Copyright / Federal Jurisdiction - Registration Requirement Does Not Restrict a Subject-Matter Jurisdiction Over Infringement Claims Involving Unregistered Works
Patents / Sanctions - Sanctions May Be Awarded for Violation of Injunction, Despite Good Faith Attempt to Redesign
Patents / Infringement (Literal and by Equivalents) - Infringement Is Not a Static Thing
Patents / Standard of Review - BPAI’s Misunderstanding of Prior Art Is Not a “Harmless Error”
Patents / Obviousness - “Irreconcilably Inconsistent” Jury Verdicts Require a New Trial
Patents / Hatch-Waxman - D.C. Circuit Rejects FDA’s Interpretation of “Failure to Market” Forfeiture Provisions
Patents/Biotechnology - Industrial Applicability in European Gene Patents—Divergences between the EPO and the UK
Patents / Obviousness / Summary Judgment - Federal Circuit Affirms Summary Judgment Ruling on Obviousness
Patents / Design Patents - Applying the Egyptian Goddess “Ordinary Observer” Test
Patents / Injunctive Relief - The Line Between an Ordinary Order and a Preliminary Injunction
Patents / “Just Compensation” - Old Secrets in the (Red) Light of the Cockpit
Patents / Legal Malpractice - Federal Circuit Upholds Dismissal of Legal Malpractice Claim
Patents/Section 145 - Federal Circuit Grants En Banc Hearing in Hyatt v. Kappos
Trademarks / Advertising / Attorney-Client Privilege - Fear of Lawsuit Not Sufficient to Justify Common-Interest Exception
Copyright / Availability of Statutory “Innocent Infringer” Defense - But I Didn’t Know I Was Infringing…
Copyright Infringement - Medical Emergency! But Form Not “Original”
Copyright / Fair Use - Postal Service’s Use of Photo of Korean War Veterans Memorial on Postage Stamp Not a Fair Use
Trade Secrets / Employment Agreements—Covenants Not to Compete - Enforceability of Covenants Not to Compete
Legislative Update - Patent Reform Redeux
Copyright / Federal Jurisdiction
Registration Requirement Does Not Restrict a Subject-Matter Jurisdiction Over Infringement Claims Involving Unregistered Works
In a unanimous decision, the Supreme Court of the United States held that although the Copyright Act’s registration requirement, 17 U.S.C. § 411(a), is a precondition to filing a copyright infringement claim, a copyright holder’s failure to comply with that requirement does not restrict a federal court’s subject-matter jurisdiction over infringement claims involving unregistered works. Reed Elsevier, Inc. v. Muchnick, Case No. 08-103. (Supr. Ct., Mar. 2, 2010) (Thomas, Justice).
This case matured from multiple class action lawsuits filed by freelance authors alleging copyright infringement based on electronic publication of their works when the works had only been licensed to be published in print form. After the Supreme Court’s 2001 decision in New York Times Co. v. Tasini, the class actions were consolidated and referred to mediation.
The parties reached a settlement allowing payment to all authors, including authors whose works had not been registered with the Copyright Office, in exchange for permission to publish the works electronically. Under the settlement, authors with registered works were given priority in payment and higher compensation, whereas authors of unregistered works received less compensation, which could be reduced to nothing depending on the availability of funds. After the court approved the settlement and certified the class, objecting class members (authors of unregistered works) appealed.
The U.S. Court of Appeals for the Second Circuit invalidated the settlement, finding that under § 411(a) the district court lacked subject matter jurisdiction over the claims concerning unregistered works and that every member of the class must meet the jurisdictional requirement of § 411(a) for the district court to possess subject matter jurisdiction over the case. Second Circuit further found that subject matter jurisdiction could not be cured by supplemental jurisdiction. Accordingly, the Second Circuit vacated and remanded the settlement. A dissent argued that the district court did possess subject matter jurisdiction, arguing that § 411(a) was merely a “claim processing” requirement and not a jurisdictional one.
The Supreme Court granted certiorari, limited to the jurisdictional issue, and reversed. The Supreme Court held that the registration requirement of § 411(a) did not prevent a federal district court from entering an order affecting unregistered copyrights. The Supreme Court explained:
“Subject to certain exceptions, the Copyright Act (Act) requires copyright holders to register their works before suing for copyright infringement. In this case, the Court of Appeals . . . held that a copyright holder's failure to comply with § 411(a)’s registration requirement deprives a federal court of jurisdiction to adjudicate his copyright infringement claim. We disagree. Section 411(a)’s registration requirement is a precondition to filing a claim that does not restrict a federal court’s subject-matter jurisdiction.”
Citing Arbaugh v. Y & H Corp. (2006), the Supreme Court explained that a statutory requirement is only jurisdictional if Congress “clearly states that [it] count[s] as jurisdictional” and that a condition “not rank[ed]” as such should be treated “as nonjurisdictional in character.” After noting that §411(a) does not “clearly state” that its registration requirement is jurisdictional, the Court analyzed the statutory language of the Copyright Act and its legislative history, finding that both weighed against finding the requirement jurisdictional. The Supreme Court further noted that the registration requirement is located in a provision separate from the jurisdictional provisions and concluded that finding §411(a) to be a jurisdictional requirement would be inconsistent with the Act’s provisions explicitly permitting claims involving unregistered works in certain circumstances.
Patents / Sanctions
Sanctions May Be Awarded for Violation of Injunction, Despite Good Faith Attempt to Redesign
Please contact Paul Devinsky
Affirming a district court’s contempt ruling, the U.S. Court of Appeals for the Federal Circuit found that good faith attempts to design around cannot save an infringer from a finding of contempt when the product is not “more than colorably different.” TiVo, Inc. v. EchoStar Corp. et al., Case No. 09-1374 (Fed Cir. Mar. 4, 2010) (Lourie, J.)(Rader, J. dissenting).
In 2004, TiVo brought suit against EchoStar based on receivers that allow users to simultaneously record and play television broadcasts, as claimed in TiVo’s asserted patent. The district court entered judgment on the jury verdict of lost profits and reasonable royalties, issuing a permanent injunction against EchoStar and ordering EchoStar to stop making, using, offering to sell and selling receivers that had been found infringing by the jury. The district court further ordered EchoStar to disable digital video recording functionality in existing receivers. Following an appeal on unrelated issues, TiVo moved the district court to find EchoStar in contempt. The district court ruled that EchoStar was in contempt, because the modified product continued to infringe, despite attempts at redesign. The district court additionally found that, even if EchoStar had succeeded in a non-infringing design-around, it would still have been in contempt because it had not complied with the disablement provision. The district court held that the disablement provision extended to all digital video recording functionality and not just infringing functionality.
On appeal, EchoStar argued that the district court abused its discretion in finding contempt because the firm had redesigned the product in a non-infringing manner and had disabled the infringing digital video recording functionality in existing receivers. On appeal, the Federal Circuit found no abuse of discretion because the contempt analysis did not require “clear and convincing” evidence that a contempt proceeding was appropriate. The Federal Circuit further found that the modified product continued to infringe and that the disablement portion of the permanent injunction was not limited to infringing functionality, but instead extended to all digital video recording functionality. The Federal Circuit also agreed with the district court that EchoStar’s attempts to design around TiVo’s patent were “wholly unsuccessful.” In response to EchoStar’s arguments that it spent 8,000 hours working on the issue and obtained a non-infringement opinion, the Federal Circuit stated that good faith attempts to design around “cannot save an infringer from a finding of contempt.”
In dissent, Judge Rader asserted that it is unreasonable to extend the injunction to all digital video recording functionality, rather than only infringing functionality. Judge Rader further asserted that the difference between the redesigned receivers and the infringing receivers “seems far ‘more than colorably different’” because the theory necessary to find infringement is entirely different. In particular, Judge Rader pointed to contradictory theories required to find infringement of the original receivers and the redesigned receivers. Because EchoStar eliminated the “very structure” that served as the basis for infringement at trial and had shown substantial good faith efforts to comply with the permanent injunction, Judge Rader stated that a new infringement suit, not a contempt proceeding, was the appropriate avenue for recovery.
Both TiVo and EchoStar plan to seek en banc review by the full Federal Circuit.
Patents / Infringement (Literal and by Equivalents)
Infringement Is Not a Static Thing
In affirming the district court’s holding that the defendants infringed the asserted claims in connection with one service product, but not two others, the U.S. Court of Appeals for the Federal Circuit outlined the procedures for applying many recent precedential decisions on claim construction infringement and willfulness. Trading Technologies Int’l, Inc. v. eSpeed, Inc. et al., Case Nos. 08-1392, -1392, -1422 (Fed. Cir. Feb. 25, 2010) (Rader, J.).
Plaintiff Trading Technologies International, Inc. (TT) sued eSpeed, alleging infringement of its patents relating to software for displaying the market for a commodity traded in an electronic exchange. More specifically, the patents are directed to displaying trading values in a static manner to allow a user to have confidence that an offer is being made at an intended price. In prior technologies, the trading values would change dynamically with market changes causing users difficulty in entering an order at the appropriate price.
The defendants, collectively eSpeed, provide an electronic exchange for trading commodities and design and sell trading platforms for use with their electronic exchanges.
The parties disputed whether certain eSpeed offerings included the claimed “static display of prices” or “static price axis.” The dispute concentrated on the way the accused platforms re-center the price levels when market values change and subsequently move away from the center of the display. Following a four week trial, the jury found that on of the older platforms willful infringed and awarded TT $3.5 million in damages based on a reasonable royalty. After the jury trial, the district court held a two-day bench trial on inequitable conduct. The trial court ruled the TT did not engage in inequitable conduct. The district court also denied eSpeed’s judgment as a matter of law (JMOL) motions on validity, indefiniteness, priority date and patent misuse, but vacated the jury’s finding of willful infringement and remitted the damages award to about $2.5 million.
Claim Construction and Literal Infringement
The Federal Circuit initially reviewed the trial court’s findings about the meaning of the disputed claim term “static.” The trial court, based on a review of the prior art, assessed the meaning of the claim term to a person of ordinary skill in the art and the prosecution history concluded that the term “static,” as used in the claims, required a manual re-centering command to be entered by a user to change the price axis of the display. On appeal, TT argued for a construction of the word “static” that did not mean immovable. However, the Federal Circuit affirmed the construction of the trial court. In re-applying the affirmed construction, the Federal Circuit also affirmed the non-infringement determination in relation to certain of eSpeed’s platforms. The Federal Circuit opined that because those platforms lack “price levels that do not change positions unless a manual re-centering command is received,” the products did not literally infringe the patents-in-suit.
Doctrine of Equivalents
The district court concluded that TT was estopped from relying on the doctrine of equivalents. The trial court reasoned that claim vitiation and prosecution history estoppel barred assertion of infringement by equivalents. On review, the Federal Circuit stated that claim vitiation applies when there is a “clear, substantial difference or a difference in kind” between the claim limitation and the accused product and that it does not apply if there is a “subtle difference in degree.” The Federal Circuit affirmed the determination that a price axis that moves only in response to the trader’s instruction versus a price axis that adjusts itself without prompting is not a subtle difference. The Federal Circuit then confirmed that an accused platform’s automatic re-centering feature is substantially different from the claimed invention and cannot fall within the scope of the claims under the doctrine of equivalents without “doing violence” to the “static” claim element. Accordingly, the Federal Circuit affirmed the trial court’s judgment that TT could not rely on the doctrine of equivalents to show that either of the non-literally infringing platforms infringed the patents-in-suit under the doctrine of equivalents.
TT argued that, because eSpeed began redesigning certain of its platforms immediately after the suit commenced and replaced an accused product with another, eSpeed should have been found to willfully infringe the asserted patents. The Federal Circuit, reviewing the trial court’s grant of the JMOL motion without deference, while viewing all the evidence in the light most favorable to the nonmoving party (in accordance with the law of the Seventh Circuit), affirmed the trial court and held that prompt redesign efforts and complete removal of infringing products in a span of a few months, if anything, supported a determination that eSpeed was not objectively reckless and did not willfully infringe the patents-in-suit.
Patents / Standard of Review
BPAI’s Misunderstanding of Prior Art Is Not a “Harmless Error”
Please contact Paul Devinsky
Addressing the proper standard of review of the factual determinations made by the Board of Patent Appeals and Interferences (BPAI or the Board), the U.S. Court of Appeals for the Federal Circuit vacated and remanded the BPAI’s decision that the claims on appeal were obvious. In re Chapman, Case No. 09-1270 (Fed. Cir. Feb. 24, 2010) (Dyk, J.).
The claims of the Chapman application were directed to a derivative antibody in which the two heavy chains of the antibody are linked to each other via a polymeric linker.
The examiner rejected the claims under 35 U.S.C. § 103 in view of prior art that described “linking antibody fragments to a polymer to increase an antibody’s circulating half-life for therapeutic purposes” and “linking two antibody fragments with a polymer to form a ‘dumbbell-shaped’ structure.” The Board affirmed the examiner’s obviousness rejection. On appeal, the U.S. Patent and Trademark Office (USPTO) conceded that the Board had misinterpreted the teachings of the prior art but argued that the errors were harmless.
The Federal Circuit first noted that the standard of review of Board’s factual findings is “substantial evidence.” The Court then applied the same “harmless error” rule that it applies to factual determinations from district courts. The Court found that the Board’s misinterpretation of the prior art was not harmless, as the misinterpretation called into question the Board’s legal determination of obviousness. In particular, two of the three errors were found to be harmful. First, the Court held that if the Board misinterpreted whether the prior art it taught the use of a polymer to link between the light chain and the heavy chain of an F(ab’)2 antibody fragment, then Chapman’s invention (i.e., using a polymer to link two F(ab’) fragments) “may be less obvious.” Second, “if the Board did not appreciate the full scope of antibody fragments disclosed in [the prior art],” then the Court could not “be confident about its ultimate conclusion that the selection of one of them to form Chapman’s molecule is obvious, as it appears that there are more possibilities from which to choose.” Therefore, because the Court could not “say with confidence that the Board would have reached the same conclusion in the absence of these errors,” it held that the errors were “indeed harmful.”
Practice Note: Interestingly, despite the fact that the Board had made several prejudicial errors in making its obviousness determination, the Court did not reverse the Board’s legal conclusion of obviousness. Instead, the Court remanded the case so that the Board can “revisit” its obviousness assessment in view of a correct understanding of the prior art.
This case suggests that a Board’s error is harmful if the error increases the likelihood that the Board’s assessment of patentability is erroneous or if the Federal Circuit cannot confidently conclude, upon appellate review, that the Board would have reached the same decision in the absence of the error.
Patents / Obviousness
“Irreconcilably Inconsistent” Jury Verdicts Require a New Trial
Stephen M. Yu
The U.S. Court of Appeals for the Federal Circuit vacated a district court’s final judgment and remanded the case for a new trial after a jury returned “irreconcilably inconsistent” verdicts. Comaper Corp. v. Antec, Inc., Case Nos. 09-1248, -1249 (Fed. Cir. Mar. 1, 2010) (Dyk, J.).
The new trial was ordered because a jury inexplicably found dependent claims obvious but found the independent claims on which those claims depend non-obvious. This marks the second time in less than seven months that the Federal Circuit has reversed a district court’s decision on such grounds - the first occurring in Callaway Golf Co.
The jury returned a “special verdict” in which it found that defendant Antec had willfully infringed a patent relating to a cooling device for a computer, that the asserted claims were not anticipated by prior art and that independent claims 1 and 12 were not invalid as obvious. However, the jury also found that claims 2 and 7, which depend on claim 1, and claim 13, which depends on claim 12, were invalid as obvious. Here, the inconsistency arose because a broader independent claim cannot be non-obvious where a dependent claim stemming from that independent claim is obvious.
Third Circuit law recognizes that if verdicts are genuinely inconsistent and the evidence might support either inconsistent verdict, the appropriate remedy is ordinarily to order a new trial. Attempting to reconcile the verdicts, the district court concluded that the evidence was insufficient to show that the dependent claims were obvious. The Federal Circuit disagreed.
The Federal Circuit reasoned that the district court incorrectly concluded that the prior art proffered by the defendant was not analogous to the patented invention. Interestingly, the Federal Circuit also noted that the district court may have applied the wrong standard for determining obviousness. Rather than applying the obviousness standard, the district court appeared to have applied the more rigorous standard governing anticipation, i.e., that all the claimed elements of the patent must appear in a single piece of prior art.
Upon reviewing the evidence, the Federal Circuit held that it was proper for the jury to consider the prior art asserted by the defendant and, under the correct standard for obviousness, the evidence was sufficient to support the jury’s obviousness verdict. Therefore, because the district court omitted certain evidence, misunderstood the test for analogous prior art and misapplied the standard for obviousness, the Federal Circuit vacated the district court’s judgment and ordered a new trial on the issue of obviousness.
Practice Note: Because not all district court judges thoroughly understand patent law, always make a pre-verdict motion for judgment as a matter of law (JMOL), under Fed. R. Civ. P. 50(a), to preserve a basis for a post-trial JMOL, under Fed. R. Civ. P. 50(b). Despite Antec’s failure to make a pre-verdict motion, a new trial on obviousness was granted because a pre-verdict motion is not required for a “special verdict” under Fed. R. Civ. P. 49(b). In contrast, Antec had forfeited its right to challenge the jury verdict on infringement and anticipation.
Patents / Hatch-Waxman
D.C. Circuit Rejects FDA’s Interpretation of “Failure to Market” Forfeiture Provisions
Contact Paul Devinsky
The U.S. Court of Appeals for the D.C. Circuit recently rejected the interpretation of the Food and Drug Administration (FDA) of the “failure to market” forfeiture provisions of the 2003 Medicare Modernization Act amendments (2003 MMA amendments) to the Hatch-Waxman Act. Teva Pharmaceuticals USA, Inc. v. Sebelius, Case No. 09-5281 (D.C. Cir. Mar. 2, 2010) (Williams, Sr., J.).
The 2003 MMA amendments to the Hatch-Waxman Act added forfeiture provisions to the statute. Under the provisions, a generic applicant can lose its 180-day exclusivity rights under certain circumstances. For example, the 2003 MMA amendments provide that a generic company forfeits its 180-day exclusivity period if the patent information submitted by the branded company is withdrawn. The 2003 MMA amendments further provide for a declaratory judgment counterclaim by a generic applicant to force a branded company to delist erroneously listed patents. Based on these changes in the statute, the FDA interpreted relevant parts of the 2003 MMA amendments literally, so that exclusivity was forfeited whenever patent information was withdrawn by the branded company.
Teva had filed Paragraph IV certifications against one patent listed in the Orange Book for Merck’s Cozaar® and Hyzaar® products. Rather than suing, Merck asked the FDA to delist the challenged patent. Already faced with two unrelated prior FDA rulings ordering forfeiture of the 180-day marketing exclusivity based on patent delisting, Teva challenged the FDA’s interpretation when it learned that Merck’s patent had been delisted. The district court granted summary judgment upholding the FDA’s interpretation.
On appeal, Teva argued that the declaratory judgment provisions added by the 2003 MMA amendments should be the only scenario in which the FDA may delist a challenged patent. Teva reasoned that nothing in the 2003 MMA amendments altered the essential incentive structure that Congress had set forth in the Hatch-Waxman statute. The court rejected Teva’s argument that declaratory judgment delistings are the only delistings permitted under the Hatch-Waxman Act. However, in ultimately ruling for Teva, the court read the statute as a whole, stating that all of the other forfeiture provisions required some participation by the generic drug maker and, therefore, the 2003 MMA amendments must not be read to mean that brand companies “should be newly able to delist challenged patents, thereby triggering a forfeiture event that deprives generic companies of the period of marketing exclusivity they otherwise deserve.”
Industrial Applicability in European Gene Patents—Divergences between the EPO and the UK
Although industrial applicability is one of the three requirements—along with novelty and an inventive step—for an invention to be patentable, it is rarely relied upon as a ground for invalidity. However, a recent dispute has shown that this can be a successful ground for attacking the validity of patents directed at genetic sequences. Eli Lilly and Co. v. Human Genome Sciences Inc.  EWCA Civ 33 (High Ct. of Justice Ct. of Appeal, Feb. 9, 2010) (Jacob, Lord Justice).
This dispute was fought both before the UK courts and in opposition proceedings before the European Patent Office (EPO). This was the first time the question of industrial applicability had been truly put in issue before the UK courts, and it was also one of the few times the issue had arisen at the EPO in inter partes proceedings.
At first instance, both the Court and the EPO found the patent invalid for lack of a disclosed industrial applicability for the claimed invention. However, the decisions reached on appeal differed, with the UK court upholding the earlier decision to find the patent invalid, whilst at the EPO it was held that the patent was valid and did disclose an industrial applicability. These differing decisions were reached despite the same principles of law being applied, and while the divergent outcomes could be explained by the two tribunals being presented with different evidence, it does seem that the EPO and at least one national court may be applying different standards to determine when a patent will or will not be valid.
Human Genome Sciences, using a bioinformatics approach, elucidated a nucleotide sequence which encoded for the protein “neutrokine-α”. This protein seemed to be part of the TNF family of proteins, a group of proteins known to have effects on the immune system. HGS obtained a patent for neutrokine-α; the patent was subsequently attacked by Eli Lilly on a number of grounds, including that the patent lacked an industrial applicability.
Whether under UK national law or before the EPO, in order to be patentable, an invention must be capable of industrial applicability. The EPC makes clear that “the description shall indicate explicitly, when it is not obvious from the description or nature of the invention, the way in which the invention is capable of exploitation in industry.” In most cases, no explicit indication is necessary as the industrial applicability will be immediately obvious from the nature of the invention. However, if proteins have been elucidated using a bioinformatics approach, this is not necessarily the case. It was because of this that the Biotech Directive included a specific provision, later incorporated into the EPC, requiring that the industrial application of a sequence or a partial sequence of a gene must be disclosed in the patent application.
The case law of the EPO has provided guidance as to what must be disclosed in order to meet this requirement of industrial applicability. In essence, the disclosure must provide an “immediate, concrete benefit,” be more than a speculative indication of possible objectives that might or might not be achievable by carrying out further research and not be so vaguely defined that no practical application or profitable use can be envisaged. The HGS patent disclosed thatα was a TNF family member. Based on this, the patent disclosed that neutrokine-α could be used to treat a large number of specific diseases; in some cases these treatments were contradictory in nature. The patent’s description covered most diseases a person might suffer from. Ironically, HGS has gone on to develop a product based on neutrokine-α for the treatment of lupus, one of the few diseases not mentioned in the patent.
The question of whether the disclosure was enough for the HGS patent to meet the requirements of disclosing an industrial applicability first came to be determined by the Technical Board of Appeals (TBA). In examining the facts, the TBA concluded that all members of the TNF family had a shared property (namely the ability to co-stimulate T-cell proliferation),and that this property was disclosed in the patent. The fact this disclosure was made alongside numerous contradictory statements and a wide range of conditions and diseases was held not to be relevant by the TBA, which commented that the skilled person (to whom a patent is notionally addressed) is capable of distinguishing these kinds of statements from the positive technical information provided.
The TBA commented that the skilled person would realize that the provision of the structure neutrokine-α and the ascribing of neutrokine-α to the TNF protein family were the first essential steps at the onset of a research program to elucidate all the properties of the protein. It was prima facie reasonable to expect most of the long list of disclosed functions and potential treatments to be present for neutrokine-α. It is a common practice for patentees to file application with long list of diseases and activities, the patentees subsequently relying on those few which are later confirmed. The skilled person is aware of this and can therefore distinguish the real technical information from the “boiler-plate” features. In light of this, the TBA found that there was an industrial application disclosed in the HGS patent, the patent being deemed to provide a “concrete benefit.”
Even if a patent has been found valid at the EPO, it is still possible for the patent to be revoked in one or more member states. Consequently, a few weeks after the decision of the TBA, the same question of industrial applicability was heard before the UK Court of Appeal.
The first question the UK Court faced was whether the Court should be in principle be able to differ from the decision of the TBA in this instance. The Court concluded that, if the issue is a matter of degree, courts will disagree, and the English Court could legitimately differ from a decision of the EPO. In addition, the assessment of industrial applicability was necessarily a fact-dependent exercise, and the facts before the different tribunals may well differ. Whereas the English courts adopted an intense fact-finding process, this was not the case in the EPO, where there is generally no disclosure and no cross-examination of witnesses. The Court saw no reason for the higher level of scrutiny in the English system to defer to that of the EPO. If a decision is determined on the facts before them, the English courts may well reach a conclusion that differs from that of the EPO, even if the principles applied to those facts were the same.
In reviewing the case law of the EPO to determine those relevant principles, the Court held that the disclosed industrial applicability must be plausible and sufficiently precise so that it would not be enough to merely state that something has a use as a pharmaceutical without doing more to specify what that pharmaceutical use might be. Applying these principles to the facts, which included: that the inventors had no idea as to the activity of neutrokine-α; that it was hard to believe, on the basis of no experimental data, that neutrokine-α could treat such a diverse range of conditions; that the skilled person would have known TNF proteins were involved in immune regulation and an extensive range of diseases, but also that TNF proteins had a wide range of different actions, with there being no disease related to all TNF proteins; and that in reality, one was faced with having to pursue a research program to see which of the possible uses was real. Based on these facts, the Court of Appeal held that there was no disclosure of an industrial applicability which was both specific and plausible, and so upheld the ruling that the patent was invalid for lack of an industrial applicability.
Patents / Obviousness / Summary Judgment
Federal Circuit Affirms Summary Judgment Ruling on Obviousness
Please contact Paul Devinsky
The U.S. Court of Appeals for the Federal Circuit recently upheld a summary judgment ruling on obviousness of a patent covering a “piece of memorabilia item” attached to a trading card. Media Technology Licensing v. The Upper Deck Co., Case No. 09-1022 (Fed. Cir. Jan. 1, 2004) (Mayer, J.)(Rader, J. dissenting).
On summary judgment, the district court held that Media Technologies’ patent was invalid for obviousness, based on an eclectic mix of prior art, including a trading card with a picture of Marilyn Monroe with a diamond attached, a piece of sheet reportedly slept on by one of the Beatles with letter of authenticity on hotel stationery, a greeting card with a piece of denim material belonging to James Dean attached and a piece of fabric purportedly belonging to a Capuchin Friar attached to paper stock including a picture of the friar.
Media Technologies maintained that a person of ordinary skill in the art would not apply the teachings of the Beatles and James Dean cards to a sports trading card, the item at issue in the case. Media Technologies further asserted that a person of ordinary skill would not have combined the references, or applied them to a sports card, based on an inability to predict that a trading card would convey memorabilia authenticity and that the trading card field containing a number of identified and unpredictable solutions. In a further attempt to demonstrate non-obviousness, Media Technologies argued that a “long felt but unsolved need” existed as well as unexpected results, in the form of commercial success. The district court found these arguments to be unavailing and granted Upper Deck Co.’s motion for summary judgment.
The Federal Circuit affirmed the district court’s ruling, finding that, in view of evidence that consumer acceptance comes from the credibility already associated with the 90-year old trading card industry, Media Technologies had not shown that the combination of memorabilia with a conventional trading card resulted, or would result, in consumers accepting authenticity. In addition, the Court found that possible presentation and content characteristics of trading cards are not infinite, but are instead “limited by the cards’ physical characteristics.” Though some features, such as color, typefaces and layout, may be changed, the Court noted that these variables relate to presentation, not the content of the card, the subject of the asserted claims. The Court also rejected Media Technologies’ claim for “unsolved need” and “unexpected results,” maintaining that the need stated by Media Technologies did not match the asserted claims and that commercial success of the cards, attributable to “celebrity, not invention,” could not satisfy the “unexpected results inquiry,” even if unexpected.
In a vigorous dissent, Judge Rader noted that underneath the “blindness” to the underlying facts supporting non-obviousness shown in the Federal Circuit’s ruling, a “bias against non-technical arts” existed. Judge Rader called the record in the case, “dubious at best,” for establishing that a person with skill in the art would even think of combining the prior art references named above. Noting the Court’s reliance on the defendants’ expert witnesses in making this ruling, Judge Rader stated: “To rely on such expertise without considering the countervailing factual evidence on record contravenes the role of a court at the summary judgment stage and gives accused infringers a free pass to avoid a jury’s judgment on the facts—in a sense, a get-out of-jail-free card (no pun intended).”
Patents / Design Patents
Applying the Egyptian Goddess “Ordinary Observer” Test
Christopher L. May
In two separate cases, the U.S. Court of Appeals for the Federal Circuit overturned a ruling of the International Trade Commission and affirmed a ruling of a district court based on the “ordinary observer” test for design patent infringement. Crocs, Inc. v. U.S. International Trade Commission et al., Case No. 08-1596 (Fed. Cir. Feb. 24, 2010) (Rader, J.); Richardson v. Stanley Works, Case No. 09-1354 (Fed. Cir. Mar. 9, 2010) (Lourie, J.)
In Crocs, the U.S. International Trade Commission (ITC) found that Crocs’ design patent for ornamental footwear was not infringed and that there was no domestic industry because Crocs did not practice the patented design. The Federal Circuit reversed, finding that the ITC, by focusing on the written description of the overall design, had improperly failed to consider if an “ordinary observer, familiar with the prior art designs, would be deceived into believing that the accused product is the same as the patented design.” When the Court compared the accused design with the claimed design, it canceled that an ordinary observer would consider the two designs to be the same. For the same reason, the Court found that Crocs was itself practicing the patent because an ordinary observer would believe its product was the same as the patented design.
In Richardson, the Court, citing Crocs, found that the district court properly applied the ordinary observer test by removing the functional elements from the accused and claimed design before comparing the two and determining the tool in issue did not infringe. The Court noted that although claim construction is not useful in every design patent case, it is useful in connection with design patents that contain numerous functional elements, since such patents mandate a narrow construction. Applying such claim construction and removing the functional elements from the infringement analysis, the Court found that the overall effect of the accused tool was different than the overall effect of the claimed design and therefore did not infringe.
Patents / Injunctive Relief
The Line Between an Ordinary Order and a Preliminary Injunction
In a recent decision, the U.S. Court of Appeals for the Federal Circuit found jurisdiction granted by 28 U.S.C. §1292 as interpreted by the federal courts and vacated a lower court’s order of preliminary injunctive relief. Duhn Oil Tool, Inc. v. Cooper Cameron Corp., Case No. 09-1352 (Fed. Cir. Feb. 19, 2010) (per curiam, non-precedential) (Linn, J.; Friedman, J.; Moore, J.).
Plaintiff Duhn owns a patent covering a “frac mandrel,” a tool for isolating the head of an oil or natural gas well. Cameron’s version of the tool was alleged to infringe when its lockscrews are engaged during installation. Though the district court claimed to deny injunctive relief, it effectively granted it by imposing an affirmative obligation on Cameron to “provide instructions to its frac mandrel customers, which unambiguously state that the lockscrews are not to be engaged during installation or use of the frac mandrel.”
The parties disputed whether the district court’s order was could immediately be appealed under 28 U.S.C. §1292. Under Federal Circuit precedent, if a district court’s order expressly grants an injunction, the order can be appealed under §1292(a)(1), without regard to whether the appellant is able to demonstrate serious or irreparable consequences. Applying this precedent, the Court found jurisdiction in viewing the district court’s order as an express injunction. The Court focused on the lower court’s requirement that Cameron provide installation instructions to its customers and classified that requirement as an injunction because it “specifically imposed … an affirmative obligation on Cameron … to prohibit Cameron from further allegedly infringing uses.” The Court then reasoned that based on conflicting evidence regarding future infringement, an insufficient showing of the notice requirement and Duhn’s failure to identify irreparable harm it would suffer without the court’s order, there were insufficient grounds to grant an injunction. The Court relied on precedent in Amazon, which requires the moving party to show both likelihood of success on the merits and irreparable harm unless the injunction issues.
Practice Note: Although Duhn Oil is designated as non-precedential, the Court’s application of Federal Circuit precedent to the appellate jurisdiction issue is compelling. A court’s order denying injunctive relief should be scrutinized in case it is injunctive in nature and thus improper.
Patents / “Just Compensation”
Old Secrets in the (Red) Light of the Cockpit
Addressing the issue of just compensation under the Invention Secrecy Act, the U.S. Court of Appeals for the Federal Circuit reversed the Court of Federal Claims and held that Honeywell’s patent at issue was valid and that Honeywell had standing to seek just compensation for pre-issuance use and post-issuance infringement of the patent by the United States. Honeywell Int’l, Inc., et al. v. United States, et al., Case No. 02-CV-1909 (Fed. Cir. Feb. 19, 2010) (Moore, J.) (Mayer, J. dissenting in part).
The patent-in-suit relates to passive night vision goggles (NVGs) that are compatible with a full-color display when both are used in an aircraft cockpit. Generally, NVGs function by amplifying available light, specifically light having relatively long wavelengths. A problem arises with the use of NVGs in aircraft cockpits because the cockpit displays often use red warning lights, a type of light that can overwhelm the NVG sensor and lead to disruption of vision through the NVGs. Prior art solutions involved eliminating or dimming red lights from cockpit displays. The government addressed the red-light problem by issuing an order that prohibited the use of red lights in NVG-compatible cockpits.
In 1985 Allied Corporation filed the application that matured into the patent in suit, the described invention was directed to a way of making NVGs compatible with red lights in aircraft cockpits. The invention employed a combination of filters, one of which allowed a narrow band of red light to pass, while another blocked all other ambient red light from reaching the NVG sensors. Together, these filters allowed the use of red lights in a cockpit display without disrupting the NVG sensors. Pursuant to the Invention Secrecy Act, a Naval Air Systems Command engineer reviewed the application and concluded that a secrecy order should be imposed. The secrecy order prevented the patent from issuing every year until 2000. By 2000, Allied Corporation merged with Honeywell to become Honeywell International . Consequently, Honeywell acquired ownership rights in the application. Honeywell later amended the claims of the application, which ultimately issued as the patent in suit.
After the patent issued, Honeywell filed a complaint in the Court of Federal Claims against the United States seeking just compensation under the Invention Secrecy Act for pre-issuance use of the invention and under 28 U.S.C. §1498 (a) for post-issuance infringement of certain claims that had been added to the application after the secrecy order had been lifted. The claims court held that the United States did infringe a claim of the patent, but that the patent was ultimately invalid. The claims court further held that Honeywell lacked standing under the Invention Secrecy Act to bring suit finding that, because of claim amendments and newly added claims, the patent in suit did not issue upon an application that was subject to a secrecy order pursuant to §181. Lastly, the claims court concluded that the “first sale doctrine” precluded Honeywell from recovering damages from the government for infringing on the patent because Honeywell manufactured and sold the NVGs at issue to the government. Honeywell appealed.
The Federal Circuit reversed, finding that the United States failed to meet its burden of proving that the patent was invalid. The Federal Circuit also reversed the claims court finding that Honeywell failed to establish a causal link between its injury and the United States’ conduct. According to the Invention Secrecy Act, “[t]he owner of any patent issued upon an application that was subject to a secrecy order … shall have the right, after the date of issuance of such patent to bring suit … for just compensation for the damages caused by reason of the order of secrecy and/or use by the Government of the invention resulting from his disclosure.” The claims court found that Honeywell’s amendments to the application were so dramatic that there was no “contiguous relationship or dependence between” the application on which a secrecy order had been imposed and the issued patent. As such, the claims court determined that the patent did not issue “upon” the application and that there was no causal link between Honeywell’s claimed harm and the secrecy order. The Federal Circuit rejected this “continuous relationship” test and noted that the Invention Secrecy Act explicitly allows for amendments made to an application. Therefore, because the patent in suit matured from the application that was subject to the secrecy order, Honeywell had standing to assert a claim for just compensation.
The Federal Circuit further rejected the claims court application of the first sale doctrine. Under the first sale doctrine, an inventor is precluded from seeking damages from the United States if an authorized first sale under the U.S. patent occurs prior to bringing the action. The claims court found that an authorized first sale occurred during Allied Corporation’s ownership of the application, when Allied manufactured and sold the invention disclosed and claim in the application to the government. The Federal Circuit rejected this application of the first sale doctrine and stated that “the fact that Honeywell now owns the patent does not retroactively authorize the earlier sale.” Accordingly, the first sale doctrine did not preclude Honeywell from recovering damages against the government for its infringing use of the patent.
In dissent, Judge Mayer asserted that when Allied Corporation and Honeywell merged to form Honeywell International, Allied Corporation’s rights merged with Honeywell’s rights. Therefore, in Judge Mayer’s opinion the majority’s ruling on the first sale doctrine unfairly allowed Honeywell to recoup the profits of the sale of products by its predecessor while simultaneously allowing Honeywell to sue the United States for infringing use of those sold product. Also, applying a forceful §112 written description argument, Judge Meyer would find that nothing in the original application supports the contention that Honeywell (or its predecessor) were in possession of the invention as ultimately claimed and that the trial court commented no error in finding that Honeywell was not harmed by the original secrecy order.
Patents / Legal Malpractice
Federal Circuit Upholds Dismissal of Legal Malpractice Claim
Upholding a district court’s grant of summary judgment, the U.S. Court of Appeals for the Federal Circuit held that conclusory expert witness testimony regarding the patentability of a lost or foregone patent right is insufficient to support the causation element of a legal malpractice claim. Davis v. Brouse McDowell, L.P.A., Case No. 09-1395 (Fed. Cir. Mar. 2, 2010) (Moore, J.).
The plaintiff, Heather Davis, is a solo inventor who developed a website, a search engine, social networking platform and business known as “The IP-Exchange.” On January 20, 2006, the plaintiff filed with the United States Patent and Trademark Office (USPTO) two provisional patent applications relating to the IP-Exchange website and search engine. Under U.S. patent law, in order to retain the January 20, 2006 priority date, Davis was required to file a utility application and PCT application within one year—by Monday, January 22, 2007. On January 17, 2007, Davis contacted Daniel Thomson, an attorney employed by the defendant, and requested that he prepare and file utility and Patent Cooperation Treaty (PCT) applications claiming benefit to the provisional applications. On January 22, 2007, Thomson filed only a utility application, which he admitted contained a poorly drafted specification. Thomson claims he intended to repair the application at a later time. Although instructed to file a PCT application, Thompson failed to do so on that date, waiting until January 25, 2007. Therefore, the PCT applications could not claim priority to the provisional applications. Ultimately, the plaintiff’s patent applications went abandoned.
The district court granted summary judgment in favor of the defendant, concluding that the plaintiff failed to establish a genuine issue of material fact as to the patentability of her inventions and therefore could not prevail on the causation element of her malpractice claim as a matter of law. Davis appealed.
On appeal, Davis argued that that the district court improperly granted the defendant’s motion for summary judgment. The Federal Circuit held that the district court had properly granted summary judgment. The Court found that, to prevail on a claim for legal malpractice based on negligent representation, the plaintiff must establish that the attorney owed a duty to the plaintiff, the attorney breached that duty and failed to conform to the standard required by law and that there is a causal connection between the conduct complained of and the resulting damage or loss. The Court held that plaintiff failed to establish the third element—that Thomson’s conduct actually caused her to lose any patent rights. Specifically, the Court found that plaintiff’s expert failed to provide any factual support that plaintiff’s inventions were patentable. Davis’ expert had not performed any prior art searches or any patentability analysis, nor had he identified any particular patent claims that could be made for plaintiff’s invention. Instead, the plaintiff’s expert provided a conclusory opinion that, but for the defendants’ legal malpractice, Davis would have been awarded a patent. The Court found that such an unsupported opinion does not create a genuine issue of material fact as to the patentability of plaintiff’s inventions. Because Davis failed to establish a genuine issue of material fact as to the patentability of her inventions, the Court held that she could not prevail on the causation element of her malpractice claim as a matter of law. As a result, the Federal Circuit held that the district court had properly granted summary judgment to the defendant.
Practice Note: Although the Court held that plaintiff’s expert had not provided any factual support to support his opinions, the court did provide guidelines of the types of proof a plaintiff could offer to support a claim for legal malpractice. The Court noted that the plaintiff’s ultimate burden is to establish the likelihood that her inventions would have been held patentable on examination in the USPTO or any applicable national patent office, in accordance with the criteria of patentability applied during examination. This burden could be met by reviewing the prior art cited by the patent office and discussing its affect on patentability.
Federal Circuit Grants En Banc Hearing in Hyatt v. Kappos
Please contact Paul Devinsky
In Chief Judge Rader’s first en banc case as chief judge of the U.S. Court of Appeals for the Federal Circuit, the Court will consider the scope of admissible evidence in §145 proceedings. Hyatt v. Kappos, Case No. 07-1066 (Fed. Cir. February 17, 2010).
In granting the rehearing en banc, the Court vacated the three-judge panel’s August 11, 2009 opinion and specifically requested briefing on three items: the Administrative Procedure Act’s relationship to §145 proceedings, whether §145 provides for a de novo proceeding and what limitations exist on the presentation of new evidence before in a §145 proceeding.
Plaintiff-appellant Gilbert P. Hyatt appealed to the Court, en banc, following an adverse ruling from the three-judge panel on August 11, 2009. Hyatt v. Doll, (see IP Update, Vol. 12, No. 8 ). In that opinion, the Court affirmed the district court’s grant of summary judgment in favor of the U.S. Patent and Trademark Office (USPTO). The district court’s grant of summary judgment was a direct result of the court’s decision to exclude a declaration because it was not submitted to the Board of Patent Appeals and Interferences (BPAI or the Board) during prosecution. The initial panel decision sidestepped the question of what standard governs admissibility of evidence in a §145 action, holding only that §145 actions are not truly de novo because of the requirements of the Administrative Procedures Act (APA). The panel explicitly “express[ed] no opinion as to admissibility of evidence in … factual scenarios that may arise in the future,” holding only that whether or not new evidence should be permitted must be answered in light of the patentee’s actions before the USPTO.
Trademarks / Advertising / Attorney-Client Privilege
Fear of Lawsuit Not Sufficient to Justify Common-Interest Exception
Ulrika E. Mattsson
The U.S. Court of Appeals for the Seventh Circuit affirmed a district court decision rejecting attorney-client privilege arguments and ordering Whirlpool to disclose communications between is attorneys and its outside advertising agencies relating to allegedly false advertising. LG Electronics, Inc. v. Whirlpool Corp., Case Nos., 09-3777; -3795 (7th Cir. Mar. 3, 2010) (per curiam) (Easterbrook, C.J.; Wood, J., Evans, J.).
LG Electronics sued Whirlpool claiming that Whirlpool, in violation of the Lanham Act, made literally and implicitly false claims in advertising, i.e., that its dryers use steam to reduce wrinkles. When asked to produce communications between its attorneys and its outside advertising agencies relating to the allegedly false claims, Whirlpool refused, arguing that the communications were protected by the attorney-client privilege. Whirlpool argued that the advertising agents were not third parties to whom the privilege would usually not apply, but de facto employees of the company. Alternatively, Whirlpool argued that the communication should be kept confidential based on the theory that the advertising agencies shared with it a common legal interest in producing lawful advertisements. After the district court rejected these arguments and ordered the communications produced, Whirlpool sought mandamus.
In its petition for mandamus, Whirlpool argued that because of the unavailability of collateral appeal the court should relax the standards for issuing writs of mandamus. The Seventh Circuit rejected the argument, stating that a petitioner seeking a writ of mandamus must show both that the challenged district court order will be effectively unreviewable if the “petitioner is forced to wait until the end of the case and also that the order is patently erroneous or usurpative in character.” Mandamus, as a remedy, is reserved for “extraordinary circumstances — i.e., when a disclosure order amounts to a judicial usurpation of power or a clear abuse of discretion, or otherwise works a manifest injustice.”
Further, in the present circumstances, the court found that the cases Whirlpool cited failed to establish error in the district court’s rejection of Whirlpool’s common interest (between it and its advertising agency). Rather, the court noted that the only common legal interest shared by Whirlpool and its chosen advertiser, over whom it has control, is the “fear of lawsuit,” a “fear that [does not] justify the common-interest exception” under Seventh Circuit law. Absent such error, the court determined that mandamus was inappropriate, regardless of whether Whirlpool has other opportunities for appellate review.
Copyright / Availability of Statutory “Innocent Infringer” Defense
But I Didn’t Know I Was Infringing…
John C. Low, Ph.D.
In a strategic victory for the recording industry, the U.S. Court of Appeals for the Fifth Circuit reversed a denial of a motion for summary judgment finding that notwithstanding an alleged infringer’s ignorance of the law, the “innocent infringer” defense under 17 U.S.C. § 504(c)(2), typically is not available as a matter of law if copyrighted materials are properly marked. Maverick Recording Co. et al. v. Whitney Harper, Case No. 08-51194 (5th Cir. Feb. 25, 2010) (Clement, J.).
The plaintiffs, five major record companies, solicited a third party to conduct online investigation of persons engaging in peer-to-peer file sharing of copyright-protected audio files on the Internet. In 2004, the investigators identified the sympathetic defendant, a teenage girl using a PC in her parent’s home, as downloading files with copyrighted audio works and making the files available to others. The plaintiffs sued the defendant for copyright infringement for the documented reproduction and alleged distribution of the copyrighted audio files. The district court granted the plaintiffs’ motion for summary judgment of infringement with respect to a portion of the downloaded files, but denied the plaintiffs’ request for statutory damages of $750 for each infringed work. The district court held that there was a genuine issue of material fact as to whether the defendant was an "innocent infringer" under 17 U.S.C. § 504(c)(2), which states that “where the infringer sustains the burden of proving … that such infringer was not aware and had no reason to believe that his or her acts constituted an infringement of copyright, the court in its discretion may reduce the award of statutory damages to a sum of not less than $200.” The defendant maintained that “she did not understand the nature of the file-sharing programs and that she believed that listening to music from file-sharing networks was akin to listening to a non-infringing Internet radio station.” The plaintiffs moved for entry of judgment in the amount of $200 for each infringed work. The court entered the judgment and both parties appealed.
On appeal, the Fifth Circuit affirmed the judgment of infringement and examined the innocent infringer defense. The court found that the defense is limited by 17 U.S.C. § 402(d), which states that when a proper copyright notice “appears on the published … phonorecords to which a defendant … had access, then no weight shall be given to such a defendant’s interposition of a defense based on innocent infringement in mitigation of actual or statutory damages.” The defendant did not dispute her “access” to properly marked physical copies of the recorded work, such as compact discs. Instead, the defendant maintained “that she was too young and naive to understand that the copyrights on published music applied to downloaded music.” The court held that “Harper’s reliance on her own understanding of copyright law—or lack thereof—is irrelevant in the context of § 402(d)” and that “[t]he plain language of the statute shows that the infringer’s knowledge or intent does not affect its application.” The court concluded that “[l]ack of legal sophistication cannot overcome a properly asserted § 402(d) limitation to the innocent infringer defense.” The court awarded statutory damages of $750 per infringed work.
Practice Note: Infringement of properly marked, copyright-protected works is a strict liability tort that is subject to (sometimes harsh) statutory damages.
Medical Emergency! But Form Not “Original”
Please contact Paul Devinsky
Addressing a copyright dispute involving the copyrightability of medical forms, the U.S. Court of Appeals for the Eleventh Circuit affirmed a summary judgment ruling that the medical forms were not copyrightable because the selection and arrangement of well-known medical terms was not sufficiently original. Utopia Provider Systems, Inc. v. Pro-Med Clinical Systems, LLC, 2010 U.S. App. LEXIS 3280 (11th Cir. Feb. 19, 2010) (Tjoflat, J.).
In 2001, a doctor and an administrator created a system of template medical forms for use in hospital emergency departments. They sought to license the form to defendant Pro-Med, a marketing agent. The doctor and administrator formed plaintiff Utopia for the purpose of marketing these forms. The parties entered into a five-year license agreement.
The system consisted of 56 paper templates to capture patient encounters, with each template consisting of a two- or three-page set of charts for documenting a patient’s symptoms, the doctor’s conclusions and directions to the patient. Utopia received a copyright registration for the system. Pro-Med began selling the templates and making royalty payments to Utopia. In 2006, after the license expired, Pro-Med, on its own, began marketing its own electronic version of the forms, a version that had been developed during and under the earlier license agreement with Utopia. After Utopia sued for breach and copyright infringement, Pro-Med filed a summary judgment motion seeking a ruling that the Utopia forms were not copyrightable. After the district court granted summary judgment it sua sponte dismissed the rest of the case as raising only state law claims. Utopia appealed.
The Eleventh Circuit affirmed, explaining that “blank forms which do not convey information or contain original pictorial expressions are not copyrightable.” While some courts, such as the Ninth Circuit, have taken a bright-line approach that blank forms can never be copyrightable, the Eleventh Circuit reaffirmed its rule that blank forms are copyrightable only if they “convey information.”
In this case, the court found that the only information conveyed by the forms at issue was the selection of questions to be asked by doctors about a patient’s symptoms. The Eleventh Circuit reasoned that the forms lacked origination in that they only conveyed questions that any doctor would have asked a patient and were therefore not copyrightable. The court also dismissed the contention that the selection and arrangement of the questions were copyrightable, finding that such selection does not convey information to render a blank form copyrightable. The court explained that if an action is well established in a profession (e.g., a doctor asking questions), the description of how to perform that action is not original and thus not copyrightable. The court concluded that the forms did not tell a doctor how to perform his or her job and thus did not “convey information.”
Finally, turning to the district court’s sua sponte dismissal of the state claims, the Eleventh Circuit noted that while the state contract claims were not pre-empted by the Copyright Act, neither was the district court’s decision not to exercise supplemental jurisdiction an abuse of discretion.
Practice Note: In most circuits, blank forms cannot be copyrightable unless they convey original information to the user.
Copyright / Fair Use
Postal Service’s Use of Photo of Korean War Veterans Memorial on Postage Stamp Not a Fair Use
Considering whether the U.S. government is liable for copyright infringement, the U.S. Court of Appeals for the Federal Circuit reversed the decision of the U.S. Court of Federal Claims and answered in the affirmative, holding that the U.S. Postal Service’s use of a photograph depicting a national memorial was not a fair use of the underlying sculptural works. Gaylord v. United States, Case No. 09-5044 (Fed. Cir. Feb. 25, 2010) (Moore, J.) (Newman, J., dissenting).
In 1986, Congress enacted legislation to erect the Korean War Veterans Memorial (Memorial) in Washington, D.C. The architectural firm Cooper-Lecky Architects, P.C. was selected as the primary contractor; it then selected Frank Gaylord as the sculptor for the project. Gaylord created 19 stainless steel statues of soldiers to represent a platoon of foot soldiers, which were arranged in a formation referred to as The Column. During his work on the project, Gaylord made certain revisions to his original statute designs based on suggestions from Cooper-Lecky and members of the Korean War Veterans Memorial Advisory Board (VAB) and Commission on Fine Arts (CFA). Gaylord applied for and received five copyright registrations relating to the soldier sculptures, all of which list Gaylord as the sole author. The Memorial was dedicated in May 1995.
In 1996, John Alli photographed the Memorial just after a snowstorm. Alli decided to sell prints of his photograph and sought permission from the copyright owner of the underlying work. Alli located William Lecky of Cooper-Lecky, who represented that he was the outright owner of the copyright. Alli agreed to pay royalties to Lecky, who did not notify Gaylord of the agreement.
In 2002, the U.S. Postal Service commissioned a postage stamp to commemorate the 50th anniversary of the armistice of the Korean War. The Postal Service selected Alli’s photograph and paid Alli $1,500 for its use. Alli informed the Postal Service that it would need to secure permission of the underlying copyright owner, Lecky. The Postal Service issued the stamp featuring Alli’s photograph, depicting 14 of the 19 soldier statues in The Column. The Postal Service produced approximately 86.8 million of the stamps and earned over $17 million from sales of the stamps and related items before retiring it. The Postal Service did not seek or obtain Gaylord’s permission to feature the soldier statutes in the stamp or on any related goods.
Gaylord sued the U.S. government for copyright infringement in the Court of Federal Claims in July 2006. During trial, the government argued that the stamp made fair use of the work. The government also argued that it possessed rights to the work as a joint author due to contributions from governmental entities VAB and CFA (which would have given the government an unlimited license in the work). The government also argued that the stamp fell under the exclusion from copyright infringement liability for architectural works. The Claims Court held that Gaylord was the sole copyright owner because the evidence did not show that Gaylord and the governmental entities intended the work to be a joint work, and the suggestions of the governmental entities did not rise to the level of protectable expression such that they could be considered joint authors. The Claims Court also held that The Column did not qualify as an architectural work. Ultimately, however, the Claims Court held that the government was not liable for copyright infringement because the Postal Service’s use of The Column in its stamp was fair use. The fair use determination was largely based on the Claim Court’s finding that the stamp was transformative, as Alli’s photograph and the Postal Service’s stylistic changes transformed the underlying work. Gaylord appealed.
The Federal Circuit upheld the determinations that Gaylord was the sole author of The Column and that it did not qualify as an architectural work, However, the Federal Circuit disagreed with the determination that the Postal Service’s use of the work in its stamp was fair use, finding three out of the four factors of the fair use test weighed against a finding of fair use—purpose and character of the infringing use; the nature of the copyrighted work; and the amount and substantiality of the portion of the work used.
The Federal Circuit disagreed with the Claims Court finding that the use was transformative, noting that the inquiry must focus on the purpose and character of the stamp, rather than that of Alli’s photograph. The Court held that because both the stamp and the photograph shared the common purpose of honoring Korean War veterans, the stamp did not transform the character of the work. The stamp’s commercial purpose, shown by its commercial success, also weighed against fair use. Concerning the nature of the work, the Federal Circuit found that the expressive and creative nature of the work weighed against fair use. Finally, the substantiality of the work used weighed against fair use because the stamp depicted nearly all of the underlying work—14 of the 19 soldier statutes.
On the remaining fair use factor, the Federal Circuit agreed with the Claims Court that the stamp had no negative impact on the value of the work or the market for derivative works. Therefore, this factor weighed in favor of fair use. Weighing the factors together, however, the Federal Circuit ultimately concluded that the Postal Service’s use of the work in its stamp was not a fair use, explaining that, “Even thought the stamp did not harm the market for derivative works, allowing the government to commercially exploit a creative and expressive work will not advance the purposes of copyright in this case.”
Trade Secrets / Employment Agreements—Covenants Not to Compete
Enforceability of Covenants Not to Compete
While conceding the case was a close one, the U.S. Court of Appeals for the First Circuit could not say that the court below abused its discretion in denying an employer a preliminary injunction to prohibit its ex-employee from working for its competitor. ANSYS, Inc. v. Computational Dynamics N. America, Ltd., Case No. 09-2634 (1st Cir. Feb. 12, 2010) (Lynch, J.).
Dr. Doru Caraeni’s employment agreement with ANSYS included the following “poorly drafted” clause: “I agree that for a period of one (1) year following termination of my employment with [ANSYS], I will not become an employee … or in any way engage in or contribute my knowledge to a competitor of [ANSYS].” Shortly after leaving ANSYS, Dr. Caraeni joined Computational Dynamics North America, Ltd. (CDNA), with which ANSYS shares 80 percent of the market for a type of simulation software.
ANSYS sued Dr. Caraeni and CDNA, seeking a preliminary injunction to enforce the non-competition clause. After the district court denied the preliminary injunction, ANSYS lodged an expedited appeal. The First Circuit upheld the district court’s denial of preliminary injunction, explaining that in order to demonstrate a likelihood of success on the merits, a factor to consider when deciding motions for preliminary injunction, ANSYS had argued that Dr. Caraeni’s subsequent employment was a breach of contract and that this breach was sufficient to demonstrate irreparable harm (i.e.,, another preliminary injunction factor that must be considered).
However, the First Circuit explained that these assertions presuppose that the clause is enforceable. The court sidestepped the argument that requiring ANSYS to show more than a breach of the clause would “effectively eliminate” the non-competition clause from the contract, forcing ANSYS to resort solely to common law trade secret protections. Instead, the court focused on New Hampshire’s general public policy disfavoring covenants not to compete. Although it identified the test for measuring the enforceability of such provisions, the court noted the lack of guidance in the law to decide this particular case. Without any guidance, the court was unable to reverse the denial of the motion below and could not find that ANSYS clearly demonstrated a likelihood of success as to breach of contract.
As to irreparable injury, the court also could not set aside the district court’s finding that Dr. Caraeni was unlikely to use ANSYS’s confidential information, presuming he acquired any, in his new employment. There was no clear error in the lower court’s finding credible CDNA’s general manager’s statements that CDNA prevents its employees, including Dr. Caraeni, from using confidential and trade secret information potentially acquired elsewhere.
Practice Note: To ensure the enforceability of noncompetition and confidentiality clauses in employment contracts, employers must ensure that their provisions are consistent with the relevant state public policy considerations in terms of duration, scope, etc.
Patent Reform Redeux
On March 4, 2010, just a few weeks after Senator Leahy (D-Vt.) announced a bipartisan agreement on a patent reform bill, the Senate Judiciary Committee introduced a new U.S. patent bill, S.515, directed toward resolving legislative differences and making U.S. patent law more compatible with international laws.
According to Sen. Leahy and other managers of the legislation, the new bill preserves the following essential features of the 2009 patent reform bill.
It transitions the United States to a first-inventor-to-file system.
It permits third parties to comment on pending patent applications and to explain to the U.S. Patent and Trademark Office (USPTO) why certain prior art is relevant and by establishing a first-window (now reduced to nine months) post-grant review proceeding to weed out a patent that should not have issued during the first year after the patent is granted
It permits administrative challengers at the USPTO throughout the life of the patent by transitioning from a reexamination model to an opposition model that the USPTO should complete in 12 months.
It provides a procedural, gate keeping role for district courts to assess the legal basis for a specific damages theory and jury instructions sought by the parties, including instructions regarding willful infringement.
However, according to background materials circulated by the sponsoring senators, the bill includes the following changes from the 2009 version of the patent reform bill:
First-window post-grant review: Shortens the window from 12 months to 9 months, and raises the threshold for instituting a proceeding to a showing that it is “more likely than not” that at least one claim is unpatentable.
Inter partes review: Slightly raises the threshold for instituting an IPR to a “reasonable likelihood” that the challenger would prevail in invalidating a claim of the patent; creates additional safeguards to prevent a challenger from using the administrative process to harass patent owners; and inserts “reasonably could have raised” estoppel, preventing a challenger from raising in court an argument that reasonably could have been raised during an inter partes review that the challenger instituted.
Best mode: Eliminates best mode as a separate requirement (from written description).
Willfulness: Codifies the recent case law on willfulness In re Seagate (see IP Update, Vol. 10, No 8) which requires willfulness to be demonstrated by clear and convincing evidence that the infringer acted with objective recklessness. It also adds substantive and procedural safeguards for alleged infringers, including requiring willfulness to be pled with particularity; preventing mere knowledge of the patent to support a finding of willfulness; requiring specificity in pre-suit notification; upon motion, prohibiting increasing damages if there is a determination that a “close case” on infringement, validity or enforceability exists; permitting a party to request the damages and willfulness phases be sequenced to occur after the infringement stage; and providing that not obtaining advice of counsel may not be used to show willfulness or inducement.
Interlocutory appeals: Removes the provision that would have required the Federal Circuit to accept interlocutory appeals of claim construction determinations.
USPTO funding: Requires that the USPTO to reduce fees by 50 percent for small entities and 75 percent for the new classification of “micro-entities” created by the bill.
Supplemental examinations: Permits a patent holder to provide additional, potentially material prior art regarding the patent to the USPTO. If the USPTO considers the information and determines it has no effect on patentability, that additional information cannot serve as the basis for an inequitable conduct claim later in court. The information must be presented to the USPTO and any re-examination must be completed prior to litigation.
Patent marking: In apparent response to the Federal Circuit’s recent ruling in Bon Tool Co., (see IP Update, Vol. 13, No. 1) limits false marking actions under 35 U.S.C. § 292 to persons who have “suffered a competitive injury.”