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Ideas on Intellectual Property Law - February / March 2020

February 1, 2020
Ideas on Intellectual Property Law Newsletter
February / March 2020

Auto parts’ aesthetic appeal doesn’t invalidate design patents
Holders of design patents received some welcome news recently from a case in which some auto parts distributors sought declaratory judgment for invalidity of design patents to sell parts that were covered by a major vehicle manufacturer’s designs. This article reviews a case from the U.S. Court of Appeals for the Federal Circuit that sheds some valuable light on the type of functionality that can render a design patent invalid — and the type that won’t — as well as the importance of design patents. A short sidebar reviews the exhaustion and repair doctrines’ roles in the case.
Automotive Body Parts Ass’n v. Ford Global Techs., LLC, No. 18-1613, July 11, 2019, Fed. Cir.

Actual consumer confusion irrelevant in trademark profits determination
It’s easy to understand why willful infringement deserves a harsher punishment than nonwillful infringement. But it’s not always so easy to understand the type of conduct that gives rise to the level of “willful.” This article discusses a case from the U.S. Court of Appeals for the Second Circuit that provided some helpful guidance on this issue, as well as the evidence required to justify an award of the infringer’s profits.
4 Pillar Dynasty LLC v. New York & Co., Inc., No. 17-2398, July 5, 2019, 2d Cir.

Beyond words
Federal Circuit faults PTAB’s written description analysis
The Patent Trial and Appeal Board (PTAB) doesn’t always get it right. This was demonstrated once again in a case where the U.S. Court of Appeals for the Federal Circuit found that the board had improperly failed to consider some vital factors when evaluating whether a patent application contained the requisite written description of the invention. This article highlights the disagreement between the PTAB and the appellate court.
In re: Global IP Holdings LLC, No. 18-1426, July 5, 2019, Fed. Cir.

Third Circuit rejects copyright presumption in favor of permanent injunctions
After securing a copyright infringement verdict, it should be easier to obtain a permanent injunction against the infringing party, right? Not so in several jurisdictions. This article summarizes a decision from the U.S. Court of Appeals for the Third Circuit that has now made it harder for copyright holders to get injunctive relief, even after prevailing in court.
TD Bank N.A. v. Hill, No. 16-2897, July 1, 2019, 3d Cir.; eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (2006)

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