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In Robert Bosch LLC v. Pylon Mfg. Corp. (Fed. Cir. October 13, 2011) the Federal Circuit revisited the standards for issuing permanent injunctions after judgment has been entered finding infringement and validity. Specifically, the court made it crystal clear that findings of validity and infringement do not give rise to a presumption of irreparable harm. In doing so, however, the court also made it clear that the eBay pendulum has not swung nearly as far in favor of infringers as some have predicted.
One thing all Internet domain names (e.g., yourbusiness.com) have in common is the necessity of a top level domain, or “TLD,” such as .com, .net, .us, or any of over 250 other country-code and generic TLD extensions. As of September 2011, a new TLD, .xxx, has been added. The new .xxx TLD is, as the name suggests, a TLD dedicated to Internet-based adult entertainment. It is a “sponsored” TLD, meaning the public at large cannot register .xxx domain names, only members of the “Sponsored Community,” namely, persons and entities affiliated with providing Internet-based adult entertainment content. But this by no means guarantees that a trademark owned by a non-adult entertainment provider is safe from becoming part of a .xxx domain name. The same force that has driven piracy of domain names for years—the ability of high value trademarks to draw Internet traffic—will no doubt drive adult entertainment providers to try to register high value trademarks as .xxx domain names. An adult entertainment provider might thus try to register a .xxx domain name featuring your valuable trademark simply because of its notoriety, hoping to co-opt the fame of your mark into increased traffic to its website. Cognizant of this risk, ICANN, the governing body for Internet domain names, has placed additional conditions on the initial allocation of .xxx domain names. Chief among these is the opportunity for non-adult entertainment providers to reserve their trademarks during a “sunrise” period that is presently underway or, failing that, to register them later as non-resolving domain names incapable of linking to websites. In either instance, you can act now to decrease the likelihood that your trademarks will appear in .xxx domain names and thereby link your mark and your company to adult entertainment.
The opinions of the Federal Circuit and Supreme Court over the past ten to fifteen years have had few bright moments for patent owners. Proving infringement has become more difficult, and proving invalidity has become easier. The Federal Circuit’s recent decision in Therasense v. Becton Dickinson and Co. departs from this trend, increasing in significant ways the burden on defendants attempting to prove patents unenforceable for inequitable conduct.
On May 31, 2011, the U.S. Supreme Court decided Global-Tech Appliances, Inc. v. SEB S.A. At issue in Global-Tech was the mens rea (i.e., state of mind) required for a finding of “active inducement” under 35 U.S.C. § 271(b).
On June 9, 2011, the U.S. Supreme Court decided Microsoft Corp v. i4i Limited Partnership. Section 282 of the Patent Act states that “[a] patent shall be presumed valid” and that “[t]he burden of establishing invalidity . . . shall rest on the party asserting it.” Since 1984, the U.S. Court of Appeals for the Federal Circuit has read § 282 to require an accused infringer seeking to prove invalidity to do so by “clear and convincing evidence.” American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1359-60 (Fed. Cir. 1984).
Stanford v. Roche BOARD OF TRUSTEES OF THE LELAND STANFORD JUNIOR UNIVERSITY v. ROCHE MOLECULAR SYSTEMS, INC., 563 U.S. _____ (2011)