AIPLA Direct is an exclusive online information service that delivers substantive, to the point, and useful information to all AIPLA members. Substance, clarity, and brevity are the hallmarks of this newsletter. Cases, rulemaking, legislation, and industry developments are carefully distilled and reported.



  • Direct Live Senator Coons AIPLA Q&A with Senator Chris Coons

    August 4, 2020

    In this edition of AIPLA Direct Live, AIPLA President Barbara A. Fiacco asks the Honorable Chris Coons, United States Senator from Delaware, about the state of the intellectual property landscape.
  • Senator Tillis 2020 Web AIPLA Q&A with Senator Thom Tillis

    July 1, 2020

    Senator Tillis speaks on his tenure as Chairman of the Senate Judiciary IP Subcommittee, the need for strong intellectual property protection, Section 101 reform, DMCA review, oversight over the USPTO and the Copyright Office, and more.
  • Booking-400x200 SCOTUS Rules That Addition of “.com” to a Generic Term Can Create a Trademark

    June 30, 2020

    On June 30, 2020, the U.S. Supreme Court held that the addition of “.com” to a generic term can create a protectable trademark, affirming a decision by the U.S. Court of Appeals for the Fourth Circuit. United States Patent and Trademark Office v. B.V., U.S., No. 19-46. In doing so, the Court rejected the United States Patent and Trademark Office's (USPTO) "nearly per se rule" that when a generic term is combined with a generic top-level domain the resulting combination is generic.
  • Jeans Supreme Court Dismisses ‘Defense Preclusion’ in Designer Jeans Trademark Fight

    May 14, 2020

    On May 14, 2020, the US Supreme Court reversed and remanded the US Court of Appeals for the Second Circuit's decision in Marcel Fashions Grp., Inc. v. Lucky Brand Dungarees, Inc., et al. No. 2017-0361, (2nd. Cir.), ruling that federal preclusion principles do not bar Lucky Brand Dungarees, Inc. (Lucky Brand) from raising a defense it failed to litigate in an earlier suit between it and Marcel Fashions Group, Inc. (Marcel).
  • PublicResource-400 Georgia Loses Annotated Code Copyright Battle at Supreme Court

    April 27, 2020

    Copyright protection does not extend to works produced by judges or legislators in the course of their official duties, the United States Supreme Court held on April 27, 2020. Georgia v. Public.Resource.Org, Inc., U.S., 18-1150.
  • Handbag v1 Supreme Court Finds Willfulness Not Required for Trademark Profit Award

    April 23, 2020

    On April 23, 2020, the United States Supreme Court vacated and remanded the US Court of Appeals for the Federal Circuit's decision in Romag Fasteners, Inc. v. Fossil, Inc., No. 2018-2417 (Fed. Cir. 2019), ruling that a plaintiff is not required to show that a defendant willfully infringed the plaintiff’s trademark as a precondition to a profits award.
  • Time Bar Supreme Court Says PTAB’s Time Bar Decisions Not Appealable

    April 20, 2020

    The United States Supreme Court on April 20, 2020, held that 35 U.S.C. § 314(d), which states that the Patent Trial and Appeal Board's (PTAB) decision to institute an inter partes review (IPR) is nonappealable, also precludes judicial review of a time bar determination under 35 U.S.C. § 315(b).
  • American Rule v1 Supreme Court Says Government Can't Recoup Attorney's Fees When Defending § 145 Actions

    December 11, 2019

    The United States Patent and Trademark Office (USPTO) cannot recover the pro rata salaries of its legal personnel under § 145 of the Patent Act, the Supreme Court held December 11, 2019. Peter vs. NantKwest, Inc., U.S., No. 18-801, 12/11/19.
  • FUCT Supreme Court Finds Bar on Scandalous or Immoral Trademarks Unconstitutional

    June 25, 2019

    On June 24, 2019, the Supreme Court upheld the Federal Circuit's decision in In re Brunetti, 877 F.3d 1330 (Fed. Cir. 2017), ruling that the Lanham Act provision which bars the registration of “immoral[ ] or scandalous” trademarks violates the First Amendment. Iancu v. Brunetti, No. 18-302, 6/24/2019.
  • Supreme Court Says Government Can't Challenge Patents Through AIA Proceedings

    June 11, 2019

  • USPTO Scott Boalick Named PTAB Chief Judge

    March 13, 2019

    The USPTO has appointed Scott R. Boalick as Chief Judge for the Patent Trial and Appeal Board (PTAB).
  • Helsinn Helsinn: Supreme Court Rules That AIA Did Not Change On-Sale Doctrine

    January 23, 2019

    The Supreme Court held that the America Invents Act (AIA) did not change the on-sale doctrine, affirming the decision of the Federal Circuit.
  • USPTO Crest USPTO Announces Revised Guidance on Sections 101 and 112

    January 4, 2019

    The United States Patent and Trademark Office (USPTO) on January 4, 2019, announced newly revised 35 U.S.C. § 101 guidance for use by USPTO personnel in evaluating subject matter eligibility. The USPTO also announced guidance on the application of 35 U.S.C. § 112 to computer-implemented inventions.
  • USPTO Issues Final Rule on Claim Construction Standard USPTO Issues Final Rule on Claim Construction Standard

    October 11, 2018

    The final rule replaces the "broadest reasonable interpretation" standard with the federal court claim construction standard, also known as the Phillips standard, that is used to construe a claim in a civil action under 35 U.S.C. § 282(b).
  • David Ruschke to Become Senior Advisor to Patents

    September 2, 2018

    USPTO Patent Trial and Appeal Board (PTAB) Chief Judge David P. Ruschke is stepping down from his current role on September 2, 2018, to accept a new position as Senior Advisor to Patents, according to the USPTO.
  • Fees ​USPTO May Not Collect Attorneys’ Fees in Section 145 Actions​

    July 30, 2018

    The U.S. Patent and Trademark Office is not entitled to an award of attorneys' fees under the statutory language in 35 U.S.C. 145 stating that "[a]ll the expenses of the proceedings shall be paid by the applicant," the en banc Federal Circuit held July 27, 2018 in a 7-4 decision. Nantkwest, Inc. v. Iancu, Fed. Cir., No. 16-1794, 7/27/2018.
  • Ocean Surveying Lost Foreign Profits May Be Recovered For Section 271(f)(2) Infringement

    June 22, 2018

    Section 284 of the Patent Act permits an award of foreign lost profits as well as damages for infringement under Section 271(f)(2) by supplying components of a patented invention overseas for assembly there, the Supreme Court held June 22, 2018. WesternGeco LLC v. Ion Geophysical Corp., U.S., No. 16-1011, 6/22/2018. The ruling is consistent with an AIPLA amicus brief filed in this case.
  • Hydraulic Fracturing Supreme Court Issues 2 IPR-Related Decisions

    April 24, 2018

    On April 24, 2018, the US Supreme Court released two decisions related to Inter Partes Review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB).
  • Oral Argument Supreme Court Hears Oral Argument On Non-Instituted Claims in PTAB Decisions

    November 29, 2017

    The Supreme Court on November 27, 2017 heard oral argument on whether the Patent Trial and Appeal Board (PTAB) is required by 35 U.S.C. 318(a) to address every patent claim challenged in a petition for inter partes review (IPR). SAS Institute, Inc. v. Lee, U.S., 16-969, oral argument 11/27/2017.
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