Decisions in Brief

AuthorJohn C. Gatz
PositionJohn 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 & Lione; Mark R. Anderson, Akerman LLP. Patents: Cynthia K. Barnett, Johnson & Johnson; R. Trevor Carter, Daniel M. Lechleiter, Andrew M. ...
Published in Landslide® magazine, Volume 10, Number 1, 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.
Decisions in Brief
John C. Gatz is a member of the rm Nixon Peabody in Chicago, Illinois. Column contributors include the following writers: Copyrights:
Zachary J. Smolinski, Smolinski Law PC; Michael N. Spink, Brinks, Hofer & Lione; Mark R. Anderson, Akerman LLP. Patents: Cynthia K.
Barnett, Johnson & Johnson; R. Trevor Carter, Daniel M. Lechleiter, Andrew M. McCoy, Faegre Baker Daniels LLP; Robert W. (Bill) Mason,
CaptureRx; Peter J. Prommer, Nixon Peabody LLP. Trade Secrets: R. Mark Halligan, FisherBroyles LLP. Trademarks: Janet M. Garetto and
Elizabeth W. Baio, Nixon Peabody LLP; Amy L. Sierocki
In re Chudik, 851 F.3d 1365, 122 U.S.P.Q.2d 1146 (Fed. Cir.
2017). The Federal Circuit reversed the PTAB’s nding that
two references each anticipated selected claims of the appli-
cation. The Federal Circuit found that substantial evidence
did not support the PTAB’s anticipation ndings because the
PTAB had to modify the references—either by removing a fea-
ture or relocating a feature —to disclose every claim limitation.
Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 851
F.3d 1270, 122 U.S.P.Q.2d 1116 (Fed. Cir. 2017). The Federal Cir-
cuit reversed the PTAB’s nding that the patent was anticipated.
The Federal Circuit reversed the decision and noted that anticipa-
tion cannot exist where a reference lacked a limitation—even if a
person of skill would have envisaged the missing limitation.
Claim Construction
Core Wireless Licensing S.a.r.l. v. Apple Inc., 853 F.3d 1360,
122 U.S.P.Q.2d 1452 (Fed. Cir. 2017). The Federal Cir-
cuit afrmed the district court’s denial of Core Wireless’s
motion for JMOL of infringement, while approving the dis-
trict court’s construction of a means-plus-function limitation.
The construction required that, for Apple’s cellphones to
infringe, the phones must be able to make what was called
a “channel selection decision.” To support the construction,
the Federal Circuit noted that each embodiment implemented
the channel selection decision at the “mobile station,” which
Core Wireless equated with Apple’s cellphone. The use of the
term “advantageously” to describe the embodiments failed
to render those embodiments merely exemplary. The patent’s
Copyright Registration Occurs after Copyright
Ofce Acts on Application
Fourth Estate Public Benet Corp. v., LLC,
856 F.3d 1338, 122 U.S.P.Q.2d 1586 (11th Cir. 2017). Fourth
Estate is a news organization that produces online content. is a website that licensed many Fourth Estate
articles. The license required to remove
all Fourth Estate content when cancelled
its account with Fourth Estate. cancelled
its account with Fourth Estate, but did not remove the arti-
cles from the website, so Fourth Estate sued for copyright
infringement. moved to dismiss the suit and
argued that Fourth Estate had not registered the copyright in
the articles. The district court agreed with
and dismissed the complaint, and Fourth Estate appealed.
The Eleventh Circuit afrmed and began its analysis by not-
ing that a split exists among the appellate circuits regarding when
copyright registration occurs. The Tenth Circuit requires the Reg-
ister of Copyrights to act on an application before a copyright is
registered and the copyright owner may bring a suit for copyright
infringement. However, the Ninth and the Fifth Circuits allow
a copyright infringement suit to occur if a copyright application
has been led with the Copyright Ofce, even if the application
has not been acted upon by the copyright ofce. Looking to the
language of the Copyright Act, the Eleventh Circuit decided that
registration occurs after the Register of Copyrights examines the
application and issues a certicate of registration.
TV over Internet Not a “Cable Company”
Fox Television Stations, Inc. v. Aereokiller, LLC, 851 F.3d
1002 (9th Cir. 2017). Plaintiffs are a group of broadcast
stations and copyright holders (collectively Fox) who sued
Aereokiller, now known as FilmOn X (FilmOn) for copyright
infringement. FilmOn operates a service that uses antennas to
capture over-the-air broadcast programming and retransmits
the programming over the Internet to paying subscribers. The
Supreme Court recently held that such a service does perform
the retransmitted works publicly, and hence infringes the
copyright holders’ exclusive performance rights.
In its defense, FilmOn claims that it is a “cable system” eli-
gible for a compulsory license. Under §111 of the Act, a “cable
system” is eligible for a compulsory license that allows it to
retransmit “a performance or display of a work” that had origi-
nally been broadcast by someone else—even if such material
is copyrighted—without having to secure the consent of the
copyright holder. The Copyright Act denes “cable system” as
“a facility … that in whole or in part receives signals transmit-
ted or programs broadcast by one or more television broadcast
stations licensed by the FCC, and makes secondary transmis-
sions of such signals or programs by wires, cables, microwave,
or other communications channels to subscribing members of
the public who pay for such service.”
The Ninth Circuit reversed the district court’s partial
summary judgment in favor of defendants, and held that Inter-
net-based retransmission services are not eligible for the
compulsory license that §111 makes available to “cable sys-
tems.” The Ninth Circuit concluded that §111 was ambiguous
on the question of whether an Internet transmission provider
is a “cable system.” The Ninth Circuit deferred to the Copy-
right Ofce’s interpretation, which requires that “a provider of
broadcast signals [must] be an inherently localized transmis-
sion media of limited availability to qualify as a cable system.”

To continue reading

Request your trial

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT