of Warren & Perez, which specializes in intellectual property law.

Abstract: Engineering Dynamics, Inc. and Apple Computer, Inc. are summarized in this Article. In Engineering Dynamics, Inc., the court of appeals endorsed the “abstraction-filtration-comparison” method of determining copyright violation. The appeals court in Apple Computer, Inc. held that Apple was entitled only to thin copyright protection on its graphical user interface (GUI). This holding turned on the fact that Apple had a previous license agreement with the defendants. This Article also summarized cases dealing with the copyright fair use exception in the context of photocopying, the effect of failing to provide copyright notice to copyrighted works, errors in copyright registration, and the statute of limitations involving the so-called “continuing tort” theory.

This Article also summarized two of the recent statutory developments in the area of copyrights. First, the Copyright Office issued new rules relating to the restoration of copyright for certain Mexican and Canadian works. Second, Congress recently passed a bill amending portions of the Copyright Act which affect the way satellite carriers obtain compulsory licenses.


Recent Developments In Patent Law

Citation: 3 Tex. Intell. Prop. L.J. 115 (1995)

Author: Alan H. Gordon & Jon R. Trembath

About: Mr. Gordon and Trembath are, respectively, Shareholder and Associate at Fish & Richardson, Houston, Texas.

Abstract: The enactment of the GATT implementing legislation is the recent development of greatest impact on the United States patent law. The legislation changes the length of a patent’s term, creates provisional applications, changes the definition of infringing activity, and modifies the definition of inventive activity.

The United States Court of Appeals for the Federal Circuit has also been active, issuing recent opinions on claim construction, the evidentiary value of post bar date documents when considering novelty, personal jurisdiction, best mode, willful infringement, and conception of an invention.

The implementation of GATT/TRIP overshadows other recent developments in United States patent law. The effect of the GATT/TRIP implementing legislation will surely be debated and litigated for years to come.


Recent Developments In Trademark Law

Citation: 3 Tex. Intell. Prop. L.J. 125 (1995)

Author: Bruce W. Slayden II

About: Bardehle, Pagenberg, Dost, Altenburg, Frohwitter, Geissler & Partners, Houston, Texas.

Abstract: This review covers selected noteworthy decisions of the Federal courts and the Trademark Trial and Appeal Board as reported in U.S.P.Q.2d, Vol. 31, No. 10 (September 12, 1994) through Vol. 32, No. 9 (November 28, 1994). This review also reports the recent granting of certiorari by the United States Supreme Court in Qualitex v. Jacobson. In addition, this review explains recent developments in the trademark law of other countries focusing on new legislation and briefly updating the status of trademark law in Russia and in the other successor states to the former Soviet Union.


Issue 3 – Spring 1995


Covenants Not To Compete in Texas: Shifting Sands from Hill to Light

Citation: 3 Tex. Intell. Prop. L.J. 143 (1995)

Author: Jeffrey W. Tayon

About: Conley Rose, & Tayon, Houston, Texas.

Abstract: Obviously, covenants not to compete in at-will employment agreements are to receive strict scrutiny. In the last seven years, the Texas Supreme Court has not enforced a covenant not to compete. How at-will employment agreements must be drafted to enforce a covenant not to compete is still an open question.


Metamorphosis in the United States Patent and Trademark Office

Citation: 3 Tex. Intell. Prop. L.J. 249 (1995)

Author: Al Harrison

About: Harrison & Egbert, Houston, TX

Abstract: Patent prosecution may be perceived as an arcane adventure through the well-defined labyrinths of the patent statutes according to the rules and regulations promulgated by Congress and by the United States Patent and Trademark Office (PTO). Thus, the general mission of the patent attorney is to seek patent protection in the PTO for an inventive concept by advocating its merits and concomitant significance in the marketplace, and to secure a grant of the claims on behalf of a patentee. However, patent prosecution practice is not always characterized by routine movement along a straight line defined by PTO actions and responses thereto with the goal of ultimately achieving the patent grant.

Occasionally a challenge arises during prosecution which presents an opportunity for the adventurous patent attorney to explore beyond the regions defined by the intersection of these rules and regulations. Such challenges may arise under circumstances in which the rules and regulations are not well defined, or may arise under circumstances not contemplated by these rules and regulations. Two unusual patent prosecution scenarios will be described which involve either liberal construction or morphing of these rules and regulations to essentially metamorphose pending patent applications into applications congruous with particular commercial objectives.


Federal Objective or Common Law Champerty?—Ethical Issues Regarding Lawyers Acquiring an Interest in a Patent

Citation: 3 Tex. Intell. Prop. L.J. 255 (1995)

Author: David S. D’Ascenzo

About: J.D. Candidate, The University of Texas School of Law 1996.

Abstract: Undeniably, the goal of the U.S. patent system is to foster, reward and promote invention. Unfortunately, this goal is hindered by the sometimes prohibitive cost of actually obtaining a patent. Today it is not unheard of for the prosecution of a standard mechanical patent application to exceed $10,000. Furthermore, litigating a relatively-simple claim can be expected to exceed $250,000. The party most affected by this financial hurdle is the lone inventor. Forced to incur significant fees to even determine whether his invention is patentable, this party may decide to simply forego developing his new discovery.

As the following analysis will demonstrate, it is possible to delineate some specific actions which are controlled by a particular set of rules. In such areas, strong policy reasons will justify allowing a particular set of ethical rules to control. With other activities, however, no bright-lines have been drawn. While this analysis will present arguments for and against allowing a given set of rules to apply, Texas PTO-registered attorneys should be cautious when performing work in these areas.


Recent Developments in Copyright Law

Citation: 3 Tex. Intell. Prop. L.J. 273 (1995)

Author: Gordon T. Arnold

About: Bardehle, Pagenberg, Dost, Altenburg, Frohwitter, Geissler & Partners, Houston, Texas.

Abstract: This recent developments paper discusses copyright cases reported in Volume 33 of the United States Patents Quarterly Second Series. Topics addressed include the following: cancellations of registra­tions, originali­ty of compilations, idea-expression dichotomy in compilation cases, loss of a copyright due to government use of a work, joint ownership, the Visual Artists Rights Act, copyright preemption, the copyright statute of limitations, and statutory damages.

In recent copyright cases, courts of the various circuits have addressed issues involving compilations, the government use defense to infringement, the power of a district court to cancel a federal copyright registration, joint authorship requirements, and the Visual Artists Rights Act. Other recently addressed issues include the preemption of state law by the federal Copyright Act, statute of limitations issues, and the discretion of a district court to award statutory damages. Although not always in agreement, the various circuits all strive to preserve the policy goals of the Copyright Act.


Recent Developments In Patent Law

Citation: 3 Tex. Intell. Prop. L.J. 285 (1995)

Author: Gale R. Peterson

About: Cox & Smith, San Antonio, TX

Abstract: This Article will discuss the Supreme Court’s decision in Asgrow Seed Co. v. Winterboer, dealing with the Plant Variety Protection Act, and a potpourri of Federal Circuit decisions. For example, in Ferag AG v. Quipp Inc., the court discusses when sales between “related” companies can raise the “on sale” bar. Glaverbel Société Anonyme and Fosbel, Inc. v. Northlake Marketing & Supply, Inc. involves a scenario where no anticipation was found when the claims literally “read on” a prior art process, but the prior art process was “different.” Additional topics addressed in other cases include: repair vs. reconstruction; non-statutory subject matter; jury questions in cases involving charges of inequitable conduct; standing of a third-party defendant in a Section 1498 action to maintain an appeal after the government withdraws its appeal; and the Seventh Amendment right to trial by jury of a patent owner in a declaratory judgment action for invalidity after the infringement action has been dismissed.


Recent Developments in Trademark Law

Citation: 3 Tex. Intell. Prop. L.J. 303 (1995)

Author: Jeffrey W. Tayon & Marcella D. Watkins

About: Mr. Tayon is a member of the Houston firm of Conley, Rose & Tayon. He is a former patent examiner in the medical arts and a former law clerk and technical advisor to Judge Jack Miller who is a former Senior Judge at the U.S. Court of Appeals for the Federal Circuit. Ms. Watkins is a member of the Houston firm of Conley, Rose & Tayon. She received a Bachelor of Science degree in Chemical Engineering from Rice University in 1985 and a J.D. degree from the University of Texas Law School in 1991.

Abstract: This review covers selected noteworthy decisions of U.S. courts and the Trademark Trial and Appeal Board as reported in U.S.P.Q.2d, Vol. 32, No. 10 (December 5, 1994) through Vol. 33, No. 7 (February 13, 1995). This review also reports on the effects of the GATT implementing legislation in the United States.


Changes in U.S. Patent Law Effected by the Uruguay Round Agreements Act—The GATT Implementation Legislation

Citation: 3 Tex. Intell. Prop. L.J. 315 (1995)

Author: Karen Tripp & Linda Stokley

About: Ms. Tripp and Ms. Stokley are, respectively, shareholder and associate with Arnold, White and Durkee.

Abstract: The TRIPs provisions of the WTO/GATT implementation legislation make sweeping and significant changes to current intellectual property law, particularly for patents. A complete understanding of these changes is recommended in order to develop and implement strategies to fully protect intellectual property rights of inventors and their assignees and licensees.

This Article provides a general overview of the changes to the United States patent laws that have resulted from the passage of the Uruguay Round Agreements Act. Appendix A sets out the actual provisions of Title 35 of the United States Code (the “Patent Act”) that have been changed. Some of the amendments to the Patent Act implemented by the Uruguay Round Agreements Act are effective as early as June 8, 1995. The remaining amendments will be effective on January 1, 1996, one year after the date that the World Trade Organization (WTO) Agreement enters into force in the United States. The changes will apply to utility and plant patents, but do not apply to design patents.