• Pamela Taylor, To Steal or Not to Steal: An Analysis of the Computer Fraud and Abuse Act and Its Effect on Employers, 49 Hous. L. Rev. 201 (2012).

Abstract

The following is a surprisingly common scenario among employers in the United States today: a model employee works diligently at her job, while taking intermittent breaks to check her email or surf the Internet. The employee tries her best to balance her home and work life, occasionally emailing files home to work in the evening. She might even occasionally download files onto a USB device either for the purposes of accessing them after hours or using as templates with future employers. Eventually, due to demands either at home or at the office, the employee becomes disgruntled with her job and decides to leave for another position. Before leaving, she may email more copies of her files home or save them onto a USB device, again to save for her records. This example raises several issues: (1) Has the employee acted “without authorization” according to the Computer Fraud and Abuse Act (CFAA)?; (2) Does the employer have a federal civil cause of action against the employee?; and (3) How can employers protect themselves from employees stealing data with unsettled law concerning the CFAA?

The circuits are split as to how to interpret the language “without authorization” and “exceeds authorized access” as it applies to the CFAA. Two distinct positions have developed among the courts. The first applies a narrow, employee-friendly interpretation of the language; the second applies a broad, employer-friendly interpretation of the language. This leaves employers in a very uncertain position as to how best to protect their data. The conflict stems around “what constitutes ‘unauthorized access’ under the statute, particularly as it relates to employer–employee relationships and proprietary database misuse.” Specifically, “courts have split on the question of whether an employee with an improper purpose may be held civilly liable under the CFAA.” What can employers do to protect themselves with uncertainty in the case law? This Comment will help employers understand the variances in the legal interpretations of the courts, as well as help employers best understand how to protect themselves in the event that the narrow interpretation is adopted or applied.

This Comment addresses the split among the circuits interpreting the “without authorization” and “exceeds authorized access” language of the CFAA by looking to why this legislation is necessary and identifying what employers must do for data protection under the umbrella of existing law. Part Two of this Comment addresses the rise of employee data theft, which is becoming more common to employers today. Part Three of this Comment looks at the historical development of the CFAA. Part Four of this Comment examines and contrasts the cases among the federal circuits regarding whether an employee acts “without authorization.” The key to adequate protection for employers is to understand the reasons for the split and why the narrow, employee-friendly, interpretation should become the prevailing viewpoint. Part Five of this Comment, the conclusion, identifies key preventative measures employers can take to protect themselves against electronic data theft. The uncertainty among the courts is vast, but the Supreme Court should rule in favor of the narrow interpretation and employers must be prepared to have adequate tools in place to protect their assets.

• Jennifer Smith, Education Works! How Broadcast Fleeting Expletives Stimulate Comprehensive Sex Education for Our Youth, 49 Hous. L. Rev. 161 (2012).

Abstract

In 2004, the Federal Communications Commission (FCC) changed its indecency policy to permit severe sanctions on broadcasters for airing isolated fleeting expletives on radio or television. This new rule reversed the FCC’s long-standing restrained enforcement policy under which isolated fleeting expletives were per se inactionable.

In Fox Television Stations, Inc. v. FCC, the Second Circuit unanimously struck down the FCC’s expanded indecency regulation as unconstitutionally vague. The court reasoned that the FCC’s new policy fails to give broadcasters clear notice of the language it considers indecent. In addition, the Second Circuit warned against the inevitable chilling effect that the fleeting expletives policy inflicts on constitutionally protected broadcast speech, noting that some instances of chilled speech have already occurred.

This Comment examines the FCC’s heightened regulation and argues that the rule is constitutionally flawed because it (1) is overly restrictive; (2) is subjectively and discriminatorily enforced; (3) chills protected speech; (4) infringes on parents’ constitutional right to raise their children; and (5) virtually preempts healthy discussions between parents and children about sex to children’s detriment. Relying on the government’s correlation between expletives and sex, this Comment proposes deregulating broadcast media, at least to its pre-2004 regime, to better equip parents with opportunities to educate their children about sex. In other words, in absence of the FCC’s new rule, parents should take advantage of the rare fleeting instances of broadcast profanity to instruct their children on word meanings, connotations, and sex. Moreover, this restrained approach to combating indecency is more in line with the original broadcast regulators’ intent to form a regulatory body devoid of any censorship capability.

A negative ruling for the FCC, combined with parents’ initiative to educate their children about sex, will more effectively tackle modern problems like teen pregnancy and sexually transmitted diseases and foster a more sexually responsible society. Avoiding indecency through unconstitutional bans on protected speech only preserves the ailing status quo.

• Mini Kapoor, Proposal for Resolution to Challenges Posed by DNA Sequence Patents on the Development of Multiplex Genetic Tests, 49 Hous. L. Rev. 131 (2012).

Abstract

DNA sequence patents have been controversial from the very beginning. Legal scholars have expressed concerns that patents on DNA sequence impede valuable research in the field of biotechnology. One of the specific areas of concern is rooted in the fact that a majority of innovative genetic tests involve multiplex assays, which could potentially use hundreds of different DNA sequences in a single assay. Thus, the development of these multiplex genetic tests may, in large part, be dependent on the ability to acquire rights to existing patents on all the DNA sequences included in the test.

This Comment focuses on current challenges posed by DNA sequence patents on the development of multiplex genetic tests, specifically discussing the restrictions imposed by patent law on use of patent protected DNA sequences. In light of the expected benefits of multiplex genetic tests to the general public health, the Comment argues for a need to address the impact of DNA sequence patents on patient access to genetic tests. It proposes possible solutions to overcome the challenges faced in the development of multiplex genetic test and argues in favor of a heightened utility standard for DNA sequence patents by limiting the scope of claims to the utility disclosed in the patent at the time of filing.

• Mary Catherine G. Isensee, Enforcing Against the Enforcers: Ensuring Immigration Compliance Through Civil RICO, 49 Hous. L. Rev. 101 (2012). 
  

Abstract

The United States has struggled to formulate a solution for the number of undocumented immigrants who live within its borders. Labeled as illegal aliens, they have either entered the United States without authorization or violated the terms of their entry. The proposed solutions to their presence are varied. Some have suggested normalization measures for certain categories of undocumented immigrants, which others have criticized as “backdoor amnesty.” A number of states and municipalities have passed local immigration regulations and ordinances, which they have defended in federal court. But more notable has been the discussion of the private enforcement of immigration laws.

In practice, the shift from public to private enforcement is most visible in an employer’s responsibility to ensure a legally authorized workforce. The federal government mandates that an employer verify the work authorization of his employees and threatens sanctions for noncompliance. Courts have interpreted these measures as having twin goals: (1) discouraging illegal immigrants from entering the United States; and (2) protecting authorized workers from having to jockey for jobs vis-à-vis their undocumented counterparts. This private enforcement model has failed as businesses continue to illegally employ unauthorized workers. In response to employers’ abdication of their role as private enforcers, individuals are using a provision within the Racketeer Influenced and Corrupt Organization Act (RICO) to file civil lawsuits against employers of undocumented workers.

Part II of this Comment presents an overview of the success of private enforcement of immigration law in the employment context. Part III explains the mechanics of RICO as a cause of action, explores its 1996 immigration-related amendment, and discusses cases where civil RICO plaintiffs have successfully survived summary judgment. Part IV discusses the recent U.S. Supreme Court ruling in Anza v. Ideal Steel Supply Corp., which poses a potential roadblock to civil RICO actions targeted at employers of unauthorized immigrants. Finally, Part V concludes by showing how civil RICO lawsuits, as private enforcement mechanisms, are both appropriate and desirable in the protection of legally authorized workers and unauthorized immigrants.

• Mark Danner, The Twilight of Responsibility: Torture and the Higher Deniability, 49 Hous. L. Rev. 71 (2012).

Abstract

Following the terrorist attacks of September 11, 2011, a small group of Bush Administration officials, led by Vice President Dick Cheney and working outside the boundaries of the normal policy process, created and implemented the United States of America’s first official torture policy. These officials bypassed the National Security Council, ignored the interagency system, met in secret, and relied on shamefully inadequate legal justifications. Still, President Bush was not “sandbagged” by his legal team and the CIA in authorizing the use of torture. The memos authored by John Yoo, Stephen Bradbury, and others were drafted in support of the decision to torture; they were intended to offer a veil of legal authority to a policy decision for which the President himself was ultimately responsible.

The resulting torture policy not only weakened America’s moral standing and bred resentment across the globe, it greatly enhanced the recruiting efforts of al Qaeda. President Bush’s decisions saddled the country with a policy that our founders would not have approved, that violated international and domestic law, and that our enemies have used against us. The ultimate responsibility for this violation of our social contract and of America’s historical opposition to torture lies with him. In wanting to show the world he would do anything to keep America safe, President Bush’s “tough decisions” hurt America badly. They loom over us to this day.

The Essay also underscores the policy and even management value of well-defined, politically sustainable guidelines for secret operations to kill enemies and deal with captives. Because the government must entrust intelligence operatives with exceptional power, a fundamental social contract forms. Such a social contract is an essential foundation to granting intelligence agencies and military departments, with thousands of employees conducting many operations around the world, extraordinary powers to intercept communications, break laws in other countries, and even use lethal force to defend the country—all in secret. When the contract is broken, trust breaks down and all sides will lose.

• David Cole, The Taint of Torture: The Roles of Law and Policy in Our Descent to the Dark Side, 49 Hous. L. Rev. 53 (2012).

Abstract

While Professor Philip Zelikow maintains that the Bush Administration’s decision to use waterboarding and other brutal interrogation tactics was a policy mistake, it was more accurately a mistake of law. The distinction matters because labeling such conduct as policy leaves open the possibility that it could be revived by a future Administration. The fact that these tactics were illegal, and not just a poor policy choice, means that the officials and lawyers who authorized them need to be held accountable. Accountability need not come through a criminal trial, and could come in the form of a commission of inquiry, a congressional resolution, civil damage actions, or even bar discipline. Like interrogation, detention and targeting must also conform to law in the conduct of war, and must be sufficiently transparent to permit the public to assess the Administration’s claims of legality.

• Philip Zelikow, Codes of Conduct for a Twilight War, 49 Hous. L. Rev. 1 (2012).

Abstract

This Article reflects on the codes of conduct the United States has devised, and has improvised, during the last ten years of the Twilight War. As the polemics have subsided and policies are regularized for the long haul, I focus only on two major issues—codes for interrogating enemy captives and the code for defining the enemy. As “legal realists” have observed, legal doctrines rarely emerge from classrooms and often not even from courts. This is then a personal history of how these legal policies took shape and evolved. But one of the most important insights to take away from this historical episode was that the advocates for the radically new codes of conduct framed the issue as a legal question—substantively and bureaucratically. Instead of framing the question around what “should” be done, carefully inventorying prior U.S. and foreign experience in detention practices and interrogations and analyzing all the pros and cons, the issue was debated as one of what “can” be done. If it does nothing else, this episode should reveal the dangers implicit in this habit of thought.

The Essay also underscores the policy and even management value of well-defined, politically sustainable guidelines for secret operations to kill enemies and deal with captives. Because the government must entrust intelligence operatives with exceptional power, a fundamental social contract forms. Such a social contract is an essential foundation to granting intelligence agencies and military departments, with thousands of employees conducting many operations around the world, extraordinary powers to intercept communications, break laws in other countries, and even use lethal force to defend the country—all in secret. When the contract is broken, trust breaks down and all sides will lose.

• Philip Zelikow, Codes of Conduct for a Twilight War, 49 Hous. L. Rev. 1 (2012). (Abstract)

Commentaries

• David Cole, The Taint of Torture: The Roles of Law and Policy in Our Descent to the Dark Side, 49 Hous. L. Rev. 53 (2012). (Abstract)
• Mark Danner, The Twilight of Responsibility: Torture and the Higher Deniability, 49 Hous. L. Rev. 71 (2012). (Abstract)

Comments

• Mary Catherine G. Isensee, Enforcing Against the Enforcers: Ensuring Immigration Compliance Through Civil RICO, 49 Hous. L. Rev. 101 (2012). (Abstract)
• Mini Kapoor, Proposal for Resolution to Challenges Posed by DNA Sequence Patents on the Development of Multiplex Genetic Tests, 49 Hous. L. Rev. 131 (2012).  (Abstract)
• Jennifer Smith, Education Works! How Broadcast Fleeting Expletives Stimulate Comprehensive Sex Education for Our Youth, 49 Hous. L. Rev. 161 (2012). (Abstract)
• Pamela Taylor, To Steal or Not to Steal: An Analysis of the Computer Fraud and Abuse Act and Its Effect on Employers, 49 Hous. L. Rev. 201 (2012). (Abstract)

• Lynne Liberato & Kent Rutter, Reasons For Reversal in the Texas Courts of Appeals, 48 Hous. L. Rev. 993 (2012). (Westlaw) (Abstract)
• Meghan J. Ryan,  Proximate Retribution, 48 Hous. L. Rev. 1049 (2012). (Westlaw) (Abstract)
• Jonathan Todres, Maturity, 48 Hous. L. Rev. 1107 (2012). (Westlaw) (Abstract)

Comments

• Chelsea Keeton,  Sharing Sustainability: Preventing International Environmental Injustice in an Age Of Regulation, 48 Hous. L. Rev. 1167 (2012). (Westlaw) (Abstract)
• Heather Sherrod, The “Hot News” Doctrine: It’s Not 1918 Anymore—Why the “Hot News” Doctrine Shouldn’t Be Used to Save the Newspapers, 48 Hous. L. Rev. 1205 (2012). (Westlaw) (Abstract)
• Stephen Zinda, Preserving The Copyright Balance: Why Copyright Misuse Should Invalidate Software Licenses Designed to Prohibit Resale And Oust Service Market Competition, 48 Hous. L. Rev. 1241 (2012). (Westlaw) (Abstract)

• Meghan J. Ryan,  Proximate Retribution, 48 Hous. L. Rev. 1049 (2012). (Westlaw)
  

Abstract

An essential element of the theory of retribution has been missing from courts’ and legal scholars’ analyses. While they have outlined a number of varieties of the theory and fleshed out their nuances, courts and scholars have largely neglected to examine which harms flowing from a criminal offender’s conduct should be considered in determining that offender’s desert. The more remote harms caused by an offender’s conduct, such as the effects of his offenses on the families and friends of their victims or the effects of criminal conduct on society in general, are pervasive in communities across the nation. This Article takes a first look at this overlooked issue of the role that more remote harms should play in sentencing and asserts that accounting for these more remote harms under certain conditions would better reflect the basic tenets of harm-based retributivism—the theory at the heart of many sentencing schemes. The Article acknowledges some of the concerns that considering these harms raises and argues that a proximate causation analysis is essential to limit the harms considered in sentencing while acknowledging the full array of harms caused by criminal conduct. This notion of “proximate retribution” is necessary to rein in criminal liability under the theory.

• Jonathan Todres, Maturity, 48 Hous. L. Rev. 1107 (2012). (Westlaw)
  

Abstract

Across numerous areas of the law—including family law, criminal law, labor law, health law, and other fields—when children are involved, maturity determinations are pivotal to outcomes. Upon reaching maturity, however defined, an individual has access to a range of rights not previously available and is expected to fulfill certain duties. Despite the central importance of maturity, the law’s approach to it has been to consider the concept of maturity in a piecemeal and issue-specific fashion. The result is a legal construct of maturity that is anything but consistent or coherent. For example, every state has a minimum age below which a child is considered not mature enough to consent to sex. However, if money is involved, more than forty states deem that child mature enough to have consented to sex for money and be charged with the crime of prostitution (even if the money is paid to a pimp and the child never sees it). This Article seeks to undertake a holistic assessment of the law’s approach to maturity.

Markers of maturity in the law frequently occur at different points in time. An examination of key indicators of maturity under the law reveals that the law is inconsistent, not only across issues but also within the same issues. Children are deemed mature enough to participate in the polity (e.g., vote) at a different age from when they are deemed mature enough to exercise independent economic power (e.g., work or contract), control their own bodies (e.g., engage in consensual sex), or assume adult social responsibilities (e.g., drink alcohol in public places).

In short, the law provides little clear guidance on how maturity should be understood and treated. Recent research on brain development and the work of cognitive psychologists provide some answers. To date, however, a significant consideration has been largely overlooked—cultural conceptions of maturity. Thus, this Article seeks to bring cultural perspectives on maturity into the dialogue. Ultimately, this Article aims to bring some clarity to the issue of maturity and examine whether cultural practices can inform the legal, policy, and moral questions in the law’s approach to maturity.

• Heather Sherrod, The “Hot News” Doctrine: It’s Not 1918 Anymore—Why the “Hot News” Doctrine Shouldn’t Be Used to Save the Newspapers, 48 Hous. L. Rev. 1205 (2012). (Westlaw)
  

Abstract

The death knell for print journalism has tolled ominously for fifteen years. Although newspapers have been the source of daily news for most of the world since the early seventeenth century, the immediate and widespread acceptance of the Internet and online news has likely sounded the inevitable end for newspapers. This is evidenced by the radical decline in newspaper revenues, which has caused many newspapers to go out of business and others to cut their staffs significantly.

Newspaper companies contend they are losing business to news “aggregators” who do not expend resources gathering and reporting the news, and instead distill a newspaper’s newly published content and republish it on their own websites. Consumers may then read the stories on aggregators’ websites, rather than the newspaper’s website. Several commentators and the Federal Trade Commission have suggested that the “hot news” doctrine be used to prevent the further decay of the print journalism industry, and the Second Circuit Court of Appeals recently reaffirmed the survival of the hot news tort in Barclays Capital Inc. v. Theflyonthewall.com.

This Comment argues that because the hot news doctrine provides the originator of factual information with the exclusive right to disseminate that information, the doctrine is incompatible with traditional intellectual property law and the First Amendment. As consumers and advertisers turn to the Internet for interest-focused content, the doctrine will not protect newspapers from facing financial difficulty. It, therefore, does not justify the restraint it places on the dissemination of truthful information. The potential exists for drastically better journalism in the digital world because the consumer can interact, comment, and seek out the information that is of interest to him. The courts should not hinder this development by providing newspapers with rights that were never meant to be within their power.

• Chelsea Keeton,  Sharing Sustainability: Preventing International Environmental Injustice in an Age Of Regulation, 48 Hous. L. Rev. 1167 (2012). (Westlaw)

Abstract

According to pollution-haven hypothesizers, as environmental regulations increase in First World countries and raise costs of production, pollution-intensive industries will migrate into developing countries with less-stringent regulation. This occurrence is also known as the “race to the bottom” or “industrial flight.” The result is an ironic causal chain where developed countries’ measures on behalf of sustainability become a catalyst for the exploitation of lesser protected areas and peoples.

There is much reason to believe that environmental regulation will increase in the developed world, particularly in the United States, exacerbating the potential for industrial flight and its resultant scenarios.  Added attention to global warming and other environmental issues continue to spur the adoption of new regulations and standards that industries must adhere to.  Resultantly, businesses worry about the effect of mounting controls on their market competition.  The fear is that many corporations will move their operations overseas to countries that prioritize the benefit of economic development over the cost of environmental degradation.

While there is a heavy amount of literature on industrial flight, international environmental injustice, and redress for environmental harms, much less exists that ties these concepts together. Additionally, recent developments merit an update into the examples and obstacles of the subject.  This Comment will thus provide a comprehensive investigation of pollution havens from their originating circumstances to their resulting environmental atrocities and discuss the limitations of recovery for foreign victims, as well as potential solutions to these problems.

• Stephen Zinda, Preserving The Copyright Balance: Why Copyright Misuse Should Invalidate Software Licenses Designed to Prohibit Resale And Oust Service Market Competition, 48 Hous. L. Rev. 1241 (2012). (Westlaw)

Abstract

In 1990 the Fourth Circuit held that the copyright misuse doctrine constitutes a valid affirmative defense against claims of infringement. This doctrine prohibits copyright holders from impermissibly expanding the scope of their copyrights. However, the courts have been hesitant to allow this defense in situations where copyright holders license primarily to restrict resale of copyrighted software or to prohibit third-party use of software licensed to a customer, even for general computer-servicing purposes such as trouble shooting and software maintenance. This Comment reviews the purpose of the copyright misuse doctrine and its application by the Federal Appellate Courts. It argues that in two specific scenarios the copyright misuse doctrine should be a viable defense against claims of copyright infringement.

The first scenario occurs when a copyright holder licenses its software primarily to restrict resale in the secondary market. Such licenses are simply sales disguised as licenses. Moreover, they exclusively benefit the copyright holder and entirely disregard the primary policy behind copyright law of securing for the public the benefits derived from the copyright worked. If all copyright holders began utilizing these types of licenses it could very easily lead to the demise of secondary markets, such as used book and software stores.

The second scenario occurs when a copyright holder prevents third parties from servicing a customer’s computer using software licensed to the customer. Such practices risk giving copyright holders an absolute monopoly on the service market associated with their software. While copyright law encompasses many rights, control of the service market for the copyrighted work is not one of these rights.

• Lynne Liberato & Kent Rutter, Reasons For Reversal in the Texas Courts of Appeals, 48 Hous. L. Rev. 993 (2012). (Westlaw)
  

Abstract

By providing and analyzing data about the appellate process, this study aims to help lawyers understand the types of cases that are most often reversed and the most common reasons for reversal in the Texas courts of appeals. For practitioners formulating a post-judgment strategy, this study is meant to provide a starting point toward a reasoned, accurate evaluation of the potential appeal and a tool to use in selecting the points deserving of the greatest emphasis on appeal. The study found that the statewide reversal rate in civil appeals is 36%. The study also found that the courts of appeals reverse judgments entered on jury verdicts at a higher rate than summary judgments, reflecting a recent shift toward reversing judgments entered on jury verdicts and a shift away from reversing summary judgments. Over the nine-year period since the study was last conducted, tort plaintiffs have responded to an increasingly difficult litigation climate by filing fewer cases, taking fewer cases to judgment, and appealing fewer cases to the courts of appeals. But even though tort and DTPA plaintiffs have been “picking their battles” more selectively, they have not experienced any greater success on appeal.

The Review’s consistently high rankings are due to institutional pride, constant hard work, and the continued support of a number of people and organizations—the Frankel Family Foundation, the University of Houston Institute for Intellectual Property & Information Law, the Houston Law Review Board of Directors, the Houston Law Review Alumni Association, and the University of Houston Law Center faculty. The Review wishes to thank these organizations and their members, as well as all former student editors, who have worked countless hours to ensure the continued high quality of the Houston Law Review.

The incoming Editor in Chief, Peter Danysh, and the incoming Managing Editor, Cade Mason, commented:

“On behalf of the members of Board 50, we are thrilled to begin the transition into our new positions on the Houston Law Review Board of Editors. Board 49 has been a constant source of guidance and professionalism, and we look forward to working together with the same amount of dedication. We are confident that Board 50 will demonstrate the work ethic and leadership necessary to ensure that the Houston Law Review remains such a vital part of the University of Houston Law Center and the legal community.”

Board 50’s Masthead is available here.

• Cameron Pope, Texas Arbitration Law: More Choices—and More Risk—Than Ever, 2 HLRe 1 (2012).
• Richard H. Underwood, Making Stuff Up Revisited: Opening Statement, 2 HLRe 11 (2012).
  ]]> http://www.houstonlawreview.org/2012/03/08/hlre-spring-2012/feed/ 0 http://www.houstonlawreview.org/2012/03/08/hlre-spring-2012/?utm_source=rss&utm_medium=rss&utm_campaign=hlre-spring-2012 http://feedproxy.google.com/~r/HoustonLawReview/~3/6zY3V0R8-0M/ http://www.houstonlawreview.org/2012/01/30/volume-48-number-4-spring-2012-symposium/#comments Mon, 30 Jan 2012 18:06:30 +0000 sdzinda http://www.houstonlawreview.org/?p=1939 Trademark: Today and Tomorrow
  • Craig Joyce, Introduction, 48 Hous. L. Rev. 701 (2012). (Westlaw)
  • Ann Bartow, Counterfeits, Copying and Class, 48 Hous. L. Rev. 707 (2012). (Westlaw)(Abstract)
  • Barton Beebe, Is the Trademark Office a Rubber Stamp?, 48 Hous. L. Rev. 751 (2012). (Westlaw)(Abstract)
  • Greg Lastowka, Trademark’s Daemons, 48 Hous. L. Rev. 779 (2012). (Westlaw)(Abstract)
  • Mark McKenna, (Dys)functionality, 48 Hous. L. Rev. 823 (2012). (Westlaw)(Abstract)
  • Rebecca Tushnet, Looking at the Lanham Act: Images in Trademark and Advertising Law, 48 Hous. L. Rev. 861 (2012). (Westlaw)(Abstract)

  Eighth Annual Baker Botts Lecture

  • Paul Goldstein, Copyright on a Clean Slate, 48 Hous. L. Rev. 691 (2011). (Westlaw)(Abstract)

  Comments

  • Seth Jaffe, Manufacturing a System of Remanufacturing: How the Patent Office Can Facilitate Environmentally Conscious Product Design, 48 Hous. L. Rev. 919 (2012). (Westlaw)(Abstract)
  • Blaine Larson, How Tangential Does It Have to Be? Making Sense of Festo’s Tangential Limitations Doctrine, 48 Hous. L. Rev. 959 (2012). (Westlaw)(Abstract)
  ]]> http://www.houstonlawreview.org/2012/01/30/volume-48-number-4-spring-2012-symposium/feed/ 0 http://www.houstonlawreview.org/2012/01/30/volume-48-number-4-spring-2012-symposium/?utm_source=rss&utm_medium=rss&utm_campaign=volume-48-number-4-spring-2012-symposium http://feedproxy.google.com/~r/HoustonLawReview/~3/3nR8v1tbMp4/ http://www.houstonlawreview.org/2012/01/30/484-how-tangential-does-it-have-to-be-making-sense-of-festos-tangential-limitations-doctrine/#comments Mon, 30 Jan 2012 18:00:15 +0000 sdzinda http://www.houstonlawreview.org/?p=1980 Comment
  • Blaine Larson, How Tangential Does It Have to Be? Making Sense of Festo’s Tangential Limitations Doctrine, 48 Hous. L. Rev. 959 (2012). (Westlaw)

  Abstract

  In Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. (Festo II), the Supreme Court addressed the role of prosecution history estoppel as a limitation on the doctrine of equivalents. The Court announced three specific situations where a narrowing amendment related to patentability does not trigger prosecution history estoppel. One such situation occurs when the rationale behind a patentee’s narrowing amendment bears “no more than a tangential relation to the equivalent in question.” Nine years after Festo II, there is still no consistent definition for when a narrowing amendment is tangential.

  This Comment provides the necessary framework to discern whether a tangential limitation triggers prosecution history estoppel. A narrowing amendment contains a tangential limitation when two conditions are met: (1) the patentee argues during prosecution that it made the narrowing amendment solely to distinguish its invention from a feature found in prior art; and (2) the purpose behind the narrowing amendment was to clarify a feature different from the one the patentee is asserting has been infringed under the doctrine of equivalents. Additionally, this Comment argues a limitation found in a narrowing amendment is never tangential if it specifies a limited physical range, so the patentee cannot argue something falling outside that limited range infringes under the doctrine of equivalents.

  ]]> http://www.houstonlawreview.org/2012/01/30/484-how-tangential-does-it-have-to-be-making-sense-of-festos-tangential-limitations-doctrine/feed/ 0 http://www.houstonlawreview.org/2012/01/30/484-how-tangential-does-it-have-to-be-making-sense-of-festos-tangential-limitations-doctrine/?utm_source=rss&utm_medium=rss&utm_campaign=484-how-tangential-does-it-have-to-be-making-sense-of-festos-tangential-limitations-doctrine