Licensing & Technology Transfer, Fall 2008

Course Description

This course covers a study of licensing in the following types of licenses: patent, copyright, trademark, know-how, and digital information.

Generally Applicable Syllabus Information

Please read carefully the Generally Applicable Syllabus Information. This document sets forth course policy for attendance, preparation and participation, use of computers, examination and grading, and other items. A complete understanding of this document is necessary to take full meaning from the Class Schedule and Other Information set forth immediately below.

Class Schedule and Other Information

Name:	Licensing & Technology Transfer
Class # / Section #:	5360 / 34613
Place:	4-BLB
Time:	Tuesday & Thursday, 9:00 p.m. to 10:15 p.m. (2 class sessions per week, 3 credit hours)

Materials:	Cases and materials given in the class assignment table below.
	There is no requirement to purchase a statutory supplement. The cases and materials documents will be provided via links in the class assignment table below. Paper copies of these documents will typically not be provided in class, so students should plan to print them or review them electronically.
Prerequisites	IP Survey, Patent Law, or Copyright Law
Grading:	The course grade will be primarily based on an open-materials final exam. "Primarily" means that at least 95% of the course grade will be based on the final exam. Probably 100% of the course grade will be based on the final exam, but I want to have given notice of the possibility of a small percentage of the grade coming from other sources, most likely one or more small exercises. Notwithstanding the above, my assessment of your in-class participation performance will not be a component of your grade.
Brief Description of Coverage:	This class will meet in two 1.5 credit-hour blocks each week. Assignments will be detailed in the table below as the semester progresses.

Absences Limit:	Assuming two class meetings a week, six or less absences constitutes attendance meeting the eighty percent requirement. More than six absences means that the eighty percent requirement is not met. Attendance will be taken via a roll sheet passed throughout the class each session.
"Pick your seat" seating chart date:	The second class session during the first week of class: - Thursday, August 28, 2008.

Final Exam Date/Time:	Thursday, December 18, 2008; 1-4 p.m.
Final Exam Information:	click here for the Final Exam page.
First day/week's assignment:	Read this course web page, the linked Generally Applicable Syllabus Information, and the assignments detailed in the table below for the first day/week of class.

{reserved}	{reserved}
Audio Recording of Class Sessions	I will audio tape the class sessions using a portable recorder attached to my person and post links to the audio tracks on the class web site for the sole and limited educational purpose of allowing students to stream the recorded sessions to review or to enable students who missed a class to hear the class presentation. Any audio tracks created will be deleted and destroyed shortly after the final exam for the class. Since I call on students, there is a slight chance that your contributions to class discussion, whether voluntary or while on call, may be included in the audio recording. The chance is slight because the recording technology I use does a poor job of picking up any voices other than my own. Your continued registration in this class indicates your acquiescence to any such incidental recording for the purposes described above unless, if you have concerns about this, you come speak with me as soon as possible but in no event later than the first day of the second week of class.
Cancellation Day(s)	Tuesday, October 28, 2008 Thursday, October 30, 2008 Thursday, November 6, 2008
Makeup(s) for Cancelled Day(s):	Friday, September 5; regular class time and place Friday, September 19; regular class time and place Friday, November 21; regular class time and place

Contact Information and Office Hours

These are posted on my home page at:

www.law.uh.edu/faculty/gvetter/

Course Materials Links by Category

The links below are for general reference and may be used for some class assignments.

Patent Law

United States Patent and Trademark Office (PTO) Patent Page
Selected patent law sections from 35 U.S.C. xxx extracted from the U.S. PTO consolidated laws

Copyright Law

United States Copyright Office
U.S. Copyright Office web page for the U.S. Copyright Statute
Chap. 1: Subject Matter and Scope of Copyright (selected sections)
Chap. 2: Copyright Ownership and Transfer
Chap. 4: Copyright Notice, Deposit, and Registration
Chap. 5: Copyright Infringement and Remedies

Trademark Law

Course Coverage Table

The tables immediately below provide the detailed assignments for this course. It also may provide links to materials for each class and other items related to the course. In order to allow flexibility in the class, assignments beyond those posted for the next week are subject to change; therefore, students who may wish to read ahead are urged to contact the professor before doing so. The rate of progress through the modules depends on the class dynamics.

Class presentation slides are provided as links below in association with each module title. I will generally have the slides available a day or two before a class session. If students want hardcopy of the slides for use during class, please download and print the linked slides file.

After each class session, the class date will become a hyperlink to the audio for that class.

Case names are listed in the table below as assignments.

Revision to Generally Applicable Syllabus: Call assignment for cases is by individual using the first letter of the last name, proceeding alphabetically. In two instances, two persons share the same first letter of the last name, in which case a number indicates who the person is based on alphabetical order. If a person assigned to a case does not appear for a class session, the first person listed for the next class day will take that person's place. Adjustment of individual case assignments may occur up to mid-evening (around 7 pm) of the night before class. After a person has discussed a case in class, the letter indicating the assignment will be changed to upper case.

Students must email me if they will not attend in order for this system to work well.

~~The call group assignment list will be posted here for downloading as a .pdf file, with a password required to open the file. That password will be given out in class.~~

In the table each casebook assignment is given a page range to go with the assignment title. Unless the "Comment/Note" column indicates otherwise, read the entire assignment, encompassed on the indicated pages, including any notes or associated problems.

Module 1: Traditional Nontransferability (slides)
Assignment	{resv}	Comment/Notes	Date
Oliver v. Rumford Chemical Works (1883)	B2	patent	Aug. 26
Emmylou Harris v. Emus Records Corporation (9th 1984)	C
Tap Publications, Inc. v. Chinese Yellowpages (New York) Inc. (SDNY 1996)	B1		Aug. 28
PPG Industries, Inc. v. Guardian Industries Corporation (6th 1979)	D	patent
Model nonexclusive patent license	F1		Sept. 2
Intel, Inc. v. ULSI Systemtechnology, Inc. (Fed. Cir. 1993)	F2	patent	Sept. 4
King Instrument Corporation v. Otari Corporation (Fed. Cir. 1987)	G	patent
Mallinckrodt, Inc. v. Medipart, Inc. (Fed. Cir. 1992)	H	patent
Hewlett-Packard Company v. Repeat-O-Type Stencil Manufacturing Corporation, Inc. (Fed. Cir. 1997)	M*	patent Quanta v. LG (2007)	Sept. 5

Module 2: Implied Patent Licenses (slides)
Assignment	{resv}	Comment/Notes	Date
Genetic Implant Systems, Inc. v. Core-Vent Corp. (Fed. Cir. 1987)	P	patent
Bandag, Inc. v. Al Bolser's Tire Stores, Inc. (Fed. Cir. 1984)	B1	Bandag Tire Retredding process	Sept. 9
Glass Equipment Development, Inc. v. Besten, Inc. (Fed. Cir. 1999)	C	patent
Met-Coil Systems Corporation v. Korners Unlimited, Inc. (Fed. Cir. 1986)	D*	patent
Mccoy v. Mitsuboshi Cutlery, Inc. (Fed. Cir. 1995)	B2	patent	Sept. 11
Wang Laboratories, Inc. v Mitsubishi Electronics America, Inc. (Fed. Cir. 1997)	F2*	patent
Cardiovascular Diagnostics Inc. v. Boehringer Mannheim Corporation (ED NC 1997)	G	CDI 1997 10k SEC filing	Sept. 16
Anton/Bauer, Inc. v. Pag, Ltd. (Fed. Cir. 2003)	n/a

Module 3: Employer-Employee Issues (slides)
Assignment	{resv}	Comment/Notes	Date
Lane & Bodley Co. v. Lock (1893)	M*	patent	Sept. 18
Marshall v. Colgate-Palmolive-Peet Co. (3rd. 1949)	H
Gilson v. Republic of Ireland (DC Cir. 1986)	P
Wommack v. Durham Pecan Company, Inc. (5th 1983)	n/a		Sept. 19
Voith Hydro, Inc. v. Hydro West Group, Inc. (ND Cal. 1997)	B2*
Support.Com - Employment, Confidential Information and Invention Assignment Agreement	n/a
Egroups, Inc. - Proprietary Information and Invention Assignment Agreement	n/a

Module 4: Problems In Operation of Patent Licenses (slides)
Assignment	{resv}	Comment/Notes	Date
SpindelFabrik v. Schubert & Salzar (Fed. Cir. 1990)	C	patent	Sept. 23
Westinghouse Elec. & Mfg. Co. v. Tri-City Radio Elec. Supply Co. (CCA 1928)	F1	patent
Core Laboratories, Inc. v. Hayward-Wolff Research Corp. (Del. 1957)	D		Sept. 25
U.S. Valves Inc. v. Dray (Fed. Cir. 2000)	F2	patent
Mechanical Ice Tray Corp. v. GMC (2nd 1944)	F1*	patent
Rhone-Poulenc Agro, S.A. v. Dekalb Genetics Corp. (Fed. Cir. 2002)	B1		Sept. 30
Permanence Corp. v. Kennametal, Inc. (ED Mich. 1989)	G*
12 Pitfalls in Licensing Technology (paper handout)	n/a
In Re Cambridge Biotech Corp. (Fed. Cir. 1999)	H		Oct. 2
National Rubber Machinery Co. v. McNeil Machine & Engineering Co. (6th 1942)	M*	patent
AMP Inc. v. United States (U.S. Ct. Cl. 1968)	P	DFARs Table of Contents (see subpart 252.227); patent
Allen Archery, Inc. v. Precision Shooting Equip., Inc. (7th 1989)	B1	patent
Troy Iron and Nail Factory v. Erastus Corning (1852)	B2*		Oct. 7
Hoechst Celanese Corp. v. BP Chemicals Limited (SD Tex. 1994)	C
Interspiro USA, Inc. v. Figgie Int'l, Inc (Fed. Cir. 1994)	D
Troxel Manufacturing Co. v. Schwinn Bicycle Co. (6th 1972)	F1		Oct. 9
Magnus v. Commissioner of IRS (3rd 1958)	F2
Sanofi, S.A. v. Med-Tech Veterinarian Products, Inc. (D Kan. 1983)	G
Dratler, Sec.10.02 - Risks of Third-Party Infringement Claims Against Licensees	n/a	Another case of interest: Pacific Sunwear v. Olaes (Cal.App. 2008)	Oct. 14
Rite-Hite Corp. v. Kelley Co., Inc. (Fed. Cir. 1995)	H	Additional slides - main case
Medimmune, Inc. v. Genentech (2007)	M		Oct. 16
Model Exclusive Patent License	n/a	Another case of interest: Asymmetrx v. Biocare (D.Mass. 2008)

Module 5: Trade Secret and Confidential Information Licenses (slides)
Assignment	{resv}	Date
Aronson v. Quick Point Pencil Co. (1979)	P
Harvey Barnett, Inc. v. Shidler (10th 2003)	B1	Oct. 21
Merck & Co., Inc. v. Smithkline Beecham Pharmaceuticals Co. (Del. Ct. Chancery 1999)	B2
Amberley Co. v. Brown Co. (6th 1969)	C
State Medical Oxygen & Supply, Inc. v. American Medical Oxygen Co. (Montana 1989)	D	Oct. 23
VLIW Technology, LLC v. Hewlett-Packard Co. (Del. 2003)	F1
Model Trade Secret License	n/a

Module 6: Trademark Licenses and Franchises (slides)
Assignment	{resv}	Comment/Notes	Date
Oreck Corp. v. Thomson (SD Indiana 1992)	F2		Nov. 4
Villanova Univ. v. Villanova Alumni Ed. Found., Inc. (E.D. Penn 2000)	G	Villanova Athletic Dept. Announcement
John Anthony, Inc. v. Fashions by John Anthony, Inc. (TTAB 1980)	H
Birthright v. Birthright, Inc. (D. NJ 1993)	M	Class evaluations will occupy the first 10-15 minutes of class time	Nov. 11
Pneutek, Inc. v. Scherr (TTAB 1981)	P
Weight Watchers of Quebec Ltd. v. Weight Watchers International, Inc. (ED NY 1975)	B2
In re Vylene Enterprises, Inc.; Vylene Enterprises, Inc. v. Naugles, Inc. (9th 1996)	C		Nov. 13
Exxon Corporation v. Oxxford Clothes, Inc. (5th 1997)	D
Stanfield v. Osborne Industries, Inc. (D. Kan. 1993)	P
Taffy Original Designs, Inc. v. Taffy's, Inc. (ND Ill. 1966)	F2
Joseph Bancroft & Sons Co. v. Shelley Knitting Mills, Inc. (ED Penn. 1962)	G		Nov. 18
Westowne Shoes, Inc. v. Brown Group, Inc. (7th 1997)	H
MWS Wire Industries, Inc. v. California Fine Wire Co., Inc. (9th 1986)	B1
Seven-Up Bottling Company v. Seven-Up Company (8th 1977)	M
Burger King Corporation C.R. v. Weaver; M-W-M, Inc. (11th 1999)	F1		Nov. 20
MJ & Partners Restaurant v. Zadikoff (ED Ill. 1998)	B1
Torres v. Goodyear Tire & Rubber Company, Inc (Arizona 1990)	B2
Kosters v. Seven-Up Company (6th 1979)	C
FTC Franchise Rule	n/a		Nov. 21
Model trademark license	n/a

Module 7: Copyright Licenses (slides)
Assignment	{resv}	Comment/Notes	Date
Edgar Rice Burroughs, Inc. v. Metro-Goldwyn-Mayer, Inc. (Cal. Ct. Appeals 1962)	D
Edwin Kennedy v. National Juvenile Detention Association and Illinois Juvenile Justice Commission (7th 1999)	F1
Boosey & Hawkes Music Publishers, Ltd. v. Walt Disney Company (2nd 1998)	F2	ASCAP; license types	Nov. 25
Kirke La Shelle Company v. Paul Armstrong Company (NY Appeals Ct. 1933)	G
Marsu, B.V. v. Walt Disney Company (9th 1999)	M
Copyright Exhaustion Statute	n/a
Contemporary Mission, Inc. v. Famous Music Corporation (2d 1977)	h		Dec. 4
Model Copyright License	n/a

Module 8: Electronic Information Access Licenses (slides)
Assignment	{resv}	Comment/Notes	Start OH#	Date	Call Group
Advent Systems v. Unisys Corp. (3rd Cir. 1991)	p
Architectronics, Inc. v. Control Systems, Inc. (SDNY 1996)	b1
Apple Computer v. Microsoft (9th Cir. 1994)	b2
{end of assignments}

Module 9: {reserved/forthcoming} (slides)
Assignment	{resv}	Comment/Notes	Start OH#	Date	Call Group
{detailed assignments forthcoming}

Module 10: {reserved/forthcoming} (slides)
Assignment	{resv}	Comment/Notes	Start OH#	Date	Call Group
{detailed assignments forthcoming}

Module 11: {reserved/forthcoming} (slides)
Assignment	{resv}	Comment/Notes	Start OH#	Date	Call Group
{detailed assignments forthcoming}

Module 12: {reserved/forthcoming} (slides)
Assignment	{resv}	Comment/Notes	Start OH#	Date	Call Group
{detailed assignments forthcoming}

Module 13: {reserved/forthcoming} (slides)
Assignment	{resv}	Comment/Notes	Start OH#	Date	Call Group
{detailed assignments forthcoming}