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IP Newsletter - Year End 2020

December 1, 2020

SCOTUS has no reservations about trademark
The U.S. Supreme Court recently sided with digital travel company in a much-anticipated trademark ruling. The Court’s holding, which makes the combination of a generic word with “.com” eligible for federal trademark registration, reportedly has already led to a wave of registration applications for such terms. This article reviews the Court’s reasoning and a short sidebar discusses its discussion regarding relevant evidence such as dictionaries, usage by consumers and competitors, and consumer surveys.
USPTO v., No. 19-46, June 30, 2020, U.S.

There’s no “I” in team
Court adds co-inventors to patents
Some types of inventions are the result of extensive collaboration, but not every collaborator qualifies as an inventor for patent purposes. The exclusion or inclusion of individuals as inventors can have significant implications, financially and otherwise. This article highlights a recent case involving a cancer treatment reviewing the concept of joint inventorship.
Dana-Farber Cancer Institute v. Ono Pharm. Co., Ltd., No. 19-2050, July 14, 2020, Fed. Cir.

Cosmetic differences
Copyright Act preempts state law claims over makeup artistry
To qualify for copyright protection, works must be “fixed in a tangible medium of expression.” Does human skin count as a tangible medium of expression? The U.S. Court of Appeals for the Second Circuit considered that question in a recent case — but in the end held off on a decision. This article reviews the court’s decision to find a different basis for ruling against the plaintiff.
Mourabit v. Klein, No. 19-2142, June 8, 2020, 2d Cir.

Court affirms PTAB’s common sense obviousness analysis
Common sense can go a long way. And patent litigants shouldn’t be surprised at just how far it can go when a court determines whether a patent is invalid for being obvious. This article discusses a case in which the court found that, while common sense shouldn’t be used as a wholesale substitute for reasoned analysis and evidentiary support, the Patent Trial and Appeal Board’s use of common sense was accompanied by the necessary analysis and support.
B/E Aerospace, Inc. v. C&D Zodiac, Inc., No. 19-1935, June 26, 2020, Fed. Cir.; KSR Int’l Co. v. Teleflex Inc., No. 04–1350, Supreme Court (2007).

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