TIPLJ: Volume 31

Issue 1: Fall 2022

Convergence Without Predictability: Personal Jurisdiction Dilemma for Online Foreign Trademark Infringement in the EU and the US

Citation: 31 Tex. Intell. Prop. L.J. 1 (2022)

Author: Gizem Demirel

About: Gizem Demirel. LL.M, University of California, Berkeley; J.D., Willamette University, College of Law; Master of Law, Bahcesehir University; B.A. in Law, Marmara University. Member of the Istanbul Bar Association and Oregon State Bar. I deeply appreciate the mentorship and insightful comments I received from Prof. Symeon Symeonides and Prof. Rachel Stern. I am grateful to all the participants of the Advanced Interdisciplinary Workshop on Law. All errors are my own.


Online trademark infringement is ubiquitous anywhere in the world nowadays. The courts have been trying to find the best answer when deciding on personal jurisdiction questions against foreign defendants. Comparing both the U.S. and the E.U., this paper investigates whether current tools are effective in reaching consistent results without creating legal ambiguity. This paper shows that both the U.S. and the E.U. move toward the same analysis and terminology to resolve the personal jurisdiction problem for online foreign trademark infringement. The study argues that current solutions in both jurisdictions fail uniformly to satisfy the fairness and predictability of the laws and cause inconsistent interpretations. Therefore, this paper suggests alternative solutions unique to online trademark infringement is necessary.

§ 101 Patent Eligibility: Advocation of the Supreme Court Proffering a Bright-Line Rule

Citation: 31 Tex. Intell. Prop. L.J. 37 (2022)

Author: Jason Sanders & Paul Fina

About: Jason Sanders graduated from DePaul University College of Law in 2021. Jason is a trial attorney in downtown Chicago, Illinois. He specializes in personal injuries including motor vehicle accidents, trucking accidents, premises liability, construction negligence, dog bite, and medical and legal malpractice. Please feel free to contact Jason with any questions or comments at email jas@argionislaw.com. Paul Fina graduated from the DePaul University College of Law in 2021 and is registered to practice before the United States Patent and Trademark Office (Reg. No. 79,133).  Paul is an associate attorney at Greer, Burns, and Crain where he focuses on patent litigation and patent prosecution in a variety of technical fields.


The governing statute for patent subject matter eligibility, 35 U.S.C. § 101, is relatively short (only containing 36 words), yet the uncertainty surrounding what exactly constitutes eligible subject matter persists. The analysis for determining whether an invention truly is § 101 subject matter eligible grows increasingly convoluted, especially with technological advancements. The United States Patent and Trademark Office (USPTO) offered cogent and substantive guidance directed toward patent examiners to help clarify the eligibility analysis.

With a specific focus on a post-Alice/‌Mayo analysis, this article advocates for the Supreme Court proffering a bright-line rule, via precedential language, governing § 101 patent subject matter eligibility via the integration of the USPTO’s eligibility guidelines. Section II of this article initially tracks the historical perspective of a patent and outlines the inherent capabilities of utilizing a patent. Next, the section shifts its analytical focus to the two seminal cases governing § 101 patent subject matter eligibility, Mayo and Alice, while including a full case analysis of each. Finally, the section concludes with several analyses of cases post-Alice/‌Mayo and their implications on the § 101 analysis. Section III of this article outlines the USPTO’s § 101 guidelines, including real-world graphics utilized by patent examiners in order to determine subject matter eligibility. The section transitions to a detailed description of the various § 101 amendments and concludes with a specific advocation for the Supreme Court to proffer a bright-line rule that shall govern the § 101 analysis and determination. Section IV of this article attempts to chronicle the specific impacts, or rather detriments, of adopting the various legislative amendments to the § 101 analysis. The last portion of Section IV recites the specific language that the Supreme Court should proffer and then conducts an impact analysis on the aforementioned language.

Preliminary Injunctive Relief in Patent Cases: Repairing Irreparable Harm

Citation: 31 Tex. Intell. Prop. L.J. 63 (2022)

Author: John C. Jarosz, Jorge L. Contreras, and Robert L. Vigil

About: John C. Jarosz, B.A., J.D., M.A. (Economics) is a Managing Principal at Analysis Group, Inc. Jorge L. Contreras, B.S.E.E,, B.A., J.D. is the James T. Jensen Endowed Professor for Transactional Law and Director of the Program on Intellectual Property and Technology Law at the University of Utah S.J. Quinney College of Law. Robert L. Vigil, B.A., PhD. (Economics) is a Principal at Analysis Group, Inc. We would like to thank Douglas Frank for helping start this project and framing the analysis, Jack Taurman, Tom Cotter, and Mark Lemley for countless insights and pushback, Evie Goryshina, Ivan Maryanchyk, Joey Duong, and Emily Tevebaugh for extraordinary insights and  assistance, and participants at the 2021 and 2022 IP Scholars Conference for helpful comments and feedback on earlier versions of this article. The views expressed here are those of the authors. We are solely responsible for any errors or oversights.


Unlike a permanent injunction, which is an equitable remedy awarded to an injured party, a preliminary injunction is a form of interlocutory relief that is imposed by a court to preserve the status quo during litigation. In patent cases decided since (and often before) the Supreme Court’s 2006 decision in eBay v. MercExchange, courts have applied a four-factor test when considering the issuance of a permanent injunction. A similar test has evolved for preliminary injunctions, following the Court’s decision in Winter v. NRDC. Both the eBay and Winter tests rely heavily on whether the patentee is likely to suffer “irreparable” harm if an injunction is not granted. Yet despite the very different statutory bases and underlying reasoning for preliminary versus permanent injunctions, almost no scholarly attention or judicial reasoning has been devoted to an analysis of the meaning of irreparable harm in the context of preliminary injunctions. In order to gain a better understanding of the information that courts consider when deciding motions for preliminary injunctions, we collected data from 211 published district court opinions in patent cases decided between 2013 and 2020 in which a preliminary injunction was sought. Based on our research, as well as recent opinions of the Federal Circuit, we find that much of the uncertainty and lack of clarity surrounding preliminary injunctive relief can be reduced, or eliminated, by explicit recognition that irreparable harm has (or should have) a certain meaning, and that meaning is not the same as harm. We propose a new four-factor test for irreparable harm when assessing the issuance of preliminary injunctions in patent cases. That test provides that to be considered irreparable, harm should be that which, in the absence of an injunction, 1) would unduly disrupt the status quo, 2) is imminent and likely to occur, 3) is causally linked to the alleged infringement, and 4) is unlikely to result in payment of adequate compensation. We believe that the application of this new test will make the preliminary injunction analysis more certain, economically sensible, and better fitted to achieve its stated statutory goals.