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Texas Intellectual Property Law Journal
Volume 6

Issue 1 - Fall 1997


The Licensee’s Choice: Mechanics of Successfully Challenging a Patent Under License
 
Citation:
6 Tex. Intell. Prop. L.J. 1 (1997)
 
Author:
Nellie A. Fisher
 
About:
Baker & Botts, L.L.P., Houston, Texas.
 
Abstract:
This Article focuses on the point when the licensee is deciding or has decided to challenge the validity of patents under her license from the patentee. Specifically, this Article addresses the mechanics by which a licensee can attack a patent, whether through court action or by reexamination. Part II addresses the mechanics of the licensee’s challenge of patent validity. Part II begins with a discussion of Lear, Inc. v. Adkins, which spelled the demise of the licensee estoppel doctrine. Part II.B reviews when and how a licensee can seek declaratory adjudication of patent invalidity in federal court. Part II.C considers the licensee’s tactics for enjoining the patent owner from terminating the license contract during the pendency of the underlying patent validity suit. This section also addresses the corresponding issue of whether an escrow account is permissible for deposit of royalties paid pendente lite to avoid a material breach of the license by the licensee. Part III considers what type of paid royalties may be recouped by the licensee and what conditions need to be present in order to recover those royalties. Part III also discusses the licensee’s choice regarding payment or nonpayment of royalties, which was created as a result of the rule permitting the refund of royalties paid pendente lite. Finally, Part IV addresses the tactic of requesting reexamination of the patent as an alternative or prior to court action.


Chapter 2100 of the Manual of Patent Examining Procedure—A Means for Persuasion
 
Citation:
6 Tex. Intell. Prop. L.J. 49 (1997)
 
Author:
James E. Ruland
 
About:
Kimberly-Clark Corporation, Roswell, Georgia.
 
Abstract:
A new argumentative arrow was added to a patent practitioner’s quiver in September 1995. This new weapon is Chapter 2100 of the Manual of Patent Examining Procedure (MPEP). Chapter 2100 incorporates case law from the United States Supreme Court, United States Court of Customs and Patent Appeals, and its successor, the United States Court of Appeals for the Federal Circuit. The case law pertains to 35 U.S.C. §§ 101–03 and the first, second, and sixth paragraphs of 35 U.S.C. § 112.


Recent Developments in Trademark Law
 
Citation:
6 Tex. Intell. Prop. L.J. 65 (1997)
 
Author:
Betty Chang
 
About:
Arnold, White & Durkee, Austin, Texas.
 
Abstract:
This paper reviews recent developments in trademark law. It reviews cases that address the following topics: trademarks and antitrust, substantive issues, trademarks and the Internet, commissioner proceedings, and the Federal Trademark Dilution Act of 1995.


Recent Developments in Copyright Law
 
Citation:
6 Tex. Intell. Prop. L.J. 81 (1997)
 
Author:
Neil Netanel
 
About:
Assistant Professor, The 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 41, Number 5, through Volume 43, Number 8. It also summarizes key proposed legislation under consideration during the time period covered by those reports.


Recent Developments in Patent Law
 
Citation:
6 Tex. Intell. Prop. L.J. 103 (1997)
 
Author:
Mark A. Lemley
 
About:
Assistant Professor, The University of Texas School of Law; of counsel, Fish & Richardson P.C., Austin, Texas.
 
Abstract:
This Article covers patent cases reported in Volumes 41, 42, and parts of Volume 43 of United States Patents Quarterly Second Series, ending in August 1997. Obviously, not all cases are reported, but most Federal Circuit decisions between February and August 1997 are included, as are significant district court decisions and, of course, the Supreme Court’s decision in Warner Jenkinson v. Hilton-Davis.


Issue 2 - Winter 1998


The Development of Modern Frameworks for Patent Protection: Mexico, a Model for Reform
 
Citation:
6 Tex. Intell. Prop. L.J. 133 (1998)
 
Author:
Edwin S. Flores Troy, Ph.D.
 
About:
Associate, Warren & Perez, Dallas, Texas.
 
Abstract:
In order to comply with the North American Free Trade Agreement, Mexico was required to adhere to international intellectual property protection standards. In particular, NAFTA required that Mexico recognize and support protection under the Berne Convention, the Convention for the Protection of Producers of Phonograms, the International Convention for the Protection of New Varieties of Plants, and the Paris Convention for the Protection of Industrial Property. As a net exporter of ideas, it was not surprising that the United States and Canada would require their trading partners within the agreement to recognize and enforce the intellectual property rights of all their citizens and corporations.

In preparation for the final negotiations of NAFTA, Mexico revamped and greatly amended the laws that protect intellectual property in Mexico. The motivation for granting greater protection to intellectual property in Mexico, however, was rooted in the five-year Plan for National Development (Plan). Among the objectives of Mexico’s Plan for National Development were increasing the volume, quality, and assortment of exports; strengthening internal markets through competition and deregulation; internationalizing the economy; and participating in the increasing globalization of the world’s economies. Among the means of attaining the objectives outlined in the Plan, the administration of President Carlos Salinas de Gortari indicated that reformation of the entire judicial framework of intellectual property rights in Mexico was of primary importance.

The internationalization of trade and investment and a new understanding of the need to protect intellectual property are not only products of market forces, but may result from the demise of Soviet influence and intervention. One Mexican commentator has noted the concurrence between the shift from protectionist to free trade policies, and the international movement away from highly centralized command economies to increasingly deregulated free market economies. As a member of both movements, Mexico has realized that as part of its overall international trade balance sheet, intellectual property plays a central role in commercial negotiations.


Stop Relying On Uncle Sam!—A Proactive Approach to Copyright Protection in the People’s Republic of China
 
Citation:
6 Tex. Intell. Prop. L.J. 169 (1998)
 
Author:
Eric M. Griffin
 
About:
J.D. December 1997, Pepperdine University School of Law.
 
Abstract:
As the United States shifts to an information-based economy, American copyrighted works are increasingly vulnerable to piracy and counterfeiting in foreign countries. In the last few years the core copyright industries have grown at more than double the rate of the U.S. economy as a whole, and have employed new workers at more than four times the overall U.S. rate. These industries are threatened as never before. A thriving parallel market of counterfeit and pirated goods erodes the incentives to creation provided by intellectual property law and contemplated in the U.S. Constitution. Worldwide protection will require a combination of indigenous law, international treaties, enforcement, and proactive endeavors by the members of the core copyright industries and the U.S. government.

Although even the United States is a source of pirated goods, most piracy takes place in Third World countries where intellectual property protection is inadequate either in form or enforcement. In 1995, the People’s Republic of China was the most disastrous country for U.S. copyright owners, with more than $2.3 billion in U.S. trade losses caused by inadequate copyright laws or enforcement.

China has adopted all intellectual property laws in accordance with international treaties. Unfortunately, the Chinese government has been reluctant to expend the resources to enforce them properly. Through alternative means, the U.S. core copyright industries may be successful in combating the factors which create such a fertile climate for piracy in China. The U.S. core copyright industries can and must do more than just ask Uncle Sam for help with intellectual property protection in China.


Recent Developments in Copyright Law
 
Citation:
6 Tex. Intell. Prop. L.J. 199 (1998)
 
Author:
Sharon Williamson
 
About:
Arnold, White & Durkee, Austin, Texas.
 
Abstract:
This Article reviews selected copyright cases reported in the United States Patents Quarterly Second Series, Volume 43, Number 9 through Volume 44, Number 8. It also summarizes key proposed legislation under consideration during the time period covered by those reports. The cases reviewed deal with subjects as sensational as the O. J. Simpson trial, and as mundane as the transfer of a copyright by contract. Many of these cases and legislative materials reflect the continued effort by courts and Congress to address new and difficult problems we face in trying to adapt copyright protection to the digital and information age.


Recent Developments in Patent Law
 
Citation:
6 Tex. Intell. Prop. L.J. 223 (1998)
 
Author:
Minh-Hien Nguyen
 
About:
Arnold, White & Durkee, Austin, Texas
 
Abstract:
This Article reviews selected patent decisions that the author believes were the most significant, interesting, or noteworthy cases reported in the United States Patents Quarterly Second Series during September, October, and November of 1997. This Article is not intended to provide a comprehensive reference of all patent decisions during the relevant period. The selected cases discussed within this Article are organized by subject matter to facilitate the reader’s review.


Recent Developments in Trademark Law
 
Citation:
6 Tex. Intell. Prop. L.J. 239 (1998)
 
Author:
David L. Hitchcock & Kelly J. Kubasta
 
About:
The authors are affiliated with Sidley & Austin, Dallas, Texas.
 
Abstract:
This Article reviews noteworthy trademark and unfair competition decisions reported in the United States Patents Quarterly Second Series, Volume 43, Number 9 (September 8, 1997) through Volume 44, Number 8 (November 24, 1997).


Issue 3 - Spring 1998


Unchained Melody: Music Licensing in the Digital Age
 
Citation:
6 Tex. Intell. Prop. L.J. 277 (1998)
 
Author:
Don E. Tomlinson & Timothy Nielander
 
About:
Don Tomlinson is Professor of Journalism and Mass Communication, Texas A&M University; Adjunct Professor of Law, University of Houston Law Center. Timothy Nielander is Associate in the Information Technology and Intellectual Property Group at Preston Gates & Ellis LLP in Seattle, Washington.
 
Abstract:
Note: An early version of a part of this Article was given as a speech by Professor Tomlinson to the Intellectual Property Section of the Dallas Bar Association and to the Intellectual Property Section of the Hawaii Bar Association.

Normally, songwriters consider their music’s popularity to be their ticket out of sleeping (at least figuratively) in the back seat of some old car; in cyberspace, however, their music may become popular without the concomitant remuneration that would change their sleeping arrangements. The problem is that while the copyright scheme knows how to compensate music copyright owners for sales of compact discs (CDs) or for public performances on radio and the like, performances in cyberspace are daunting because they are “unchained;” that is, they quite often occur without sufficient reference to a system of compensation generally adhered to by those engaging in such public performances. It is the “unchained” nature of cyberspace that is so perplexing. Traditional mechanisms for gathering royalties must be reworked in the context of cyberspace to account for the fundamental shift towards access and usage in electronic commerce as compared to the traditional physical movement of goods through the economy.

Various licensing mechanisms have developed over the years as differing uses of intellectual property have been defined. In the context of cyberspace, the digital distribution of music in the form of binary files has created the necessity of further refinement of the nature and scope of licenses for the exploitation of musical compositions. The ability to control the reproduction and particularized usage of copyrighted works can be lost very quickly in cyberspace. Under U.S. copyright law, economic incentive drives the creation of expressive works; in cyberspace, compensation for musical creations increasingly will be a function of technology sufficient to track the use and to collect the royalties due various rights holders.


Recent Developments in Copyright Law
 
Citation:
6 Tex. Intell. Prop. L.J. 317 (1998)
 
Author:
Darryl J. Adams
 
About:
Conley, Rose & Tayon, P.C., Austin, Texas. The author acknowledges the significant contributions made by: Mark L. Berrier, Daniel R. Christen, Robert C. Jahnke (law clerk), and Eric A. Stephenson, all with Conley, Rose & Tayon, P.C., Austin, Texas.
 
Abstract:
Several legally and factually interesting copyright cases were decided between December 1997 and March 1998. The Supreme Court addressed whether the first sale doctrine bars an action under Section 602(a) of the Copyright Act of 1976 that involves gray market goods. In a pair of opinions from the Seventh Circuit, Judge Posner clarified that circuit’s position, originally set forth in Selle v. Gibb, on the evidence necessary to infer access from striking similarity, and Judge Easterbrook addressed the copyrightability of taxonomies. In two factually interesting cases, a preliminary injunction seeking to prevent the release of the motion picture Amistad was denied, and a summary judgment finding that Andrew Lloyd Webber did not copy the Phantom Song was reversed and remanded by the Second Circuit.


Recent Developments in Patent Law
 
Citation:
6 Tex. Intell. Prop. L.J. 355 (1998)
 
Author:
James C. Pistorino
 
About:
Arnold, White & Durkee, Houston, Texas.
 
Abstract:
This Article covers patent related cases and developments which occurred during the period from December 1997 to February 1998. Significant district court, Federal Circuit, and state decisions were considered, including cases reported in Volumes 44 and 45 of the United States Patents Quarterly. While not every decision reported during this time period is reviewed, the four most significant developments are discussed and analyzed.

Of the cases here reviewed, the decision by the Federal Circuit in the Zurko case could have the most profound effect. A move from the clearly erroneous standard to one of substantial evidence would substantially alter the relationship between the applicants, the PTO, and the Federal Circuit. The Jones decision could have an important effect on assignment/licensing transactions in Texas. At present, it appears that many assignors could be powerless to protect their interests in the face of Jones’ nullification of reversionary interest clauses, at least in the Houston area. In light of the fact that the opinion concerns a difficult area of patent and contract law, this case should continue to attract attention.


Recent Developments in Trademark Law
 
Citation:
6 Tex. Intell. Prop. L.J. 369 (1998)
 
Author:
Matthew G. Reeves
 
About:
Liddell, Sapp, Zivley, Hill & LaBoon, L.L.P., Houston, Texas.
 
Abstract:
This Article summarizes selected cases from the United States Patents Quarterly from December 1997 through February 1998. Of particular interest are the series of cases concerning personal jurisdiction over a party based on their Internet activities. As the use of the Internet for business purposes grows, intellectual property attorneys can expect an increasing number of contests over this issue. Other cases summarized in this Article concern more traditional trademark issues, such as the right to use an abandoned mark or changes in prosecution practice.


 
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