Decisions in Brief

• Author: John C. Gatz
• Pages: 56-60

Published in Landslide® magazine, Volume 13, Number 4, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2021 by the American Bar Association. Reproduced with permission. All rights reserved.

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COPYRIGHTS By John C. Gatz

Decisions in Brief

PATENTS

Facts Are Unprotectable and Can Be Freely Copied

Vallejo v. Narcos Productions LLC, No. 19-14894, 2020 WL

6281501, 2020 U.S.P.Q.2d 11278 (11th Cir. Oct. 27, 2020). Virginia

Vallejo appealed the district court’s grant of summary judgment in

favor of the defendants, Narcos, Netix, and Gaumont Television,

contending that the district court erred when it concluded that two

scenes from the television series Narcos were not substantially sim-

ilar to two chapters in her memoir. The Eleventh Circuit Court of

Appeals afrmed the district court’s decision.

Vallejo is a well-known Colombian journalist and anchor-

woman who had a romantic affair with Pablo Escobar, the

notorious Colombian drug trafcker. She wrote a memoir

based on her affair titled Amando a Pablo, Odiando a Escobar,

which translates to Loving Pablo, Hating Escobar. Narcos is a

television series available for streaming on Netix that chron-

icles the life of Pablo Escobar and the Colombian drug cartel.

Vallejo brought a copyright infringement claim against the

defendants, alleging that certain scenes from episodes 103 and

104 of the series were copied from her memoir.

The Eleventh Circuit opined that before determining

whether a substantial similarity exists, the unprotected facts

must be separated from the protected expression of those facts.

Throughout the case, Vallejo repeatedly admitted that the facts

incorporated in her memoir were true, including facts present

in the Narcos episodes at issue. Because copyright protec-

tion extends only to the expression of facts and not to the facts

themselves, the Eleventh Circuit reasoned that the facts alone

did not enjoy copyright protection and could have been freely

copied by the defendants in writing the Narcos series.

Next, the Eleventh Circuit compared the protectable por-

tions of the memoir to the Narcos scenes; however, the

Eleventh Circuit found no substantial similarities. The Elev-

enth Circuit concluded that the defendants used unprotectable

facts from Vallejo’s memoir and did not copy her expression

of those facts because the plot, setting, mood, and characters’

interplay were not substantially similar. Thus, the Eleventh

Circuit afrmed the district court’s summary judgment deci-

sion in favor of the defendants.

John C. Gatz is a member of the rm Nixon Peabody in Chicago, Illinois. Column contributors include the following writers:

Copyrights: Jenni Psihoules, Nixon Peabody LLP; and Mark R. Anderson, Actuate Law LLC. Patents: Cynthia K. Barnett,

Johnson & Johnson; R. Trevor Carter, Daniel M. Lechleiter, and Andrew M. McCoy, Faegre Drinker Biddle & Reath LLP;

Robert W. (Bill) Mason, Southwest Research Institute; and Angelo Christopher, Nixon Peabody LLP. Trade Secrets: R. Mark Halligan,

FisherBroyles LLP. Trademarks: Elizabeth W. Baio, Nixon Peabody LLP; and Amy L. Sierocki, Blumeneld & Shereff LLP.

Analogous Art

Donner Technology, LLC v. Pro Stage Gear, LLC, 979 F.3d

1353, 2020 U.S.P.Q.2d 11335 (Fed. Cir. 2020). The Federal

Circuit Court of Appeals vacated and remanded the Patent

Trial and Appeal Board’s (PTAB’s) nal decision in an inter

partes review (IPR) directed to guitar effects pedalboards. In

rejecting each of Donner’s obviousness grounds, the PTAB

concluded that Donner had not demonstrated that a prior art

reference used in each ground was analogous art. The anal-

ysis turned on the analogous art test inquiring whether the

reference is reasonably pertinent to the particular problem the

inventor was addressing. The Federal Circuit explained that,

under this theory of analogous art, the problems to which

both the reference and the asserted patent relate must be iden-

tied and compared. The Federal Circuit then determined that

the PTAB failed to consider Donner’s evidence on this issue

and did not apply the proper standard for analogous art.

Anticipation

Biogen MA Inc. v. EMD Serono, Inc., 976 F.3d 1326, 2020

U.S.P.Q.2d 11129 (Fed. Cir. 2020). After a jury found the

asserted claims anticipated, the district court granted judg-

ment as a matter of law, nding no anticipation. The claim

was directed to a method of treating with a nested product-

by-process limitation. The district court failed to apply the

rule that an old product is not patentable, even if it is made

by a new process. The Federal Circuit found that the admin-

istered composition, which was claimed in terms of the

manufacturing process, was disclosed in the prior art.

Claim Construction

St. Jude Medical, LLC v. Snyders Heart Valve LLC, 977 F.3d

1232, 2020 U.S.P.Q.2d 11225 (Fed. Cir. 2020). The Fed-

eral Circuit afrmed in part and reversed in part the PTAB’s

ndings. The Federal Circuit afrmed the PTAB’s claim

construction of the term “band” having a width (or length) lim-

itation and differentiating it from a sleeve. The Federal Circuit

rejected the PTAB’s claim construction on other limitations.

Infringement

GlaxoSmithKline LLC v. Teva Pharmaceuticals USA, Inc.,

976 F.3d 1347, 2020 U.S.P.Q.2d 11170 (Fed. Cir. 2020).

Following a jury nding of infringement, the district court

granted Teva’s motion for judgment of noninfringement as

a matter of law because there was insufcient evidence that

Teva caused doctors to prescribe the patented medication.

However, the Federal Circuit reversed and remanded, nd-

ing that substantial evidence supported the jury’s inducement

nding. The Federal Circuit noted that when the provider of

an identical product knows of and markets the same product

for intended direct infringing activity, the criteria of induced

infringement is met.