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IN BOOKING.COM CASE, SUPREME COURT HOLDS THAT A GENERIC WORD FOLLOWED BY A TOP-LEVEL DOMAIN NAME MAY BE ELIGIBLE FOR FEDERAL REGISTRATION
June 30, 2020

In United States Patent and Trademark Office et al. v. Booking.com B. V., the Supreme Court rejected the United States Patent and Trademark Office’s (“PTO”) hidebound rule that the combination of a generic word and “.com” is also generic.

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The USPTO’s COVID-19 Prioritized Examination Pilot Program
June 9, 2020

On May 8, 2020, the USPTO announced that it will initiate a COVID-19 Prioritized Examination Pilot Program, under which it will accept 500 qualifying patent applications for prioritized examinations and exempt them from the normal prioritized examination fees.  Prioritized examination puts an application on a fast track rather than waiting for examination to begin in the normal queue, which may take years.

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US Supreme Court Holds that New York Convention Does Not Bar Invocation of Arbitration Agreements by Non-Signatories
June 4, 2020

A unanimous Supreme Court has held that the Convention on the Recognition and Enforcement of Arbitral Awards (New York Convention) does not bar non-signatories from asserting arbitration agreements under principals of domestic law.  GE Power Energy Conversion France SAS Corp. v. Outokumpu Stainless USA, LLC, et al, No. 18-1048, 2020 WL 2814297 (U.S. Supreme Court, June 1, 2020).  

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Fitting Illumina v. Ariosa into Post-Mayo Section 101 Jurisprudence
May 28, 2020

In Illumina v. Ariosa, 2019-1419 (Fed. Cir. March 17, 2020) (“Illumina”), the Federal Circuit held “method of preparing” life science claims patent-eligible under § 101, concluding that the claims were distinct from diagnostic claims and not “directed to” a natural phenomenon. The 2-1 panel majority reversed a Northern District of California ruling that the claims of the two related patents-at-issue were patent-ineligible.   The decision may have significant doctrinal impacts. 

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Patent Owner’s Freedom of Speech to Communicate with Alleged Infringers Is Protected Unless Made in Bad Faith and “Objectively Baseless”
May 12, 2020

In Myco Industries, Inc. v, BlephEx, LLC (Case No. 2019-2374, April 3, 2020), the Federal Circuit held that a patent owner has a First Amendment right to communicate with alleged infringers, unless such communications are objectively baseless and made in bad faith.

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The Federal Circuit Clarifies Standard for Removal Where a Last-Minute Patent Issue Arises in a State Court Trade Secrets Case
May 4, 2020

In a case decided earlier last month, the Federal Circuit addressed the always difficult issue of when patent issues raised as part of the proof of claims that otherwise sound in state law are sufficiently preponderant to justify removal.  Intellisoft, Ltd. et al. v. Acer America Corporation, et al., 2020 WL 1647241 (Fed. Cir. April 3, 2020).

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Supreme Court Holds that Official Annotations of Georgia’s Code are Not Copyrightable
April 27, 2020

In a 5-4 decision published on April 27, 2020, the U.S. Supreme Court held in Georgia, et al., Petitioners v. Public.Resource.Org, Inc. that copyright protection does not extend to the annotations contained in Georgia’s official annotated code.  Chief Justice Roberts delivered the Court’s opinion, which Sotomayor, Kagan, Gorsuch and Kavanaugh joined.  Thomas dissented (with Alito joining and Breyer joining in part), as did Ginsberg (with Breyer joining).

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Justices Open the Door for Profit Awards Absent a Showing of Willfulness
April 23, 2020

Resolving a circuit split, on April 23, 2020, in Romag Fasteners, Inc. v. Fossil, Inc. a unanimous U.S. Supreme Court held that a trademark plaintiff need not prove that the defendant acted willfully to obtain a profits award, overruling what was settled law in the Second Circuit.

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SDNY Won’t Let Photographer Renege on Granting Instagram a Sub-licensable License
April 23, 2020

In a concise, well-reasoned decision published on April 13, 2020, Judge Kimba Wood of the Southern District of New York dismissed a photographer’s claim that digital media website Mashable infringed her copyright by embedding her Instagram post on its website.  See Sinclair v. Ziff Davis LLC,  18-cv-790 (KHM) (SDNY).

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Federal Circuit Addresses When the Petitioner in An IPR Proceeding Can Submit New Evidence in Replying to the Patent Owner’s Response
April 21, 2020

The USPTO’s Patent Trial Practice Guide (“Practice Guide”) states that, during an AIA trial proceeding, a petitioner may file a reply to a patent owner’s response.  (See Practice Guide, Section II(I).)  But the Practice Guide puts limits on what the petitioner may argue in its reply. 

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