Issue 1: Fall 2022
Convergence Without Predictability: Personal Jurisdiction Dilemma for Online Foreign Trademark Infringement in the EU and the US
Citation: 31 Tex. Intell. Prop. L.J. 1 (2022)
Author: Gizem Demirel
About: Gizem Demirel. LL.M, University of California, Berkeley; J.D., Willamette University, College of Law; Master of Law, Bahcesehir University; B.A. in Law, Marmara University. Member of the Istanbul Bar Association and Oregon State Bar. I deeply appreciate the mentorship and insightful comments I received from Prof. Symeon Symeonides and Prof. Rachel Stern. I am grateful to all the participants of the Advanced Interdisciplinary Workshop on Law. All errors are my own.
Online trademark infringement is ubiquitous anywhere in the world nowadays. The courts have been trying to find the best answer when deciding on personal jurisdiction questions against foreign defendants. Comparing both the U.S. and the E.U., this paper investigates whether current tools are effective in reaching consistent results without creating legal ambiguity. This paper shows that both the U.S. and the E.U. move toward the same analysis and terminology to resolve the personal jurisdiction problem for online foreign trademark infringement. The study argues that current solutions in both jurisdictions fail uniformly to satisfy the fairness and predictability of the laws and cause inconsistent interpretations. Therefore, this paper suggests alternative solutions unique to online trademark infringement is necessary.
§ 101 Patent Eligibility: Advocation of the Supreme Court Proffering a Bright-Line Rule
Citation: 31 Tex. Intell. Prop. L.J. 37 (2022)
Author: Jason Sanders & Paul Fina
About: Jason Sanders graduated from DePaul University College of Law in 2021. Jason is a trial attorney in downtown Chicago, Illinois. He specializes in personal injuries including motor vehicle accidents, trucking accidents, premises liability, construction negligence, dog bite, and medical and legal malpractice. Please feel free to contact Jason with any questions or comments at email email@example.com. Paul Fina graduated from the DePaul University College of Law in 2021 and is registered to practice before the United States Patent and Trademark Office (Reg. No. 79,133). Paul is an associate attorney at Greer, Burns, and Crain where he focuses on patent litigation and patent prosecution in a variety of technical fields.
The governing statute for patent subject matter eligibility, 35 U.S.C. § 101, is relatively short (only containing 36 words), yet the uncertainty surrounding what exactly constitutes eligible subject matter persists. The analysis for determining whether an invention truly is § 101 subject matter eligible grows increasingly convoluted, especially with technological advancements. The United States Patent and Trademark Office (USPTO) offered cogent and substantive guidance directed toward patent examiners to help clarify the eligibility analysis.
With a specific focus on a post-Alice/Mayo analysis, this article advocates for the Supreme Court proffering a bright-line rule, via precedential language, governing § 101 patent subject matter eligibility via the integration of the USPTO’s eligibility guidelines. Section II of this article initially tracks the historical perspective of a patent and outlines the inherent capabilities of utilizing a patent. Next, the section shifts its analytical focus to the two seminal cases governing § 101 patent subject matter eligibility, Mayo and Alice, while including a full case analysis of each. Finally, the section concludes with several analyses of cases post-Alice/Mayo and their implications on the § 101 analysis. Section III of this article outlines the USPTO’s § 101 guidelines, including real-world graphics utilized by patent examiners in order to determine subject matter eligibility. The section transitions to a detailed description of the various § 101 amendments and concludes with a specific advocation for the Supreme Court to proffer a bright-line rule that shall govern the § 101 analysis and determination. Section IV of this article attempts to chronicle the specific impacts, or rather detriments, of adopting the various legislative amendments to the § 101 analysis. The last portion of Section IV recites the specific language that the Supreme Court should proffer and then conducts an impact analysis on the aforementioned language.
Preliminary Injunctive Relief in Patent Cases: Repairing Irreparable Harm
Citation: 31 Tex. Intell. Prop. L.J. 63 (2022)
Author: John C. Jarosz, Jorge L. Contreras, and Robert L. Vigil
About: John C. Jarosz, B.A., J.D., M.A. (Economics) is a Managing Principal at Analysis Group, Inc. Jorge L. Contreras, B.S.E.E,, B.A., J.D. is the James T. Jensen Endowed Professor for Transactional Law and Director of the Program on Intellectual Property and Technology Law at the University of Utah S.J. Quinney College of Law. Robert L. Vigil, B.A., PhD. (Economics) is a Principal at Analysis Group, Inc. We would like to thank Douglas Frank for helping start this project and framing the analysis, Jack Taurman, Tom Cotter, and Mark Lemley for countless insights and pushback, Evie Goryshina, Ivan Maryanchyk, Joey Duong, and Emily Tevebaugh for extraordinary insights and assistance, and participants at the 2021 and 2022 IP Scholars Conference for helpful comments and feedback on earlier versions of this article. The views expressed here are those of the authors. We are solely responsible for any errors or oversights.
Unlike a permanent injunction, which is an equitable remedy awarded to an injured party, a preliminary injunction is a form of interlocutory relief that is imposed by a court to preserve the status quo during litigation. In patent cases decided since (and often before) the Supreme Court’s 2006 decision in eBay v. MercExchange, courts have applied a four-factor test when considering the issuance of a permanent injunction. A similar test has evolved for preliminary injunctions, following the Court’s decision in Winter v. NRDC. Both the eBay and Winter tests rely heavily on whether the patentee is likely to suffer “irreparable” harm if an injunction is not granted. Yet despite the very different statutory bases and underlying reasoning for preliminary versus permanent injunctions, almost no scholarly attention or judicial reasoning has been devoted to an analysis of the meaning of irreparable harm in the context of preliminary injunctions. In order to gain a better understanding of the information that courts consider when deciding motions for preliminary injunctions, we collected data from 211 published district court opinions in patent cases decided between 2013 and 2020 in which a preliminary injunction was sought. Based on our research, as well as recent opinions of the Federal Circuit, we find that much of the uncertainty and lack of clarity surrounding preliminary injunctive relief can be reduced, or eliminated, by explicit recognition that irreparable harm has (or should have) a certain meaning, and that meaning is not the same as harm. We propose a new four-factor test for irreparable harm when assessing the issuance of preliminary injunctions in patent cases. That test provides that to be considered irreparable, harm should be that which, in the absence of an injunction, 1) would unduly disrupt the status quo, 2) is imminent and likely to occur, 3) is causally linked to the alleged infringement, and 4) is unlikely to result in payment of adequate compensation. We believe that the application of this new test will make the preliminary injunction analysis more certain, economically sensible, and better fitted to achieve its stated statutory goals.
Issue 2: Spring 2023
A Tale of Seven Districts: Reviewing the Past, Present and Future of Patent Litigation Filings to Form a Two-Step Burden-Shifting Framework For 28 U.S.C. § 1404(a)
Citation: 31 Tex. Intell. Prop. L.J. 131 (2023)
Author: Timothy T. Hsieh
About: Assistant Professor of Law, Oklahoma City University School of Law. This work is dedicated to Professor Dmitry Karshtedt (1977-2022) for his infinitely wise and generous mentorship as well as guidance in writing a draft of this paper initially for his “Advanced Topics in Patent Litigation” seminar course at George Washington University Law School. Very special thanks to the extraordi- nary work provided by my Research Assistant at Oklahoma City University School of Law, Michael J. Turner, in compiling detailed statistics on the mandamus orders discussed herein as well as syn- thesizing keen observations on various complex aspects of patent venue law. Special thanks also to James Choi at the U.S. Patent Trademark Office and the current Editor-in-Chief of the Journal of the Patent and Trademark Office Society for providing the exceptional map graphics showing the evolution of patent litigation filing activity over time generated by a software application of his own ingenious design. Sincere thanks also to Professor Kali Murray, Professor Nadelle Grossman, and Professor Bruce Boyden at Marquette University School of Law as well as Professor Charles Duan for providing their invaluable feedback on a later draft of this paper at the 2022 Marquette Law Junior Faculty Works-in-Progress Conference; Professor Xiyin Tang, Professor Tejas Narechania, Professor Tabrez Ebrahim and Professor Jacob Noti-Victor for giving exceptional guidance during the 2023 Junior Intellectual Property Scholars Association Winter Workshop at UCLA School of Law and generously hosted by the UCLA Institute for Technology, Law and Policy; Professor Mark Lemley, Professor Shubha Ghosh and Professor Saurabh Vishnubhakat for their extremely insightful feedback on drafts of this piece; and finally Professor Jeremy Telman, Professor Carla Spivack and Professor Maria Kolar at Oklahoma City University School of Law for their very helpful comments and support that shaped this paper into the form you are reading today.
Current patent venue transfer laws under 28 U.S.C. § 1404(a), e.g., the Gilbert factors from Gulf Oil Corp. v. Gilbert, 330 U.S. 501 (1947), are too malleable in that they often lead to frequent mandamus orders from the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) overturning district court rulings on venue transfer motions. Thus, this paper proposes a more robust two-step burden-shifting framework that replaces the eight Gilbert factors. Moreover, a brief history of venue transfer patterns in the seven most active federal patent district courts is covered, with a special focus devoted to the venue transfer orders from Judge Alan D. Albright of the U.S. District Court for the Western District of Texas. A comprehensive data summary of forty-five case sets where the Federal Circuit ruled on writs of mandamus involving Judge Albright’s transfer orders is subsequently provided, with coverage summaries of certain cases, including four precedential ones from the Federal Circuit. This proposed two-step burden-shifting framework is then applied to these venue transfer cases, as well as Federal Circuit mandamus orders ruling on those decisions. Finally, alternative approaches to remedying the frequent reversals of venue transfer decisions will be discussed, including potential legislative solutions, adjustments to common law approaches to venue transfer, deference to the inherent powers of an Article III U.S. District Judge, and a unified federal patent district court. Overall, this paper seeks to offer a more robust and consistent two-step burden-shifting framework for venue transfer and for the Federal Circuit to follow in administering mandamus orders, which might change somewhat in light of Western District of Texas Chief Judge Orlando Garcia’s order on redistributing Judge Albright’s patent cases.
Debugging the Trademark Laws: The Lanham Act and Counterfeit Microelectronics
Citation: 31 Tex. Intell. Prop. L.J. 211 (2023)
Author: Patricia E. Campbell, J.D., LL.M.
About: Patricia Campbell is a Law School Professor and Director of the Intellectual Property Law Program at the University of Maryland Carey School of Law. Professor Campbell extends sincere thanks to Dr. Michael Azarian (Center for Advanced Life Cycle Engineering, University of Maryland, College Park) and to Associate Dean Deborah Eisenberg and Professors Rena Steinzor and Paula Monopoli for reading drafts and providing encouragement and support throughout the preparation of this article.
Counterfeit microelectronics have been a persistent threat for the last twenty years. Counterfeit electronic parts pose serious risks to human health and safety, harm the economy, and jeopardize national security. The Lanham Act provides potent civil remedies for trademark counterfeiting, including injunctive relief, treble or statutory damages, and an ex parte seizure mechanism to preserve evidence. However, an empirical analysis of trademark filings from 2009 through 2022 reveals that manufacturers of electronic parts almost never pursue civil actions against counterfeiters. The lack of enforcement may be due in part to misunderstandings about the scope of coverage; some industry members feel the Lanham Act does not apply to the sale of used or altered items bearing a genuine trademark. The “material alteration theory” does encompass these activities and holds that the sale of used, refurbished, and remarked goods bearing a genuine mark is nevertheless infringing if the altered state of the product is not disclosed to the purchaser. As a result, the lack of civil enforcement must be attributed to other factors such as the high costs of filing suit, concerns about damage to brands and impact on stock value, lack of necessary evidence, and inability to reach anonymous counterfeiters (often in other countries) who sell fake products through online marketplaces. The article concludes that, to incentivize microelectronics manufacturers to bring trademark actions against counterfeiters, Congress must amend the Lanham Act to recognize contributory trademark liability by intermediaries, including e-commerce platforms and others, that facilitate infringement when they have constructive knowledge that infringing activities are taking place on their sites.
The Explosive Expansion of Discretionary Denials by the PTAB and the Resulting Casualties
Citation: 31 Tex. Intell. Prop. L.J. 273 (2023)
Author: Katlyn Stockslager
About: Katlyn Stockslager is a J.D. Candidate at the University of Texas School of Law, expected to graduate in May 2024.
Discretionary denials are a relatively new use of the Patent Trademark and Appeals Board’s (PTAB) authority over the post-grant proceedings that sprung from the Leahy-Smith American Invents Act (AIA) of 2011. In short, a discretionary denial allows the PTAB to deny an institution of a post-grant proceeding petition based on factors that range from the petition’s merits to parallel proceedings in district court or in front of the International Trade Commission (ITC). In their short life-span, some discretionary denials have been a highly contested use of the PTAB’s administrative authority, specifically the factors detailed in Apple Inc. v. Fintiv Inc. that are used to deny inter partes review (IPR) petitions based on parallel proceedings. On October 20, 2020, the United States Patent and Trademark Office (USPTO) issued a request for comments that invited the public to give feedback on the PTAB’s current exercise of discretion under the Fintiv factors and on potential new rules regarding discretionary denials. They received 822 responses. As a result of these comments and public pressure, on June 21, 2022, the Director of the USPTO, Katherine Vidal, issued a memorandum detailing interim procedures for discretionary denials in post- grant proceedings in front of the PTAB. This memorandum will remain in effect while the USPTO works on creating formal rules. This memorandum offers new instruction for the PTAB to apply the Fintiv factors and notes three specific instances where the PTAB will no longer deny the institution of a post-grant proceeding based on parallel actions.
These new instructions, while providing clarity, do not rise to the level necessary to fully protect the original interest of the AIA and the institution of post-grant proceedings. The current landscape of discretionary denials is broad, having slowly ballooned beyond the original statutory language of the AIA. Further, the Board’s denial of petitions based on parallel proceedings using the factors listed in Fintiv, which will be the centerpiece of this paper, has become the zenith of the Board’s broad reach. These factors demonstrate use of discretionary power that is both unsanctioned by the AIA and proven to lead to inconsistent institution decisions. To ensure consistent and predictable results for both petitioners for post-grant proceedings and patent owners, the most effective course would be for Congress to step in and either scrap the Fintiv factors altogether or, more realistically, constrict their possible interpretations and considerations.
The Federal Circuit Enriched Patent Owners Without Eliciting Better Inventions
Citation: 31 Tex. Intell. Prop. L.J. 295 (2022)
Author: Yun Hou, I.P.L. Png, and Xi Xiong
About: Hou: Hong Kong University of Science & Technology (Guangzhou), firstname.lastname@example.org; Png: National University of Singapore, email@example.com; Xiong: LinkedIn, firstname.lastname@example.org.
How do changes in patent law affect the exchange by which society awards an exclusive right of limited duration and the inventor discloses technology that others may freely use after the period of exclusivity? Between 1983-1985, the U.S. Court of Appeals for the Federal Circuit shifted the law in favor of patent owners, to degrees varying geographically by judicial circuit. We find that the Federal Circuit was associated with an increase in the commercial value of patents by 11.7 percent, but no significant increase in the technological quality of the patented inventions followed. Apparently, the value of the patent monopoly increased substantially without a commensurate increase in inventors’ contributions of knowledge to society.
Update (Nov. 1, 2023): The authors have included the code and data needed to replicate the study. The data can be found at this link: Replication Data for Hou, Yun, Ivan PL Png, and Xi Xiong, “The Federal Circuit Enriched Patent Owners Without Eliciting Better Inventions.”