By David L. McCombs, Haynes and Boone, LLPPhillip B. Philbin, Haynes and Boone, LLPVera L. Suarez, Haynes and Boone, LLP

This article surveys significant developments in intellectual property (IP) law during the past year (i.e., 2013 or the Survey Period). While this article focuses on case law that is precedential in the Fifth Circuit, it also reviews IP law developments that are likely to be influential in the evolution of Texas IP jurisprudence. Thus, the cases cited focus on the decisions of the U.S. Supreme Court and the U.S. Courts of Appeals for the Fifth and Federal Circuits. For developments in copyright and trademark law, the Fifth Circuit’s authority is binding, but other circuits, such as the Second and the Ninth, are considered highly persuasive. Because all cases concerning a substantive issue of patent law are appealed to the U.S. Court of Appeals for the Federal Circuit, decisions from that court during the Survey period are included in this article.

The U.S. Supreme Court was quite active in the IP field since the last Survey period (i.e., 2012) ended, deciding five cases involving IP issues and granting writs of certiorari on nine others. In patents, the Court showed particular interest in what qualifies as patentable subject matter. The Court also considered whether patent exhaustion applies to self-replicating seeds and granted certiorari to consider divided patent infringement. The Court considered other issues including whether federal jurisdiction extends to patent malpractice claims and whether “reverse payment” settlements are immune from antitrust attack. The Federal Circuit also made important developments to its patent law jurisprudence. Additionally, Congress enacted the Patent Law Treaties Implementation Act of 2012, which brings the United States in alignment with the Hague Agreement Concerning International Registration of Industrial Designs and the Patent Law Treaty.

In copyright, the U.S. Supreme Court decided whether the first sale doctrine applies to copyrighted material that is published abroad, sold abroad, and then imported into the United States. A federal district court determined whether Google’s scanning, storage, and display of millions of books falls within the “fair use” defense to copyright infringement. In trademark, the Fifth Circuit confirmed that the defense of laches can preclude a comprehensive injunction against an infringer. The enactment of the Texas Uniform Trade Secrets Act, which clarifies and changes trade secret law in Texas, is perhaps more significant.

Download the full article (PDF) here.

Recommended Citation
David L. McCombs, et al., Intellectual Property Law, 1 SMU Ann. Tex. Surv. (2014)