Case Law Updates

Supreme Court Rules APJs Are Inferior Officers, Grants Director Additional Oversight Review

by Christopher H. Blaszkowski & Shayne D. Rasay In United States v. Arthrex, Inc., 594 U.S. ___ (2021), the Supreme Court determined that the authority exercised by Administrative Patent Judges (APJs) in rendering inter partes review (IPR) decisions as members of the Patent Trial and Appeal Board (PTAB) violates the Appointments Clause of the Constitution. […]

Read more

Booking.com Decision Potentially Opens The Floodgates For Federal Trademark Registration of “[Generic Term].com” Domain Names

Written by: Rex A. Donnelly On June 30, 2020, the U.S. Supreme Court issued an 8-1 opinion finding “Booking.com” is not generic for online hotel-reservation services, expressly declining to adopt a per se rule urged by the United States Patent and Trademark Office (USPTO) that would have essentially excluded registration of all “[generic term].com” marks. […]

Read more

Supreme Court Makes Clear – Plaintiffs Do Not Need to Prove Willfulness Before Lost Profits Can Be Awarded for Trademark Infringement

Written by: Benjamin E. Leace In a 9-0 decision, the Supreme Court held that a plaintiff is not required to prove a defendant willfully infringed a trademark as a prerequisite to a court awarding lost profits damages.  Romag Fasteners, Inc. v. Fossil, Inc., 590 U. S. ____ (2020). Romag is a trademark dispute involving Fossil […]

Read more

USPTO Says AI Machine Can’t Be Named Inventor

Written by: Brett J. Rosen On April 27, 2020, the U.S. Patent and Trademark Office (PTO) announced that it denied an Applicant’s request to recognize an Artificial Intelligence (AI) computer program named “DABUS – Invention Generated by Artificial Intelligence” as an inventor on a pending U.S. patent application.  A copy of the decision can be […]

Read more

Supreme Court Holds that the PTAB Has the First and Last Word In Determining Whether IPRs Are Time-Barred

Written by: Benjamin E. Leace The Supreme Court in a 7 -2 decision held that a decision by the PTAB on whether an inter partes review (IPR) is time-barred is NOT reviewable by the courts.  THRYV, INC. v. CLICK-TO-CALL TECHNOLOGIES, LP. 590 U.S. ____ (2020).  In other words, the PTAB’s decision to institute an IPR […]

Read more

SCOTUS Confirms That Salaries of USPTO Legal Staff Are Not “Expenses” That An Applicant/Plaintiff Must Pay In a Civil Action Under 35 U.S.C. § 145.

Written by: Shayne D. Rasay In Peter v. NantKwest, Inc., the Supreme Court established a bright-line rule that the United States Patent and Trademark Office (PTO) may not recover legal personnel fees as “expenses” under 35 U.S.C. § 145. The language referencing “expenses” in § 145 states that “[a]ll the expenses of the proceedings shall […]

Read more

Alice Meets Automotive: Damping Propshaft Latest Automotive Innovation Deemed Ineligible by Federal Circuit

Written by: Andrew J. Koopman With its latest application of Alice precedent, the Federal Circuit affirmed the invalidation of claims covering methods for manufacturing propshafts in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC.  The Court’s ruling is the latest in a line of recent cases upholding judicial exceptions to subject matter eligibility in the face […]

Read more

A Temporary (?) Open Season on Four Letter Words at the PTO; Supreme Court Overturns the Lanham Act’s Bar on Registration of Immoral and Scandalous Trademarks

Written by: Rex. A Donnelly Following on its decision two terms ago that the Lanham Act’s bar on the registration of “disparaging” trademarks violated the First Amendment (Matal v. Tam, 582 U. S. ___ (2017)), the Supreme Court has now struck the related bar on registration of “immoral or scandalous” trademarks.  Both bars infringe the […]

Read more

Supreme Court Holds Trademark Licensees Can Continue Using Marks after Termination by Bankrupt Licensors, but Leaves Goodwill Exposed

Written by. Rex A. Donnelly The Supreme Court’s May 20 decision in Mission Product Holdings, Inc. v. Tempnology, LLC resolved a dispute among the circuits and may have had some trademark licensees breathing a sigh of relief – no longer will a debtor-in-possession-licensor’s rejection of a license agreement terminate all rights of the licensee to […]

Read more

Discretionary Denials Gain Momentum at the Patent Trial and Appeal Board

Written by: Benjamin E. Leace & Christopher H. Blaszkowski On May 7, 2019, Patent Trial and Appeal Board (PTAB) designated multiple decisions as precedential and informative.  Each of the newly designated decisions described below relate to the PTAB’s inherent authority under 35 U.S.C. § 325(d) and 35 U.S.C. § 314(a) to deny institution even where […]

Read more

Previous Entries

Please enter your e-mail address to receive a link to the webinar video.

This site is protected by reCAPTCHA and the Google Privacy Policy and Terms of Service apply.

Please enter your e-mail address to receive a link to the webinar video.

This site is protected by reCAPTCHA and the Google Privacy Policy and Terms of Service apply.