Dallas Bar Association
HEADNOTES Focus Computer/Intellectual Property Law
February 2016 Volume 41 Number 2
Campaign Raises $1 Million for Equal Access to Justice BY ALICIA HERNANDEZ
The 2016 Equal Access to Justice Campaign raised $1,025,309, and during the campaign, the Dallas Bar Association has highlighted major donors to the Campaign and the importance of legal aid to the poor. Reasons for doing pro bono are many. Some simply feel blessed and want to pay it forward. Others want the opportunity to gain experience and get into the courtroom. And most want to preserve the rule of law through access to our justice system. Whatever the reason, volunteer attorneys provide valuable services to clients every day in the amount of over $2.25 million in donated legal services through DVAP every year and over $1 million in actualized benefits to DVAP clients. To donors, volunteers, and staff working in the program, these statistics mean we are doing well and push us to do even more. What it means to our pro bono clients is more personal. For many of them, it ensures they have a safe place to lay their heads. This is certainly what it meant for “Mr. Lewis” and his disabled grandson. At 87 years old, Mr. Lewis sought pro bono assistance for damage caused to his real property after his disabled grandson’s car was repossessed from his home. The repossession severely damaged gas pipes on his property, and the City of Dallas condemned Mr. Lewis’ home and cut off
Focus
his gas service because of the damage. Mr. Lewis and his grandson were without gas to cook, keep warm, and bathe. Mr. Lewis and his grandson, who both walk with canes, used two propane tanks within Mr. Lewis’ home in place of gas. Mr. Lewis filed his lawsuit pro se in small claims court against the car dealership and the repossession company. Neither defendant answered, and Mr. Lewis obtained a default judgment against both companies in which both defendants were held jointly and severally liable. The car dealership appealed to Dallas County Court at Law Number 5, and Mr. Lewis won the appeal when the dealership failed to appear at trial. The dealership then filed a Motion for New Trial. Mr. Lewis applied for help with the Motion for New Trial from the Dallas Volunteer Attorney Program, and volunteer attorneys Kendall Hayden and Alissa Christopher, of Cozen O’Connor, took the case. They received his case on October 27, 2015, with the Motion for New Trial hearing was set for October 30. Kendall, Alissa, and Mr. Lewis appeared at the hearing along with the dealership, repossession company, and lawyer for the dealership. The court denied the dealership’s motion for new trial, and Mr. Lewis was pleased and especially proud of his representation when the owner of the dealer-
ship asked if he could retain Cozen as his counsel moving forward. The car dealership called Cozen within an hour after the hearing and advised that the bond money for the judgment was in place and requested Cozen’s representation on a different legal matter. Kendall and Alissa were able to release the money, and Mr. Lewis was able to repair his home. It is definitely a good ending to a story that could have had a much different result. “Working with [Mr. Lewis] to help him recover funds to repair damage to his property was rewarding in so many ways,” said Alissa. “As lawyers, we sometimes forget that the things we do every day (i.e., filing motions, appearing in court) can be the tools that resolve what is a significant problem for someone. Also, I learned something new—how to release a cash bond that had been paid into the court’s registry. It was a win-win!” “I am beyond thrilled we were able to secure a victory for Mr. Lewis,” added Kendall. “Although crippled, and facing difficulty with his mobility, he accompanied us to court for both appearances. Watching his smile when the court ruled in our favor was heartwarming. After the hearing concluded, the other side requested our firm represent them in two separate cases, which was both a compliment and a surprise. I am glad Mr. Lewis and his family began 2016 with money in their pocket that they rightfully deserved.”
Mr. Lewis’ story is just one example of the many clients that DVAP’s volunteers help every year—all made possible by donors to the Equal Access to Justice Campaign and the lawyers who represent pro bono clients. Many clients show their thanks through nice feedback about their attorneys. Here are a few examples of the appreciation they have for their volunteer attorneys. Liz Boydston’s client said “the attorney assigned to my case is a great person, professional, plus very smart….you saved my grandson’s life.” Ashlie Alaman’s client reported that “Ms. Alaman was the BEST. Thank you so much for your help.” Mike Warren’s client said “He was like an angel to me and my son. God bless him!” Connie Thomas’ client said “She kept me informed every step of the way and was very professional through the whole process! She rocks!” Jonathan Rosamond’s client wanted the defendant in his case know that “you can’t use people.” He got what he wanted and said “thank you very much!” Thank you to all DVAP’s generous donors HN and volunteers! Alicia Hernandez is the director of the Dallas Volunteer Attorney Program and the DBA director of community services. She can be reached at ahernandez@dallasbar.org.
Computer/Intellectual Property Law
To Covenant or to License, That is the Question BY NIKY BUKOVCAN
Patent law, like copyright and trademark law, grants inventors the right to prevent others from making, using, or selling the inventor’s invention or discovery for a limited time. This is akin to the right a landowner has to the exclusive enjoyment of his or her land. The right to exclude others is one of the most essential sticks in the bundle of rights that are commonly associated with property— whether that be real or intellectual property. When a patent holder (patentee) grants a licensor a non-exclusive license, or what is sometimes referred to as a “bare license,” the patentee in essence is only granting a right to freedom from suit, while reserving the right to grant similar licenses to others. This is, of course, different than an exclusive license, which is not discussed here. As a patentee’s right is only an exclusionary one and not an affirmative property right, he or she can only grant freedom from suit when another makes, uses, or sells his or her patented invention—despite what a license may purport to convey. That is because the patentee cannot convey what the patentee does not have. This principle is deeply rooted in prec-
edent, such as De Forest Radio v. U.S., 273 U.S. 236 (1927) and TransCore v. Electronic Transaction Consultants, 563 F.3d 1272 (Fed. Cir. 2009), that unambiguously defines a non-exclusive license as nothing more than a covenant not to sue. It follows, therefore, that a covenant not to sue (CNS) is the same as a non-exclusive license. The difference is only one of form, not substance. The scope of the authorization granted by a CNS turns on the specific language of its instrument. In TransCore, the Federal Circuit found that an agreement stating that the patentee “agrees and covenants not to bring any demand, claim, lawsuit, or action against [defendant] for future infringement” is “without apparent restriction or limitation” and “authorizes all acts that would otherwise be infringement: making, using, offering for sale, selling or importing.” Significantly, the court noted that the patentee could have limited the scope of the covenant by authorizing only the “making” or “using” of the patented invention. 563 F.3d at 1276. The scope of a CNS is important as it may be used to divest the court of subject matter jurisdiction and shield not only the alleged infringer from suit but also the intellectual property owner. For example,
in Already v. Nike, the Supreme Court used the MedImmune standard to hold that when a trademark owner entered into an unconditional CNS with respect to the alleged infringer’s past, present, and future acts, the CNS was deemed to have resolved the actual controversy between the parties such that the court no longer had Article III jurisdiction to hear a declaratory judgement action regarding the validity or enforceability of the trademark. 133 S.Ct. 721 (2013). Under the same standard, however, the Federal Circuit has found that a CNS was insufficient to dispense of a controversy between the parties because it failed to cover the alleged infringer’s future acts. A release for past and present infringement will not suffice. Additionally, a CNS granted postverdict has also been found to have no effect as the controversy is deemed to have been resolved by the jury, not the covenant. The ramifications of a CNS extend to other areas of law as well: • Patent Exhaustion: A CNS has been found to exhaust a patent owner’s right to assert infringement against downstream customers. • Implied Licenses to Other Patents: The doctrine of legal estoppel applies
to prevent a patentee from bringing suit under a later acquired patent if that later acquired patent is necessary to practice the invention that is subject to a CNS. • Successors in Interest: Patents that are assigned or otherwise transferred to a third party are subject to the original grantor’s CNS. However, the CNS is not imputed to the third party’s other patents. The above is consistent with federal appellate decisions. Lower courts applying state contract law, however, have produced mixed results. A recent case, Meso v. Roche, attempted to challenge a state court’s failure to recognize a CNS as a license. The Supreme Court did not take up the case, perhaps because of the actual facts of Meso or perhaps because federal authority is clear enough. Regardless, to avoid unpredictable results in state and district courts, prudent practitioners should draft agreements with both a license and a covenant provision. Although redundant, perhaps then the parties’ intent will be interpreted correctly. HN One can only hope anyway. Niky Bukovcan is an associate at Buether Joe & Carpenter, LLC. She can be reached at niky. bukovcan@bjciplaw.com.
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