Vibrations at the Federal Circuit: American Axle and the “New” “Nothing More” Test of Patent Subject Matter Eligibility

By Daniel M. Staren and David G. Barker The Federal Circuit’s recent decisions in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC have not clarified the standard for patent eligibility under 35 U.S.C. § 101 (see a previous analysis of § 101’s unpredictability here). In this case, significant differences among Federal Circuit judges turned on whether a patent claim that invokes a natural law, and nothing else, to accomplish a desired result is patent eligible under Section 101. Despite strong dissents regarding this “nothing more” test, the original and modified panel opinions and the 6-6 order denying rehearing en   Read More »

Posted in Patent Litigation | Tagged , , ,

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Generic.com Terms May Be Eligible for Federal Trademark Protection

By Jessica D. Kemper and David G. Barker Today, the Supreme Court held in U.S. Patent & Trademark Office v. Booking.com B.V. that a generic term paired with an internet designation such as “.com” (called a “generic.com” term by the Court) may be eligible for federal trademark registration.  When will a generic.com term be eligible for registration?  According to the Court, one key consideration is whether consumers associate the generic.com term with the source of the goods or services. A generic term—the name of the good or service itself—is not eligible for trademark protection because it cannot distinguish one company’s   Read More »

Posted in Internet and Domain Name Litigation, Trademark Litigation | Tagged ,

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Supreme Court Determines No Claim Preclusion of Defense in Trademark Infringement Suit

By Jessica D. Kemper and David G. Barker Today, a unanimous Supreme Court held in Lucky Brand Dungarees, Inc. v. Marcel Fashions Group., Inc. that claim preclusion did not prevent Lucky Brand from asserting a defense it failed to fully litigate in a prior lawsuit with Marcel.  The Court did not strictly endorse “defense preclusion”—a doctrine that would prevent litigants from asserting defenses in new litigation that were asserted or could have asserted in prior litigation; it decided the case on general claim preclusion principles. The case has a complicated history.  In 2001, Marcel sued Lucky for trademark infringement of   Read More »

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If No One Owns the Law, Who Owns the Statutory Annotations?

By Mary Hallerman Last week, the Supreme Court held in Georgia v. Public.Resource.Org, Inc., that legislators cannot copyright any works that they created in the course of their official duties. Though the holding may appear straightforward and narrow, the Court unearthed the centuries-old government edicts doctrine to reach its decision and emphasized the importance of the circumstances of creation in determining copyright ownership. What led to the Supreme Court’s excavation of the government edicts doctrine? Oddly enough, alleged infringement on the Internet. A nonprofit, Public.Resource.Org, published the Official Code of Georgia Annotated (“OCGA”) online without Georgia’s permission. As the name suggests,   Read More »

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At Long Last, Supreme Court Resolves Circuit Split Over Lanham Act Profits

By Mary Hallerman The Supreme Court unanimously held that willfulness is not prerequisite to an award of a defendant’s profits under the Lanham Act. The decision in Romag Fasteners, Inc. v. Fossil Group resolved a longstanding circuit split on this issue, but given the swift manner the Supreme Court dealt with the issue, one wonders why courts were even split in the first place. The Lanham Act provides that a prevailing plaintiff is entitled to recover a defendant’s profits “subject to the principles of equity.” See 15 U.S.C. § 1117(a). Certain circuits—the Third, Fourth, Fifth, Sixth, Seventh, and Eleventh—considered willfulness   Read More »

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