The U.S. Supreme Court ruled in Star Athletica v. Varsity Brands, that decorative elements of a cheerleading uniform are protectable by copyright law, a ruling the Court said was aimed at resolving "widespread disagreement" on when such designs are eligible for protection. The decision bolsters the legal protections for pictures, sculptures and graphic designs. The case examined the limits of copyright protection for clothing, furniture and other useful items that can have both functional and distinctive ornamental aspects. The Court reasoned that the cheerleader uniform design met the test of being able to "exist as its own pictorial, graphic, or sculptural work" and that it was eligible for copyright protection when it was separated from the utilitarian article. The ruling could have expansive implications for designers in the fashion industry, who seek to protect ornamental designs that are affixed on useful articles like clothing.

Thursday, 23 March 2017 02:29

Supreme Court Limits Laches in Patent Cases

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The Supreme Court recently held in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC that the defense of laches cannot be invoked against a claim for damages brought within the statutory six-year limit. The decision comes at little surprise given the Court's ruling in Petrella v. Metro-Goldwyn-Mayer, which considered a similar provision of the Copyright Act. The Court reasoned that Congress set forth an express limitations period in the patent laws, and giving effect to laches within the statutory period would amount to judicial overriding. In his lone dissent, Justice Breyer noted that the decision ignores the application of laches to reign in abusive pre-litigation conduct by a patent holder who unreasonably delays suit, knowing he can collect damages for the previous six years of infringement.

In a recent opinion narrowing the international reach of U.S. patent laws, the United States Supreme Court overturned the Federal Circuit’s determination that shipping a single part of a patented invention, to be joined with other components overseas, can constitute infringement.

In Life Techs. Corp. v. Promega Corp., No. 14-1538, Life Technologies manufactured an enzyme to be used in a DNA analysis kit, and shipped the enzyme to London where the company proceeded to manufacture the remaining components of the toolkit.  Promega Corp. filed suit, alleging patent infringement due to Life Technologies’ supplying the single component for genetic testing from the United States to the United Kingdom.  In reversing the district court’s order granting Life Technologies’ motion for judgment as a matter of law, the Federal Circuit held that certain circumstances can impose liability on a party under 35 §271(f)(1) for “supplying or causing to be supplied a single component for combination outside the United States.”

The Supreme Court reversed the Federal Circuit, and after engaging in a statutory construction of the plural term “components,” held that merely supplying a single component does not constitute infringement under Section 271(f)(1).  In the decision for the high court, Justice Sotomayor wrote that the governing statute does not apply to the quality of components, rather the quantity:  “We hold that the phrase ‘substantial portion’ in 35 U. S. C. §271(f )(1) has a quantitative, not a qualitative, meaning. We hold further that §271(f )(1) does not cover the supply of a single component of a multicomponent invention.”

While the scope of 35 §271(f)(1) remains subject to further litigation, specifically vis-à-vis how many components would constitute “a substantial portion,” Life Technologies makes clear that a party cannot be liable under 35 §271(f)(1) due to the extraterritorial supply of a single component. 

 

 

Inter Partes Review is a proceeding that the USPTO adopted in 2012 that allows a challenge to an issued patent based on obviousness or lack of novelty. Inter Partes Review has become an increasingly common tool to invalidate a patent as an alternative to litigation in Federal Court. In Covidien LP v. University of Florida Research Foundation Inc., the US Patent Trial and Appeal Board addressed the issue of whether sovereign immunity would extend to a state actor who owns rights to a patent being challenged in an administrative forum such as an Inter Partes Review. Under the 11th Amendment of the U.S. Constitution, the 50 States of the Union and their branches, have immunity from a lawsuit instituted by a private party. Court decisions interpreting the 11th Amendment have construed it broadly to extend this immunity not only to lawsuits in a court of law, but also to other adjudicative proceedings such as those of administrative agencies.  

An Inter Partes Review in many way parallels a lawsuit in a court of law. For example, there is discovery, depositions, motions, and oral argument. Further, a panel of judges decide not only the outcome of the proceeding, but also whether the proceeding may even be instituted. In Covidien LP v. University of Florida Research Foundation Inc., the U.S. Patent Trial and Appeal Board ruled in favor of the University of Florida Research Foundation. The U.S. Patent Trial and Appeal Board decided that due to the similarities between civil litigation and an InterPartes Review, the University of Florida Research Foundation, being an arm of the State of Florida, was entitled to assert sovereign immunity as a defense to the institution of an Inter Partes Review.  This decision may have an effect on the number of Inter Partes Reviews that are instituted against public research institutions, such as state universities.

 

Paul McCartney recently filed suit in United States District Court, to reclaim ownership rights of some of the Beatles' most famous early songs. The suit seeks a declaratory judgment that Mr. McCartney is entitled to reclaim copyright interest in several early songs under the termination provisions of the Copyright Act. Under this provision of the Copyright Act, authors who assigned their copyright interests to artistic works before a 1978 revision of the law, are allowed to reclaim the rights after 56 years have passed. Mr. McCartney has been serving advance notice of his intent to reclaim the rights as required by law.

Unlike most countries, the United States copyright law provides musicians and songwriters an opportunity to regain ownership of works that they transferred to outside entities, such as record labels and music publishers after a certain period of time. For many musicians, especially those who had hits decades ago, copyright termination has become a powerful way to regain the rights in their works and to gain financial leverage with their record companies and music publishers.

Michael Jackson purchased the rights to various Beatles songs in 1985 and later formed Sony/ATV as a joint venture with Sony. Last year, Sony bought out the share of Mr. Jackson's estate for $750 million.

One potential issue in the case is a recent ruling by a British court that found the band Duran Duran could not reclaim rights to its songs because the band's original publishing agreements were subject to English law. Mr. McCartney's suit notes, he and John Lennon signed a series of publishing contracts in Britain beginning in 1962, assigning his ownership rights to some of the popular early Beatles songs. As such, Sony/ATV have begun to suggest that the copyright rule may not apply to Mr. McCartney's songs.

The latest chapter in the Apple v. Samsung litigation, previously blogged about here, involves a determination by the Supreme Court of the United States that damages for design patent infringement can be calculated based on only a component of a product, rather than the entire product, if only that component is found to infringe. This is significant because Apple's $400M damages award was based on Samsung's total profit for sales of the infringing phones. However, Apple's design patent only covered certain features of Samsung's phones, and according to the language of the patent statute, as Samsung argued, it should only have to pay damages on the infringing components, not the entire product. 

Thursday, 12 January 2017 13:00

Claim Construction in UltimatePointer v. Nintendo

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Last year, the Federal Circuit decided UltimatePointer, LLC v. Nintendo Co., Ltd. UltimatePointer brought a patent Infringment suit against Nintendo for its Wii console which uses indirect-pointing remote control devices. The district court ruled for Nintendo on summary judgment concluding that direct-pointing devices, and not indirect-pointing devices, were within the scope of the claims of UltimatePointer’s patent. The Federal Circuit affirmed the district court’s ruling, reasoning that the specification of the patent repeatedly emphasize that the invention is directed to a direct-pointing device and that there are disadvantages with indirect pointing devices.  This decision underscores the importance of the specification on how claims are construed. As seen in UltimatePointer, LLC v. Nintendo Co., Ltd., a court may limit the scope of a claim based on the content of the specification.    

The Copyright Office has issued final rules updating its practices for receiving the designation of agents under the Digital Millenium Copyright Act ("DMCA"). Until now it was paper based, but after December 1, 2016, the Copyright Office will switch to an electronic system. If you have previously appointed such an agent to receive notices of claimed infringement in order to take advantage of the Safe Harbor provisions for internet service providers, you must file a new designation before December 31, 2017 in order to ensure that your agent is listed in the new electronic directory.

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