John C. Gatz

AuthorJohn 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, Gilson & Lione; and Mark R. Anderson, Akerman LLP. Patents: Cynthia K. Barnett, Johnson & Johnson; R. Trevor Carter, Daniel M. Lechleiter...
Published in Landslide® magazine, Volume 11, Number 1 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 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
ANDA Litigation
Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals Inter-
national Ltd., 887 F.3d 1117, 126 U.S.P.Q.2d 1266 (Fed. Cir.
2018). The Federal Circuit upheld the district court’s infringement
nding under 35 U.S.C. § 271(e)(2) and afrmed the court’s grant
of injunctive relief pursuant to § 271(e)(4). The appellant led
an abbreviated new drug application (ANDA) to sell a generic
version of the appellee’s drug three years after FDA approval.
However, the same year the ANDA was certied, the appellee’s
patent issued. The district court found induced infringement of
the appellee’s patent following a bench trial, but determined that
§ 271(e)(4)(A) relief was unavailable because the patent did not
issue until after the ANDA was led. The Federal Circuit stated
that upon a nding of patent infringement under § 271(e)(2), the
district court must order remedies in accordance with § 271(e)(4).
Anticipation/Written Description
Knowles Electronics LLC v. Cirrus Logic, Inc., 883 F.3d
1358, 126 U.S.P.Q.2d 1014 (Fed. Cir. 2018). The Federal Cir-
cuit afrmed the Patent Trial and Appeal Board’s (PTAB’s)
decision, nding that an examiner correctly selected claims
for anticipation and other claims for lack of an adequate writ-
ten description. The other claims lacked adequate written
description because the specication lacked support for the
claimed solder pads “congured to” connect to a printed cir-
cuit board by a reow process.
James v. J2 Cloud Services, LLC, 887 F.3d 1368, 126
U.S.P.Q.2d 1445 (Fed. Cir. 2018). The Federal Circuit
reversed the district court’s dismissal of correction of inven-
torship claims and various state law claims, and remanded
for further proceedings. The district court found that an
Fair Use
Oracle America, Inc. v. Google LLC, 886 F.3d 1179, 126
U.S.P.Q.2d 1228 (Fed. Cir. 2018). The Federal Circuit
reversed a district court’s denial of a renewed motion for
JMOL, nding that the accused copyright infringer’s use did
not constitute fair use. A rst jury verdict found infringe-
ment, and a second jury trial returned a verdict that fair use
was a complete defense. The Federal Circuit applied the four
factors under Campbell for fair use and concluded that the
accused infringer’s use was not fair use, and remanded for
a trial on damages. The Federal Circuit noted that this deci-
sion did not foreclose a fair use defense in copyright actions
related to software code.
Narrow Ruling on Appeal in “Blurred Lines” Case
Williams v. Gaye, 885 F.3d 1150, 126 U.S.P.Q.2d 1105 (9th Cir.
2018). This case, addressing the Copyright Act of 1909, stems
from the alleged infringement of Marvin Gaye’s song “Got
to Give It Up” by the 2013 hit “Blurred Lines,” performed by
Robin Thicke, Pharrell Williams, and others. At the district court
level, “Blurred Lines” was found to be infringing, and following
post-trial rulings, Gaye’s estate was awarded a judgment in the
amount of $5.3 million plus a 50 percent running royalty award.
The Ninth Circuit approached the case on cross-appeals from
both sides: Thicke appealed (among other things) the damages
award, and the Gaye estate asked for (among other things) attor-
ney fees, which they were denied in the district court.
The Thicke parties argued that “Got to Give It Up” should
be granted thin protection, an assertion that the Ninth Circuit
denied, stating that “[m]usical compositions are not conned
to a narrow range of expression.” Addressing a number of pro-
cedural issues, the Ninth Circuit largely left the district court
determinations untouched, ruling that the verdict was not
against the clear weight of the evidence and that the damages
and running royalty awards were proper. The majority also
determined the decision not to award attorney fees was proper.
agreement between the inventor and the assignee of the patent
granted the assignee rights to the application, so the inven-
tor lacked standing. The Federal Circuit disagreed, nding
the assignment language ambiguous as it relates to patents
because it only referenced copyrights and not patents.
Attorney Fees
Raniere v. Microsoft Corp., 887 F.3d 1298, 126 U.S.P.Q.2d
1430 (Fed. Cir. 2018). The Federal Circuit afrmed the dis-
trict court’s ndings and awarding of attorney fees and costs.
The Federal Circuit found that the appellees were the prevail-
ing parties because the district court’s decision on standing
gave the appellees the full relief to which they were enti-
tled. Further, the Federal Circuit agreed that this case was
exceptional because the appellant employed a pattern of
obfuscation and bad faith throughout the litigation, resulting
in the appellees incurring signicant fees and costs.
Claim Construction
In re Power Integrations, Inc., 884 F.3d 1370, 126 U.S.P.Q.2d
1001 (Fed. Cir. 2018). The Federal Circuit reversed the
PTAB’s decision in an ex parte reexamination proceeding
nding that several claims of the patent were anticipated. The
Federal Circuit found that the PTAB’s claim construction
of the term “coupled” was unreasonably broad and improp-
erly omitted any consideration of the specication disclosure.
Because the PTAB’s anticipation nding was based on an
improper claim construction, the Federal Circuit reversed.
Ottah v. Fiat Chrysler, 884 F.3d 1135, 125 U.S.P.Q.2d
1901 (Fed. Cir. 2018). The Federal Circuit afrmed the dis-
trict court’s summary judgment of noninfringement as to
certain defendants and dismissal of the complaint with

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