Decisions in Brief

• Author: John C. Gatz
• Pages: 62-66

Published in Landslide® magazine, Volume 12, Number 3, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2019 by the American Bar Association. Reproduced with permission. All rights reserved.

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PATENTS

Decisions in Brief

COPYRIGHTS By John C. Gatz

Amended Complaint

Anza Technology, Inc. v. Mushkin, Inc., 934 F.3d 1359, 2019

U.S.P.Q.2d 305780 (Fed. Cir. 2019). The Federal Circuit

reversed in part, vacated in part, and remanded the case back

to the district court. The district court dismissed the amended

complaint, nding the claims in the amended complaint were

not an integral part of the claims in the original complaint.

The Federal Circuit found that a more liberal test should be

used and that the amended claim should be allowed if the

amended pleading relates to the same general conduct as the

original pleading.

Anticipation

ATEN International Co. v. Uniclass Technology Co., 932

F.3d 1364, 2019 U.S.P.Q.2d 290870 (Fed. Cir. 2019). The

Federal Circuit reversed the nding of anticipation because

the jury verdict was not supported by substantial evidence.

The product did not anticipate because testimony failed to

establish that the device existed before the critical date.

Claim Construction

Allergan Sales, LLC v. Sandoz, Inc., 935 F.3d 1370, 2019

U.S.P.Q.2d 323882 (Fed. Cir. 2019). The Federal Circuit

afrmed the district court’s ndings that the “wherein” clause in

the claim was limiting. The Federal Circuit found that the prose-

cution history and the specication supported this construction.

Iridescent Networks, Inc. v. AT&T Mobility, LLC, 933 F.3d

1345, 2019 U.S.P.Q.2d 298149 (Fed. Cir. 2019). The Federal

Circuit afrmed the district court’s construction of the phrase

“high quality of service connection.” The Federal Circuit con-

rmed that statements made during prosecution can inform

Works Made for Hire

Estate of Kauffmann v. Rochester Institute of Technology,

932 F.3d 74, 2019 U.S.P.Q.2d 285320 (2d Cir. 2019). For 55

years, Stanley Kauffmann contributed numerous lm reviews

and other articles to The New Republic magazine (TNR) but

was not an employee of TNR. Kauffmann and TNR never

entered into a formal agreement as to whether Kauffmann’s

articles for TNR were “works made for hire,” with the excep-

tion of a 2004 letter agreement from TNR to Kauffmann. The

letter included: “Our agreement with you has always been

an oral understanding. . . . We have . . . always understood in

doing business with you that, in light of our regular monthly

compensation arrangement with you, all articles you have

written for The New Republic have been ‘works made for

hire,’ as that term is dened under the US Copyright laws.”

In 2013, the Rochester Institute of Technology (RIT) pub-

lished an anthology of Kauffmann’s lm reviews including

44 that had originally been published in TNR in 1999. In

2015, Kauffmann’s estate found out about the anthology and

sued RIT for copyright infringement. RIT sought summary

judgment, relying on the 2004 letter, and the district court

granted RIT’s motion, nding that the letter unambiguously

evidenced that the reviews were created as works for hire.

On appeal, the Second Circuit reasoned that because the

parties agreed that Kauffmann was not an employee of TNR

and that the reviews were ordered for use in a collective

work, whether Kauffmann was the owner of the copyrights in

the reviews at issue turned on the legal effect of the 2004 let-

ter. Some circuits have held that an agreement sufcient to

establish a work as a work for hire must be executed before

creation of the work. The Second Circuit, however, has ruled

that in certain instances writings executed after the creation

of the works at issue can satisfy the writing requirement

under the Copyright Act. Still, as the 2004 letter was not exe-

cuted until ve years after the reviews were written, and there

were no facts indicating that the letter was made conrming

a prior agreement made before the creation of the works, the

Second Circuit held that the reviews were not works for hire,

reversing the district court’s decision and remanding for fur-

ther proceedings.

the scope of a claim without rising to the level of clear and

unmistakable disavowal.

Claim Construction/Written Description

Ajinomoto Co. v. International Trade Commission, 932

F.3d 1342, 2019 U.S.P.Q.2d 290798 (Fed. Cir. 2019). The

Federal Circuit afrmed the ITC’s claim construction and

infringement determinations, applying the tangential relation

exception in nding that prosecution history estoppel did not

preclude infringement under the doctrine of equivalents. The

Federal Circuit also upheld the ITC’s nding that the asserted

claims satised the written description requirement because

the patent disclosed a representative number of species and

included structural features common to the genus.

Collateral Estoppel

Intellectual Ventures I LLC v. Capital One Financial Corp., 937

F.3d 1359, 2019 U.S.P.Q.2d 337984 (Fed. Cir. 2019). The Fed-

eral Circuit afrmed that Capital One was collaterally estopped

from bringing antitrust claims because it had previously liti-

gated those same issues in another jurisdiction. In Capital

One’s case, the rst litigation considered the relevant market

(a necessary component of Capitol One’s antitrust claims) as

Intellectual Ventures’ entire 3,500 patent portfolio. Capital One

both (1) embraced this nding during later brieng in the initial

litigation, and (2) alleged this nding during the second litiga-

tion. This relevant market description, however, was fatal to

both alternative grounds in the original litigation, so the Federal

Circuit found that the judgments were not alternative and inde-

pendent grounds and thus collateral estoppel applied.