Eligibility of Mechanical Method for Patent and SMART KEYBOARD Mark for “Keyboards”

Our weekly SoCal IP Institute meeting on Monday, February 1, 2021 will be a discussion of a Federal Circuit case finding mechanical subject matter ineligible for patent and a TTAB refusal to register a mark to the supplemental register:

In American Axle & Mfg. v. Neapco Holdings (Fed. Cir. July 31, 2020)  (available here), the court affirmed that certain method claims of the subject patent lacked eligibility.  The patent presents a method of manufacturing a drive-shaft assembly with an internal liner to reduce vibration, which the court found not patent eligible because it is directed to a law of nature.  The patent employs functional language at the point of novelty, an improvement in vibration damping, but does not require a particular approach to achieving the damping result.

In In re Apple Inc., Serial No. 86857587 (January 13, 2020) [not precedential] (available here), the Board affirmed a refusal to register the mark SMART KEYBOARD on the Supplemental Register for “accessory for a handheld mobile digital device, namely, a protective and decorative cover for a tablet computer that functions as a computer stand and incorporates a keyboard,” on the ground of genericness.  The Board applied a two-part test to determine genericness: “(1) what is the genus (class or category) of the goods or services at issue? and (2) does the relevant public understand the designation primarily to refer to that genus of goods or services?”  Applicant appeared to have purposely constructed its identification of goods to deemphasize their main function to avoid a finding of genericness.  However, the Board concluded that Apple’s particular keyboard is just one of many advanced keyboards that may be described as a smart keyboard.

We will discuss these cases at our weekly SoCal IP Institute with any who wish to join us on a video conference on February 1, 2021 at 1:00 pm. Simply email elisham @ socalip.com (remove the spaces which were added to to avoid spammers) to RSVP. This activity is approved for 1 hour of California MCLE credit.