Case Comments
| Jurisdiction | United States,Federal |
| Author | Lowell Anderson |
| Publication year | 2017 |
| Citation | Vol. 42 No. 4 |
Lowell Anderson
Stetina Brunda Garred & Brucker
A clause requiring arbitration of claims "arising out of or relating to this Agreement," which transferred a domain name, released all claims "that occurred prior to the effective date of [the] Agreement," and agreed to "permanently cease and desist the use of the ZETOR mark" with exceptions not applicable to the case. The agreement resolved an existing dispute and did not create a forward-looking structure to resolve all future disputes. "The plain language of the contract does not apply to wholly independent claims arising several years later" involving the same trademark and new copyright claims. No breach of contract claim was alleged. The court affirmed the denial of a motion to compel arbitration. Zetor N. Am., Inc. v. Rozeboom, 861 F.3d 807, 123 U.S.P.Q.2d 1416 (8th Cir. 2017).
"In other words, elements that only appear in an unregistered derivative work are not protected by the underling copyright." A 2005 copyright on a website selling bus tours to popular travel destinations does not cover a website selling bus tickets between cities. Summary judgment of non-infringement of the 2005 copyright was granted. Issues of fact existed on whether a 2015 copyright on a website was infringed. IvyMedia Corp. v. iLIKEBUS, Inc., 123 U.S.P.Q.2d 1519 (D. Mass. 2017).
"[T]here are scenes a faire in architecture just as in literature or music." Common design features and attributes driven by consumer expectations and standard house designs generally are either not protected or require very close copying to take only what truly belongs to the architect. Posting drawings on the internet provided no evidence the defendant had access and there was insufficient similarity to infer access. A summary judgment of non-infringement was granted. Plaintiff Design Basics offers employees a percentage of any recovery for infringements found on the internet, a business model leading to over 100 lawsuits and apparently used by trolls. Design Basics, LLC v. Lexington Homes, Inc., 858 F.3d 1093, 123 U.S.P.Q.2d 1128 (7th Cir. 2017).
A Magistrate Judge recommended a TRO enjoining distribution of videos of priests performing private rituals on sect members, based on representations that irreparable harm and damages have already occurred resulting in a loss of thousands of donations. "I am accepting the statements as true, given that they were made under oath by a priest." A $25,000 bond was recommended. Heralds of Gospel Found., Inc. v. Varela, 123 U.S.P.Q.2d 1349 (S.D. Fla. 2017).
"[T]his court recently held that the Twombly and Iqbal pleading standard applies to affirmative defenses." Gottesman v. Santana, 123 U.S.P.Q.2d 1525 (S.D. Cal. 2017).
An anti-SLAPP claim does not fall within the subject matter of copyright and does not provide rights equivalent to copyright rights so such claims are not preempted. "[B]oth parties correctly concede that California's anti-SLAPP statute applies only to state law claims," not to the copyright claims, so again the claims are not preempted by the Copyright statute. Gottesman v. Santana, 123 U.S.P.Q.2d 1525 (S.D. Cal. 2017).
Only the legal and beneficial owner of a copyright may sue for infringement. The substance of the agreement controls, even over language purporting to transfer exclusive rights. Plaintiff has the burden of establishing ownership and standing, so a defendant can challenge both. A stock photo agency (DRK) used an agreement with photographers which transferred ownership to DRK with an obligation to reassign those rights after registration and after resolution of infringement claims brought by DRK. The agreement also transferred all rights to any claims, with any litigation recovery split between DRK and the relevant photographer. But under the agreement, photographers continued to market their photos independently without any royalty to DRK. A summary judgment that DRK was a nonexclusive agent and lacked standing to sue for infringement, was affirmed. DRK Photo vs. McGraw-Hill Glob. Educ. Holdings, LLC, 124 U.S.P.Q.2d 1070 (9th Cir. 2017).
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If an anonymous speaker is sued for defamation, the plaintiff must make a prima facie showing of libel, including falsity, to compel disclosure of the defendant's identity. That balances the conflict between a plaintiff's right to use judicial process to discover the identity of the speaker committing the alleged libel, and the speaker's First Amendment right to remain anonymous. ZL Technologies, Inc. v. Does 1-7, 13 Cal.App.5th 603 (2017).
A court ordered a new trial on damages after a jury verdict. While 28 U.S.C. § 1298(c)(2) allows review of an interlocutory damage award it does not allow review of the underlying order for a new trial, and that order also prevents a final judgment on damages until the new trial is completed so jurisdiction was lacking to review the order for a new trial. Because there was no final order on damages the grant of a new trial was improperly certified for appeal under Fed.R.Civ.P. 54(b). The appeal of an order for a new trial on damages was dismissed. Alfred E. Mann Found. v. Cochlear Corp., 841 F.3d 1334, 123 U.S.P.Q.2d 1669 (Fed. Cir. 2017).
The US Postal Service had standing to seek a CBM review of a patent and the Federal Circuit can review that decision by the PTAB. "[W]e hold that § 324(c) does not bar judicial review of the Board's decision that a party satisfies § 18(a)(1)(B)'s requirements to petition for CBM review." A suit against the government under 28 U.S.C. § 1498(a) is a suit for infringement or a charge of infringement under § 18(a)(1)(B). The government is a "person" under § 18(a)(1)(B) so the Post Office had standing. Claims for using barcode information to update address information were directed to abstract ideas and lacked technological improvements sufficient to constitute patentable subject matter. Judge Newman dissented on characterizing the government as a "person." A CBM finding of invalidity was affirmed. Return Mail, Inc. v. USPS, 868 F.3d 1350, 123 U.S.P.Q.1813 (Fed. Cir. 2017).
The parties disagreed on whether an applicant for a biosimilar product disclosed the cell-culture medium used to make the product as required by the BPCIA, 42 U.S.C. § 262(l)(2)(A), so the patentee said it could not identify all applicable patents. The patent owner sued on some patents and was denied discovery on the cell-culture medium as not relevant to the asserted patents. The collateral order doctrine requires the order make the issue effectively unreviewable on later appeal. As the statute does not provide for interlocutory review of the required disclosures there is no right of appeal and the "effectively unreviewable on appeal" element was not met. The court lacked jurisdiction over the appeal from the discovery order. A writ of mandamus under the All Writs Act was denied, in part because the BPCIA requirement under (l)(3)(A) requires only that sponsor believes the patent "could reasonable be asserted" and if information required under (l)(2)(A) is withheld the patentee should have a reasonable basis to assert infringement, even under Rule 11. This decision thus limited discovery into related, but unasserted patents. Amgen, Inc. v. Hospira, Inc., 866 F.3d 1355, 123 U.S.P.Q.2d 1697 (Fed. Cir. 2017).
A motion to strike applies only to pleadings. Defendants' motion to strike a reply brief explaining entitlement to an anti-SLAPP fee award after the defendants were voluntarily dismissed, was procedurally improper. The motion was dismissed. Gottesman v. Santana, 123 U.S.P.Q.2d 1525 (S.D. Cal. 2017).
Based on a prosecution statement distinguishing a reference because "the present invention allows said membrane to be applied directly to the leather" the broadest reasonable interpretation (BRI) of "directly" was "directly pressing" and meant "applying pressure without any intervening materials or layers other than the recited adhesive." An IPR invalidity finding was affirmed. Outdry Techs. Corp. v. Geox S.P.A., 859 F.3d 1364, 123 U.S.P.Q.2d 1141 (Fed. Cir. 2017).
"Here, it is undisputed that the plain meaning of 'predetermined' is to determine beforehand." The PTAB erred in failing to construe "settling speed" even though the parties disputed its meaning. The BRI of "a predetermined settling speed" of a blender was a speed that is slower than the operating speed and permits settling of the blender contents. A prior art patent disclosed ramping a blender to high for 15 seconds, ramp down for 5 seconds and then ramp to high for 20 seconds. That disclosed a predetermined settling speed and anticipated the claims, especially as the only example in the asserted patent let contents settle for 4 seconds before ramping up. Expert testimony that no settling occurred was inconsistent with the specification and discounted. An IPR decision finding the claims not invalid was reversed as the claims were anticipated. Judge Newman dissented. Homeland Housewares, LLC v. Whirlpool Corp., 865 F.3d 1372, 123 U.S.P.Q.2d 1584 (Fed. Cir. 2017).
"An arrangement for reactivating the link with the first base station" is a means-plus-function limitation. The Board's failure to identify the correct algorithm from the specification resulted in an incomplete claim construction and failed to comply with Donaldson so a finding of obviousness was reversed. Dependent claims were amended when the parent claim was amended after remand so they could be challenged on remand from the prior appeal of an inter partes reexamination. IPCom GbH & Co. v. HTC Corp., 861 F.3d 1362, 123 U.S.P.Q.2d 1245 (Fed. Cir. 2017).
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"In sum we hold that...
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