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 & Lione; Mark R. Anderson, Akerman LLP. Patents: Cynthia K. Barnett, Johnson & Johnson; R. Trevor Carter, Daniel M. Lechleiter, Andrew M. ...
• Pages: 67-70

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PATENTS

Decisions in Brief

COPYRIGHTS By John C. Gatz

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

Anticipation

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. Wall-Street.com, 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.

Wall-Street.com is a website that licensed many Fourth Estate

articles. The license required Wall-Street.com to remove

all Fourth Estate content when Wall-Street.com cancelled

its account with Fourth Estate. Wall-Street.com cancelled

its account with Fourth Estate, but did not remove the arti-

cles from the website, so Fourth Estate sued for copyright

infringement. Wall-Street.com moved to dismiss the suit and

argued that Fourth Estate had not registered the copyright in

the articles. The district court agreed with Wall-Street.com

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.”