Decisions in Brief

• Author: John C. Gatz
• Pages: 61-65

PATENTS

Decisions in Brief

COPYRIGHTS By John C. Gatz

Published in Landslide® magazine, Volume 10, Number 2, 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.

Appealability

Preston v. Nagel, 857 F.3d 1382, 122 U.S.P.Q.2d 1774 (Fed.

Cir. 2017). The Federal Circuit was barred from considering

an appeal of the district court’s remand order. The plaintiff

brought various state law claims, and the defendant sought

removal to federal court by counterclaiming under the Declar-

atory Judgment Act seeking a declaration of non-infringement

of the plaintiff’s patents. The district court held that it lacked

subject matter jurisdiction and 28 U.S.C. §1447(d) barred the

Federal Circuit from considering an appeal of that decision.

Arbitration

Evans v. Bldg. Materials Corp. of Am., 858 F.3d 1377, 122

U.S.P.Q.2d 1781 (Fed. Cir. 2017). The Federal Circuit afrmed

the district court’s denial of a motion to dismiss or stay pending

arbitration in a design-patent infringement case. A promotional

agreement between the parties contained an arbitration clause

covering claims “arising [there]under.” The district court found

that the clause related only to the performance of the agree-

ment, and not the making and selling of patented products.

Attorney Fees

Checkpoint Sys., Inc. v. All-Tag Sec. S.A., 858 F.3d 1371,

122 U.S.P.Q.2d 1786 (Fed. Cir. 2017). The Federal Circuit

Home Design Copyright Not Infringed

Design Basics, LLC v. Lexington Homes, Inc., 858 F.3d 1093,

123 U.S.P.Q.2d 1128 (7th Cir. 2017). Design Basics pro-

duces designs for single-family homes for the mass market.

Lexington is a home builder that Design Basics accused of

infringing four copyrighted home designs. The district court

granted summary judgment to Lexington, nding that Design

Basics had not shown that Lexington had access to its four

designs. Design Basics appealed.

The Seventh Circuit afrmed. The Seventh Circuit ini-

tially noted that the copyright for an architectural work does

not include standard features found in buildings. The Seventh

Circuit noted that both the doctrine of scenes a faire and the

doctrine of merger may limit the copyright protectable ele-

ments of an architectural work. The Seventh Circuit found

that to the extent Lexington’s designs resembled Design

Basics’ plans, it was because they both resemble common

home designs in the public domain. The home plans at issue

here were based on functional requirements for a home and

industry standards. Therefore, any similarities between Lex-

ington’s designs and Design Basics plans did not involve

protectable elements of Design Basics’ copyrights, but sim-

ply involved common features found in homes. The Seventh

Circuit further found that Design Basics did not show that

Lexington had access to its designs. Design Basics posted

the designs on their website, but offered no evidence that

Lexington had ever accessed the website. The Seventh Cir-

cuit found that simply having a copyrighted home design on a

website is not sufcient to allow an inference to be made that

an alleged infringer accessed the materials.

No Royalties Due from Radio Stations Playing Oldies

in Illinois

Sheridan v. iHeartMedia, Inc., 2017 WL 2424217 (N.D. Ill.

2017). This case touched on state-based protection for sound

recordings made before February15, 1972. Arthur and Bar-

bara Sheridan, the owner of rights in oldies song recordings,

sued iHeartMedia, the owner of hundreds of radio stations.

The Sheridans argued that a variety of causes of action under

Illinois state law entitled them to collect from iHeartMe-

dia based on the stations’ playing of songs by oldies acts.

The Sheridans sued under the theories of common law copy-

right infringement, unfair competition, conversion, and

unjust enrichment. They lost on all fronts. On the common

law copyright claim, the district court determined that the

Sheridans “lost their common law right to control the public

performance of those recordings in Illinois” when they vol-

untarily sold those recordings. The district court stated that

“No broadcaster has ever been held liable under any cause

of action available under Illinois law for broadcasting a pre-

1972 sound recording without authorization,” and found

nothing in the Sheridans’ arguments to change that pattern.

reversed the district court’s award of attorney fees, nding

that the plaintiff’s infringement claims were reasonable and

the suit was not brought in bad faith despite the plaintiff’s

experts not evaluating the exact accused products.

Nantkwest, Inc. v. Matal, 860 F.3d 1352, 123 U.S.P.Q.2d

1257 (Fed. Cir. 2017). The Federal Circuit found that 35

U.S.C. §145 permits the USPTO to recover attorney fees,

whether the patentee chooses to appeal to the Eastern District

of Virginia or the Federal Circuit.

Rothschild Connected Devices Innovations, LLC v. Guard-

ian Prot. Servs., Inc., 858 F.3d 1383, 122 U.S.P.Q.2d 1801

(Fed. Cir. 2017). The Federal Circuit reversed and remanded

the district court’s denial of the defendant’s motion for attorney

fees. While the plaintiff withdrew its complaint under Rule 11’s

safe harbor provision, the Federal Circuit found that the district

court erred in failing to consider: (1) the plaintiff’s willful igno-

rance of anticipatory prior art; and (2) the plaintiff’s vexatious

pattern of litigation involving the same patent.

Business Method Patent

Secure Axcess, LLC v. PNC Bank N.A., 859 F.3d 998, 123

U.S.P.Q.2d 1007 (U.S. 2017). The Federal Circuit denied the

petitions for panel rehearing and for rehearing en banc. The

Federal Circuit had ruled that the statutory denition of a