By David McCombs, Haynes and Boone, LLPPhillip B. Philbin, Haynes and Boone, LLPJamie Raju, Haynes and Boone, LLPCatherine Reynolds, Thompson & Knight LLP

This article surveys significant developments in intellectual property (IP) law during the past year (i.e., 2017 or the Survey period). This article 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. Court of Appeals for the Federal Circuit. For developments in trademark and copyright law, although the U.S. Court of Appeals for the Fifth Circuit’s authority is binding, other circuits are considered highly persuasive.

The U.S. Supreme Court decided several cases involving IP issues during this Survey period. In patents, the Supreme Court considered the applicability of the laches defense to infringement actions, and the patent exhaustion doctrine with respect to both domestic and international sales. In both of these cases, the Supreme Court took steps towards harmonizing patent law and copyright law. The Supreme Court also addressed the first prong of the patent venue statute, 28 U.S.C. § 1400(b). The U.S. Court of Appeals for the Federal Circuit also weighed in on patent venue and set forth the requirements for the second prong of § 1400(b). As for administrative proceedings, the Federal Circuit addressed limits on the authority of the U.S. Patent and Trademark Office (PTO) with respect to statutory interpretation.

In trademark, the Supreme Court considered whether the disparagement clause of the Lanham Act is facially unconstitutional under the Free Speech Clause of the First Amendment. Meanwhile, in copyright, the Supreme Court defined the proper test for separability. The Federal Circuit also made important developments to copyright jurisprudence by considering whether online-marketing activity could create seller liability under various provisions of the Federal Copyright Act.

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Recommended Citation
David McCombs, et al., Intellectual Property Law, 4 SMU Ann. Tex. Surv. 241 (2018)