By David McCombs, Haynes and Boone, LLPPhillip B. Philbin, Haynes and Boone, LLPEllie Simpson, Haynes and Boone, LLPBethany Hrischuk, Haynes and Boone, LLP

This article surveys significant developments in intellectual property (IP) law during the past year (i.e., 2016 or the Survey period). This article reviews IP law developments that are likely to be influential in the evolution of Texas IP jurisprudence. Thus, the cases cited focus on the decisions of the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit. For developments in copyright and trademark law, although the U.S. Court of Appeals for the Fifth Circuit’s authority is binding, other circuits are considered highly persuasive.

The U.S. Supreme Court decided several cases involving IP issues. In patents, the Supreme Court showed particular interest in design patent damages and whether an infringer should be liable for the full extent of the profit even where the infringing design only accounts for a portion of the overall product. The Supreme Court also considered whether the two-part Seagate test for enhanced damages is consistent with the Patent Act.4 As for administrative proceedings, the Supreme Court addressed whether an inter partes review was improperly instituted and whether it is appropriate to apply the “broadest reasonable construction” standard for claim construction in such proceedings.

The U.S. Court of Appeals for the Federal Circuit also made important developments to its patent law jurisprudence. For example, the Federal Circuit clarified the application of Alice by finding in one case that not all computer-related inventions are directed towards abstract ideas, and in another, that even where a computer-related patent is directed to an abstract idea, it may still contain an inventive concept that renders the invention patentable.

In copyright, the U.S. Court of Appeals for the Sixth Circuit determined that the Copyright Act protects graphic features of a design even where those features cannot be physically separated from the “useful article.”

In trademark, the U.S. Court of Appeals for the Federal Circuit confirmed that the bar to show “use in commerce” for the purposes of obtaining a federal trademark registration is low, considering the breadth of Congress’s power under the Commerce Clause. Also, the U.S. Court of Appeals for the Fourth Circuit took a broad look at the Lanham Act, finding that owners of foreign trademarks, even with no domestic use, are eligible to bring false association, false advertising, and trademark cancellation actions in the United States.

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Recommended Citation
David McCombs, et al., Intellectual Property Law, 3 SMU Ann. Tex. Surv. 237 (2017)