Decisions in Brief

• Author: John C. Gatz
• Position: John C. Gatz is a member of the firm Nixon Peabody in Chicago, Illinois. Column contributors include the following writers: Copyrights: Zachary J. Smolinski, Smolinski Law PC; Michael N. Spink, Brinks, Hofer, Gilson & Lione; Mark R. Anderson, Akerman LLP. Patents: Cynthia K. Barnett, Johnson & Johnson; R. Trevor Carter, Daniel M. Lechleiter,...
• Pages: 62-66

Published in Landslide® magazine, Volume 9, Number 6 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2017 by the American Bar Association. Reproduced with permission. All rights reserved. This

information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

COPYRIGHTS By John C. Gatz

Decisions in Brief

PATENTS

Claim Construction

MPHJ Tech. Invs., LLC v. Ricoh Ams. Corp., 847 F.3d 1363,

121 U.S.P.Q.2d 1625 (Fed. Cir. 2017). The Federal Circuit

afrmed the PTAB’s decision that certain claims were invalid

as anticipated. As an initial matter, the court upheld the

PTAB’s claim construction, nding that a provisional applica-

tion can contribute to the understanding of the claims.

Collateral Estoppel/Patent Ineligibility

Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d

1332, 121 U.S.P.Q.2d 1940 (Fed. Cir. 2017). The Federal Cir-

cuit afrmed the district court’s grant of summary judgment

barring Intellectual Ventures’ (IV’s) infringement claims under

collateral estoppel and nding the two asserted patents ineligible

under 35 U.S.C. § 101. One of the two patents (the ‘084 patent)

Adoption As a Standard Does Not Trump Private

Copyright Protection

American Society for Testing and Materials, et al. v. Public.

Resource.Org., Inc.; American Educational Research Assn.,

Inc. et al. v. Public.Resource.Org, Inc., 121 U.S.P.Q.2d 1513,

2017 WL 473822 (D.D.C. 2017). The plaintiffs include vari-

ous associations such as the American Society for Testing and

Materials, National Fire Protection Association, Inc., Ameri-

can Society of Heating, Refrigerating, and Air-Conditioning

Engineers, Educational Research Association, Inc., Ameri-

can Psychological Association, Inc., and National Council

on Measurement in Education, Inc. (collectively Standards

Associations). The Standards Associations are non-for-prot

entities that develop various codes and standards. The defen-

dant Public Resource is a not-for-prot entity devoted to

publicly disseminating legal information. Public Resource

distributed copies of forms and standards that had been

adopted by the government.

Public Resource argued that the plaintiffs’ standards lost their

copyright protections when they were incorporated by refer-

ence into federal regulations. They argued that the Copyright Act

Sections 102(b) (no protection for systems or methods) and 105

(no protection for government-authored works) should be read

together to indicate that Congress intended that there be no copy-

right protections for the standards because, once incorporated,

they are “legal facts,” which cannot be copyrighted.

The district court noted the weighty policy arguments on

both sides of this issue, including the need to preserve a vital

and complicated public-private partnership between the gov-

ernment and Standards Associations, and the need for an

informed citizenry to have a full understanding of how to

comply with the nation’s legal requirements. However, the

district court also noted Congress’ previous consideration of

these issues, and cited to a House Report during adoption of

the 1976 Copyright Act, which stated that under § 105 “use

by the Government of a private work would not affect its

copyright protection in any way.” Related rules and decisions

involving the Federal Register also supported this determina-

tion. Accordingly, the district court found for the Standards

Associations on summary judgment.

Gimme a “C” for Copyrightability of Cheerleader

Uniform Designs

Star Athletica, LLC v. Varsity Brands, Inc. 137 S.Ct. 1002,

122 U.S.P.Q.2d 1001 (U.S. 2017). The Supreme Court sided

with Varsity Brands and other respondents, who were the

owners of copyrights in a variety of designs for cheerleader

uniforms, over Star Athletica, a uniform manufacturer sued

by Varsity for copyright infringement. The district court ruled

in favor of Star Athletica under the theory that the designs

were utilitarian in that they identied the uniforms “as uni-

forms.” The Sixth Circuit then reversed that decision and

ruled in favor of Varsity, reasoning that the designs on the

uniforms were “separately identiable” as graphic designs

separate from the uniforms.

The Supreme Court summarized its task as being “to deter-

mine whether the arrangements of lines, chevrons, and colorful

shapes appearing on the surface of respondents’ cheerlead-

ing uniforms are eligible for copyright protection as separable

features of the design of those cheerleading uniforms.” After

evaluating the statutory language and earlier opinions regard-

ing copyright protection for designs of useful articles, the Court

determined that the designs on the cheerleader uniforms here

were worthy of copyright protection. The Court dened the test

for copyrightability as asking whether a design, “identied and

imagined apart from the useful article […] would qualify as a

pictorial, graphic, or sculptural work either on its own or when

xed in some other tangible medium.” Despite the simplicity of

some of the designs at issue (which incorporated colored diago-

nal lines), the Court found that the designs met that requirement.

had recently been held patent ineligible under § 101 follow-

ing a partial summary judgment order in a related proceeding in

another district (the JPMC Order). The Federal Circuit afrmed

the district court’s nding that collateral estoppel attached to IV’s

claim based on the ’084 patent. Addressing the nality require-

ment, the only disputed issue, the Federal Circuit applied Fourth

Circuit law, which does not require resolution of an appeal for

nality to exist. As a partial summary judgment order, the JPMC

Order thus met the nality requirement and collateral estoppel

attached. The Federal Circuit afrmed the district court’s §101

patent ineligibility ndings. Although the claims are limited to a

particular technological environment (XML computer language),

the Federal Circuit found the claims abstract under Alice step

one because the claims are still directed to the abstract idea of

collecting, displaying, and manipulating data.