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Volume 5 | Number 1

Volume 5 | Number 1 (Winter 2005)

You may download and read the Full Edition, or click on a citation below for the individual articles.

REVISITING A REASONABLE ROYALTY AS A MEASURE OF DAMAGES
FOR PATENT INFRINGEMENT
John J. Barnhardt III
5 Wake Forest Intell. Prop. L. J. 1
Reprinted with the permission of JPTOS vol. 86, no. 12

Is there a difference between the amount of a “reasonable royalty” for the use of a patented invention and a reasonable royalty for the use of the same invention by an infringer? As noted in this article, several courts including the United States Court of Appeals for the Federal Circuit have sometimes answered that question affirmatively, even in instances in which the infringement was not willful and the case was not “extraordinary.” This article addresses that question both within and without the context of the analytical framework typically employed in determining a reasonable royalty following a determination that a patent is not invalid and that it has been infringed.

INT’L BANCORP: THE FOURTH CIRCUIT GAMBLES WITH SERVICE MARKS RENDERED IN FOREIGN COMMERCE
C. Daniel Lins
5 Wake Forest Intell. Prop. L.J. 25

This Comment will explore the recent cases which have dealt with the issue of “use in commerce” in § 1127. Part II.A provides a primer on trademarks and trademark infringement. Part II.B examines the pre-Int’l Bancorp cases, which found that services rendered outside the United Stateswere not protectable. Part II.C scrutinizes the most recent controversial foray in this arena and will analyze Int’l Bancorp in great detail. Finally, Part III seeks common ground between the circuits, provides arguments for and against Int’l Bancorp’s expansive view of “commerce” in § 1127, and proffers possible remedies for the resulting circuit confusion.

CHOICE OF LAW DOCTRINE IN THE FEDERAL COURT
Jitendra Malik
5 Wake Forest Intell. Prop. L. J. 54

This paper explores the contours of and describes how the Federal Circuit developed its unique choice of law doctrine. Part I of this paper describes the Federal Circuit, its function within the federal court system, its jurisdictional grant, and its purpose. Part II describes the structure of the federal courts and how the choice of law problem emerged in the Federal Circuit. Part III presents the development of the Federal Circuit’s choice of law doctrine with respect to federal non-patent claims and the Federal Circuit’s justification for adopting its choice of law doctrine. Part IV describes how the choice of law doctrine relates to state law claims.