TIPLJ: Volume 7

Issue 1 – Fall 1998


Advanced Copyright Issues on the Internet

Citation: 7 Tex. Intell. Prop. L.J. 1 (1998)

Author: David L. Hayes

About: Chairman of Intellectual Property Practice Group, Fenwick & West LLP, Palo Alto, California. B.S.E.E. (Summa Cum Laude), Rice University (1978); M.S.E.E., Stanford University (1980); J.D. (Cum Laude), Harvard Law School (1984).

Abstract: Copyright law will provide one of the most important forms of intellectual property protection on the Internet for at least two reasons. First, much of the material that will move in commerce on the Internet will be works of authorship, such as musical works, multimedia works, audiovisual works, movies, software, database information, and the like, which are within the usual subject matter of copyright. Second, because the very nature of an electronic online medium requires that data be copied as it is transmitted through the various nodes of the network, copyright rights are obviously at issue.


Post-Expiration Patent Injunctions

Citation: 7 Tex. Intell. Prop. L.J. 105 (1998)

Author: Christopher A. Cotropia

About: J.D. candidate, The University of Texas School of Law, May 1999.

Abstract: Expiration of the patent may preclude one of the commonly requested forms of relief in a patent case, i.e. an injunction. The right to exclude is fundamental to remedy most property right violations, including patent infringements. The injunction and its ability to exclude is the most important remedy from the patentee’s point of view. Even after the patent’s expiration, an infringer may possess infringing articles that were made during the patent’s lifetime, or articles made from an infringing machine or process that were made during the patent’s lifetime. The infringer may be poised to flood the market with such goods upon expiration, having gained manufacturing knowledge, commercial contacts, and amassed inventory. During the patent’s term, the patent holder can obtain an injunction that “prevent[s] the violation of any right secured by patent.”

Injunctions after a patent’s expiration pose two questions that must be answered appropriately for an injunction to issue: (1) Does a post-expiration injunction improperly extend the statutory life of the patent? and (2) is an injunction, rather than monetary relief, the appropriate remedy in post-expiration cases?

Arguing for a post-expiration injunction or for accelerated reentry damages would add another remedy to a patent holder’s arsenal when litigating an expired patent and may aid in settlement negotiations. A post-expiration injunction provides an additional way to insure that the relief to a patent holder is adequate. “The consequences [of a post-expiration injunction] may be serious, but if [the infringers] had wished to avoid them they ought to have refrained from such manufactur[ing]” of infringing articles.


Recent Developments in Patent Law

Citation: 7 Tex. Intell. Prop. L.J. 125 (1998)

Author: J. Davis Gilmer & Pete Smits

About: The authors are attorneys at Akin, Gump, Strauss, Hauer & Feld, L.L.P., Austin, Texas.

Abstract: This Article summarizes recent significant and interesting developments in patent law. The Article covers the Supreme Court’s decision in Pfaff v. Wells Electronics, Inc.; court rulings touching on patent prosecution: obviousness, best mode, inventorship, inequitable conduct, statutory subject matter, written description, and experimental use with respect to design patents; court rulings touching on patent litigation: doctrine of equivalents, declaratory judgement, the Eleventh Amendment, personal jurisdiction, laches, preliminary injunctions, standard of proof for anticipation, assignor estoppel, and preemption of state causes of action; and concludes with In re Zurko.


Recent Developments in Copyright Law

Citation: 7 Tex. Intell. Prop. L.J. 153 (1998)

Author: Mark D. Perdue

About: Mark Perdue is an attorney with Felsman, Bradley, Gunter & Dillon, L.L.P.

Abstract: This Article summarizes significant and interesting cases in copyright law reported in the United States Patents Quarterly Second Series between March, 1998 and August, 1998. The most significant case is the Supreme Court’s decision affirming the right to trial by jury in a copyright infringement action when statutory damages are the only remedy sought. Also, a split among the circuits may be developing concerning congressional abrogation of sovereign immunity in the Patent, Trademark, and Copyright Acts. Finally, in a decision that received national press coverage, Martin Luther King’s I Have A Dream speech was held to be in the public domain for publication without notice.


Recent Developments in Trademark Law

Citation: 7 Tex. Intell. Prop. L.J. 179 (1998)

Author: Mark A. Thurmon

About: Arnold White & Durkee, Austin, Texas. Timothy Kenny and Michael Gannon, Arnold White & Durkee, Minneapolis, contributed to this Article.

Abstract: This Article contains a review of selected trademark decisions published during the second and third quarters of 1998. A few decisions from outside this time period are included to provide helpful background or context for issues raised in the recently published decisions.


Issue 2 – Winter 1999

Software Patents

Citation: 7 Tex. Intell. Prop. L.J. 225 (1999)

Author: Wesley L. Austin

About: B.S.E.E. summa cum laude, C.S. minor, Utah State University, 1993; Software Engineer, Motorola, Inc., 1993–95; J.D. University of Utah College of Law, 1998; Registered Patent Attorney with the Intellectual Property and Technology Law Group of Parsons Behle & Latimer, Salt Lake City, Utah. This Article represents the opinions of the author and does not necessarily represent those of his firm or any of its clients.

Abstract: Many years passed, and a number of conflicting court decisions were reached, before the courts concluded that software is indeed patentable subject matter. Some commentators adhere to the position that software should not be patentable. Many of those against patenting software believe that the software industry will suffer because programmers will be unable to write software without infringing an existing software patent covering the programmer’s design. These concerns are not new to the patent system; but they are relatively new to the software industry, and the popularity of software patents has increased dramatically. Proponents of software patents believe that innovations in computer-implemented technologies should receive the same level of protection available to innovations in other technologies. These advocates believe that requirements for novelty and non-obviousness to obtain a patent should address the concerns of those who think that software should not be patentable. Finally, a last group of commentators says that, while software should be protected, the existing system does not work well and should be changed. Regardless of all these different voices, software patents are here to stay.

Given that the argument about whether software should be patentable is currently resolved in favor of patentability, practitioners now struggle with writing, prosecuting, and enforcing software patents. Many articles published in the area of software patenting are mostly boring descriptions of insignificant cases with 300 pages of text before finally discussing the 1990s. In contrast, this Article was written with the goal of providing tips to the practitioner for drafting software patent applications.

The author of this Article assumes that readers are familiar with patent law, with computer programs, and with the different methodologies for their development. The scope of the Article is limited to protecting software through the patent laws, although software can also be protected through trade secret and copyright laws as well. In addition, the scope of the Article is limited to subject matter, enablement, and best mode issues. The Article does not address meeting the novelty and non-obviousness requirements for patentability.

Section II of this Article discusses the case law leading up to the conclusion that software is patentable subject matter under 35 U.S.C. Section 101, analyzing those cases to determine the most important practices to ensure that a patent application meets subject matter requirements. Section III reviews the Patent and Trademark Office’s Examination Guidelines for Computer-Related Inventions, and Section IV applies those guidelines and analyzes other recent literature to provide practical tips for writing patent claims for software inventions. Section V addresses writing the specification for a software patent application and suggests practices to ensure that the specification meets the requirements for enabling a person of ordinary skill in the art to practice the invention and for disclosing the best mode. Section VI presents the results of a case study of recently issued software patents, and Section VII concludes with a summary of the principles to follow when drafting software patent applications.


Recent Developments in Patent Law

Citation: 7 Tex. Intell. Prop. L.J. 305 (1999)

Author: David W. O’Brien & Mark Zagorin

About: The authors are affiliated with Zagorin, O’Brien & Graham, L.L.P., Austin, Texas.

Abstract: This Article covers patent cases reported in Volume 48 of the United States Patents Quarterly Second Series, beginning September 1998 and continuing through December 1998. Although not all cases are discussed, most Federal Circuit decisions through December are included, as are significant district court decisions and, of course, the Supreme Court’s decision in Pfaff v. Wells Electronics.


Recent Developments in Copyright Law

Citation: 7 Tex. Intell. Prop. L.J. 331 (1999)

Author: Neil Netanel

About: Professor, University of Texas School of Law; Of Counsel, Arnold, White & Durkee.

Abstract: This Article reviews selected copyright cases reported in the United States Patents Quarterly Second Series, Volume 48, covering the period of October through December 1998. This review begins, however, with a detailed discussion of new legislation, which far overshadowed case law developments during this period.


Recent Developments in Trademark Law

Citation: 7 Tex. Intell. Prop. L.J. 347 (1999)

Author: H. Melissa Mather

About: Arnold White & Durkee, Austin, Texas.

Abstract: This quarter the federal courts held that promotional materials for the film Midnight in the Garden of Good and Evil bore no overall similarity to the cover of the book of the same name, that even if children were confused, adults were entitled to have a good laugh at Barney getting beaten up by the Chicken, that the sex lives of celebrities are matters of “public concern,” and on a more serious note, that the Eleventh Amendment protects states from suits brought in federal court alleging violations of the Lanham Act. This Article will examine these decisions and others reported in the October 5, 1998, through December 21, 1998, advance sheets of the United States Patents Quarterly Second Series, divided by substantive areas of interest.

Decisions from this quarter have elaborated on the theoretical underpinnings of the functionality doctrine, provided many applications of the traditional likelihood of confusion analysis, and suggested new legal avenues for dealing with Internet infringement. Most prominently, however, the Chavez case from the Fifth Circuit may set the stage for future constitutional battles over the status of intellectual “property” within the meaning of the Fourteenth Amendment’s due process clause. What benefits these battles may provide remains far from clear, but constructive analyses of the theories involved will undoubtedly strengthen our overall approach to the protection of commercial names and marks.


Issue 3 – Spring 1999

Color Trademarks

Citation: 7 Tex. Intell. Prop. L.J. 387 (1999)

Author: James L. Vana

About: James L. Vana, Foley & Lardner, Milwaukee, Wisconsin; former examining attorney with the United States Trademark Office.

Abstract: It is clear, following the United States Supreme Court’s decision in Qualitex that a color, applied to a product or products, may serve as a trademark. The correct analysis in determining whether a proposed color mark in fact serves as an indication of source involves two steps. First, the de facto/de jure functionality analysis, reiterated most recently by the Court of Appeals for the Federal Circuit in Brunswick, must be applied. If the color is de jure functional, trademark protection will not be granted. If the color is not de jure functional, the second step requires the applicant to demonstrate distinctiveness.

It is less clear, following the Qualitex decision, whether a proposed mark, consisting of color which is not de jure functional, can ever be inherently distinctive. Resolution of this issue will be important to those attempting to protect color marks because without inherent distinctiveness, the owner must demonstrate that the proposed mark has acquired distinctiveness. As the Owens-Corning court noted, “[b]y their very nature color marks carry a very difficult burden in demonstrating distinctiveness and trademark character.” Where secondary meaning is required, either because a given party’s mark is found not to be inherently distinctive as a matter of fact, or because a given jurisdiction has found that color marks are never inherently distinctive as a matter of law, the applicant must make a substantial evidentiary showing, including direct and substantial evidence that consumers make the required goods-source connection.


Seller Beware: The Scope of the On Sale Bar after Pfaff v. Wells

Citation: 7 Tex. Intell. Prop. L.J. 403 (1999)

Author: Imron T. Aly

About: Mr. Aly is currently a partner at Winston & Strawn and was previously a partner at Kirkland & Ellis LLP. He received a J.D., magna cum laude, in 1999 from Georgetown University Law Center, where he was elected to the Order of the Coif and served as senior articles editor for the Georgetown Journal of Legal Ethics. He received a B.S.E. in Biomedical Engineering, cum laude, in 1996 from Duke University.

Abstract: The Federal Circuit, in UMC, eliminated the reduction to practice requirement to trigger the on sale bar, but replaced it with a standard that admittedly could not be formulated clearly. The Supreme Court, unhappy with the vague standard, finally addressed the on sale bar issue eleven years later and offered a somewhat more reasonable standard in Pfaff II. Still, however, the test could be clarified further by the able to reduce to practice standard, barring a patent for an invention offered for sale when the inventor could construct the invention and knew with reasonable certainty it would work in its proposed form. Pfaff II could be read to require both elements of the proposed test because of its experimental exception, but the standard must be clarified. The Federal Circuit, therefore, should modify the Supreme Court’s test by assuming it applied to the first half of the reduction to practice test, and introduce the able to reduce to practice test to incorporate Pfaff II while making the test fair for inventors and without exceeding the policy justifications behind Section 102(b).


Recent Developments in Patent Law

Citation: 7 Tex. Intell. Prop. L.J. 427 (1999)

Author: Shireen Irani Bacon, Keiko Ichiye & Jane O’Connell

About: Strasburger & Price, L.L.P. Any opinions expressed in this Article are the opinions of the authors and do not necessarily reflect the opinions of Skjerven, Morrill, MacPherson, Franklin & Friel, L.L.P. nor Strasburger & Price, L.L.P.

Abstract: The cases discussed herein were reported in the United States Patents Quarterly Second Series during late December of 1998 and January and February of 1999. This Article is not intended to provide a comprehensive analysis of all patent decisions during the relevant period, but rather provides a review of selected patent opinions that the authors believe involve significant or noteworthy decisions in certain interesting areas of patent law. The selected cases discussed within this Article are organized by subject matter in order to facilitate the reader’s review.

The brief summaries provided herein demonstrate several trends. First, extrinsic evidence was generally admitted to aid in claim construction unless the specification gave an explicit definition to the disputed term. Second, rights in inventions created by government employees were generally held to reside in the government, and an agency’s interpretation of its rules on this issue will be afforded great deference. In addition, the Federal Circuit demonstrated its intent to follow the new two-part Pfaff analysis set forth by the U.S. Supreme Court for determining the trigger date for the on-sale bar. Finally, in a case of first impression, the Federal Circuit held that the burden of proof in an interference will be a preponderance, rather than clear and convincing evidence, when the patent application was copending with an interfering application.


Recent Developments in Copyright Law

Citation: 7 Tex. Intell. Prop. L.J. 445 (1999)

Author: Dwayne K. Goetzel

About: Conley, Rose & Tayon, P.C., Austin, Texas.

Abstract: This Article discusses some of the recent copyright-related decisions that are published in Volumes 48 and 49 of the United States Patents Quarterly Second Series (U.S.P.Q.2d).

Most of the reported decisions do not fundamentally alter the landscape of Copyright Law. Many of the cited cases do give some guidance, however, to the interpretation of an ever-changing Copyright Act, in an even faster moving technological world. Although copyright law may have been slow to adapt to new types of infringement, such as via the Internet, the statutes and case law have been quickly catching up. As the reliance upon new technology continues to increase, a greater body of case law will develop which hopefully will homogenize the doctrines applicable to such issues as computer program copying or the downloading of copyrighted digital audio files. But then again, “[t]he course of true anything never does run smooth.”


Recent Developments in Trademark Law

Citation: 7 Tex. Intell. Prop. L.J. 463 (1999)

Author: Thomas L. Casagrande

About: Arnold White & Durkee, Houston, TX.

Abstract: In the last few months, the Federal Courts of Appeals tackled an unusually large number of significant trademark, trade dress, false advertising, and related issues. The First Circuit wrestled with applying the Federal Trademark Dilution Act to a high-end faucet design. The Second Circuit addressed whether to apply trade dress protection to a line of children’s clothing and, in another case, to the shape of a spring water bottle. It also rejected an argument of “reverse genericism”—that a generic term had been transformed, through a company’s promotional efforts, into a trademark. The Second Circuit also dealt with the fair use defense. Not to be outdone, the Third Circuit took one trademark case en banc to clarify its infringement standard, decided a significant question of standing to raise false advertising claims, and discussed the interplay of trademark searches and willful infringement. The Sixth Circuit said it could not swallow the Dawn Donut rule. The Seventh Circuit found the alleged trade dress of a line of children’s books and related cookbooks unprotectable. And the Ninth Circuit discussed the line between “puffery” and false advertising.