SoCal IP Law Group

The SoCal IP Law Blog

SoCal IP Institute :: November 3, 2014 :: S.D.Cal Denies Attorneys Fees in Copyright Case; N.D. Cal holds no patent infringement where sales are made abroad

Our weekly SoCal IP Institute meeting on Monday, October 27, 2014 will be a discussion of two recent California District Court Cases:

Reinicke v. Creative Empire LLC, Case No. 12-vc-1405 (S.D. Cal 10/22/14) (available here).  Here, the district court denied CE’s motion for an award of fees and costs despite Plaintiff’s inability to establish copyright infringement.  The Court held there was a reasonable legal and factual basis to support the copyright infringement claim. Further, the court did not want to discourage individual language developers from asserting copyright ownership.

Ziptronix v. OmniVision Tech., Case No. 10-05525 (ND Cal 10/21/14) (available here). Here, Ziptronix sued OmniVision, Taiwan Semiconductor Manufacturing Co., Ltd and TSMC North America Corp. (both referred to as “TSMC”) for nine counts of patent infringement involving image sensor technology used in smartphones. TSMC prevailed on summary judgment because the subject wafers –thin slices of semiconductor material, such as a crystalline silicon, used in electronics — were not sold within the United States.  Ziptronix’s position that TSMC and OmniVision negotiated and executed contracts for the sale of the wafers in the United States failed as the Court held that the contracts contemplated delivery and performance outside the US.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, November 3, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: October 27, 2014 :: Divided Infringement of System Claims and Pleading Inequitable Conduct

Our weekly SoCal IP Institute meeting on Monday, October 27, 2014 will be a discussion of two older cases. The first is a 2011 Federal Circuit case regarding divided infringement of a system claim and the second is a district court case on the requirements of pleading inequitable conduct after Therasense.

Centillion Data Systems, LLC v. Qwest Corp. Int’l et al., No. 2010-1110, 01131 (Fed. Cir. Jan 20, 2011) (available here).  Here, Centillion appealed a decision finding that there was no direct infringement of a system claim by Qwest.  In particular, Centillion’s claims included “backend” and “frontend” computer components such that the claims relied upon user’s computers to cause the backend components (servers, etc.) to begin to function.

On appeal, while discussing “use” infringement under 271(a), the Federal Circuit held “that to ‘use’ a system for purposes of infringement, a party must put the invention into service, i.e., control the system as a whole and obtain benefit from it.”  Qwest, as a matter of law, cannot use its own system that is reliant upon the personal computers of its users.  However, in this case, Qwest’s customers did use the system and were the direct infringers. However, Qwest did not vicariously infringe because “Qwest in no way directs its customers to perform nor do its customers act as its agents. While Qwest provides software and technical assistance, it is entirely the decision of the customer whether to install and operate this software on its personal computer data processing means.”

Cutsforth v. LEMM Liquidating, 2013 U.S. Dis. LEXIS 79385 (June 6, 2013) (available here).  Here, a defendant answered with a counterclaim of inequitable conduct and the plaintiff filed a motion to strike from the complaint.  The district court here found that LEMM Liquidating had adequately pled inequitable conduct where Cutsforth had previously asserted two patents during the pendency of a third and been presented with invalidity charts identifying several references that allegedly invalidated the patents.  That earlier case was soon thereafter dismissed prior to even an early meeting of counsel in the case.  Cutsforth submitted the references identified by that defendant in the then-pending patent, but did not provide the invalidity charts provided by that defendant to the PTO.  On that basis, the district court here found this withholding of the invalidity charts sufficient to meet the Therasense requirements at least at the pleading stage.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, October 27, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: October 20, 2014 :: Copyrights

Our weekly SoCal IP Institute meeting on Monday, October 20, 2014 will be a discussion of copyrights. Chris Kopitzke will present a summary of the State Bar of California’s, “Copyright Office Comes to California” event. In addition, we will discuss the following two cases (one of which was previously discussed, but is a good refresher).

Metropolitan Regional Information Systems, Inc. v. American Home Realty Network, Inc. (4th Cir. 7/17/2013) (available here).  The plaintiff, MRIS, offers an online multiple listing service for real estate brokers and agents. Subscribers must pay a fee for MRIS’s service, which allows subscribers to upload their real estate listings. Subscribers must agree to assign to MRIS the copyrights in each photograph included in a listing. The defendant, AHRN is a California real estate broker that owns and operates the website NeighborCity.com. Plaintiff sued defendant and requested a preliminary injunction against defendant’s use of plaintiff’s photographs on its website. The district court granted plaintiff a preliminary injunction, and the 9th Circuit affirmed the district court’s preliminary injunction order.

Alaska Stock v. Houghton Mifflin, Docket No. 10-36010 (9th Cir. March 18, 2014) (available here). Reversing the district court’s dismissal of a copyright infringement action, the panel held that copyright registration of a collective work registers the component works within it. The panel held that the Register of Copyrights had authority to prescribe a form and grant certificates extending registration to individual stock photographs within a collection where the names of each of the photographers, and titles for each of the photographs, were not provided on the registration applications. Agreeing with other Circuits, and deferring to the Copyright Office’s interpretation of the Copyright Act, the 9th Circuit panel held that where the photographers had assigned their ownership of their copyrights in their images to the stock agency, and the stock agency had registered the collection, both the collection as a whole and the individual images were registered.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, October 20, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: October 13, 2014 :: Trade Dress Includes “Look and Feel” of Website; Delaware judge unseals $1.4 million Judgment

Our weekly SoCal IP Institute meeting on Monday, October 13, 2014 will be a discussion of a recent N.D. Cal case discussing trade dress and a decision by a federal judge to unseal an Order to expose an extortionist company:

Ingrid & Isabel, LLC v. Baby Be Mine, LLC et al., No. 13-cv-01806 (N.D. Cal Oct. 1 2014) (available here).  Both parties sell belly bands for pregnant women.  The crux of  the suit was that defendants copied plaintiff’s trade dress — namely, the “look and feel” of its website.   The court concluded that the look and feel of a website could constitute a trade dress protected by federal trademark law.

In Summit Data Systems, LLC v. EMC Corp. et al, No. 10-749-GMS (Sept. 2, 2014) (available here), a federal judge has unsealed his $1.4 million Judgment as means of deterring “reckless and wasteful litigation” whereby Acacia Research subsidiary Summit Data Systems was suing companies for patent infringement primarily to extort nuisance settlements.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, October 13, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: October 6, 2014 :: Inequitable Conduct and Acquired Distinctiveness in the TTAB

Our weekly SoCal IP Institute meeting on Monday, October 6, 2014 will be a discussion of a recent inequitable conduct case and a TTAB decision on acquired distinctiveness of trade dress. Brief synopses of the cases appear below.

American CalCar, Inc. v. Honda, No. 2013-1061 (Fed. Cir. Sept. 26, 2014) (available here).  Calcar appealed from a decision of the Southern District of California that the asserted three patents, related to in-car navigation systems, were unenforceable for inequitable conduct before the U.S. Patent and Trademark Office.  In short, the inventor, who also prepared the patent applications, failed to disclose that he had seen and photographed a Honda-created navigation system before filing.  Honda alleged that the details that he had seen in the Honda system were exactly those details that he eventually claimed in the asserted patents.  The case proceeded to trial.  After trial, the court found the two otherwise-valid patents unenforceable for inequitable conduct.

During the appeal process, the Therasense case was decided, altering the standard for finding equitable conduct.  The case was remanded for additional briefing on “materiality” and the district court still found that “but for” the withholding of the information, the patent would not have issued and that the inventor had specific intent to deceive the Patent Office.  This case is somewhat strange because the district court found that a particular limitation related to the interface was not disclosed in the Honda prior-art system, but still found the “but for” causation.  That is, the prior art did not expressly disclose one of the limitations, but was still sufficient for a finding of materiality because what it did disclose would “perform the same function” as the claim limitation that was not otherwise shown. As to intent, the inventor disclosed the existence of the earlier system, but did not disclose his photographs and other notes regarding the system.  Thus, he acted with the specific intent required and the district court’s decision finding all three of the asserted patents unenforceable for his inequitable conduct was affirmed.

In re Koninklijke Philips Electronics N.V., Ser. No. 85092079 (Sept. 26, 2014) (available here). Philips sought to register the “base assembly” of its electric toothbrushes on the Principal Register as trade dress.  It has a series of indentations around the base of the head of the toothbrush.  After a refusal to register, the TTAB affirmed finding that 10 years of continuous use, without “look-for” advertising, and in spite of voluminous sales was insufficient to demonstrate that the product had obtained “acquired distinctiveness” such that the consuming public associated the base assembly with the Philips brand.  The examining attorney’s refusal to register was affirmed.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, October 6, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: September 29, 2014 :: TTAB case and Patentable Subject Matter

Our weekly SoCal IP Institute meeting on Monday, September 29, 2014 will be a discussion of a recent TTAB decision and a decision from the Central District of California regarding patentable subject matter. Brief synopses of the cases appear below.

In re 3P Learning Pty Ltd. (TTAB 9/16/14) (available here). Mark A. Goldstein will lead the discussion on this appeal. Mark successfully won this rare appeal in which the TTAB reversed the Examiner’s decision to refuse to register applicant’s mark.

In McRO (Planet Blue) v. Activision Blizzard, et al. (C.D. Cal. 9/22/2014) (available here). In this decision, Judge Wu granted defendant’s FRCP 12(c) motion and invalidated all of the plaintiff’s patent claims under 35 U.S.C. 101.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, September 29, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: September 22, 2014 :: A Glance at Current Copyright Happenings

Our weekly SoCal IP Institute meeting on Monday, September 22, 2014 will be a discussion of recent copyright cases. Brief synopses of the cases we will discuss appear below.

Princeton Payment Solutions, LLC v. ACI Worldwide, Inc. et al, No. 1:13-vc-852 (ED Va. August 15, 2014) (available here). In this computer software copyright case, the Court granted summary judgment in favor of the defendants.  This summary judgment opinion hinged on the issue of who owned the software where the software was developed by an independent contractor who did not assign her rights to plaintiff until after the commencement of this suit.

Actuate Corp. v. Fidelity Nat’l., No. C 14-02274 RS  (N.D. Cal. August 21, 2014) (available here).  In this case, the Court granted Fidelity’s motion to dismiss regarding a claim for software copyright infringement, wherein the License Agreement that Fidelity allegedly breached failed to establish any numeric limits on Fidelity’s right to install and distribute the software, but instead merely required Fidelity to pay for the licenses it required according to a payment schedule attached to the agreement.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, September 22, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: September 15, 2014 :: Section 101 Patentable Subject Matter Bloodbath

Our weekly SoCal IP Institute meeting on Monday, September 25, 2014 will be a discussion of several recent cases and trends related to 35 U.S.C. Section 101 patentable subject matter.  Over the past few weeks, several financial services and software-related patents have been found unpatentable under Section 101.  A good summary article may be found here.  We will discuss a few representative cases.  Brief synopses of the cases we will discuss appear below.

Tuxis Technologies, LLC v. Amazon.com, Inc., No. 13-1771-RGA (D. Del. September 3, 2014) (available here). Amazon’s motion to dismiss for failure to state a claim on a patent on a method of “upselling” to a consumer using a computer system was found not to present patentable subject matter.  As a result, the case was dismissed on the pleadings.  The court found that the patent failed to meet the Alice criteria of providing some “inventive concept” beyond the abstract idea, in this case, of “upselling.”  The court did not find it here.

Eclipse IP LLC v. McKinley Equipment Corp., No. 14-154  (C.D. Cal. September 4, 2014) (available here). The court characterized this patent as directed to “asking someone if they are available to perform a task and then either waiting for them to complete 26 it or contacting the next person.”  The court further stated “[t]he claim recites that the method is performed ‘in connection with a computer-based notification system,’ which Eclipse argues saves the claims because ‘every asserted claim of the ‘681 patent requires a specially programmed computer system and a specially-equipped PCD to implement the invention and to achieve its benefits.'”  The two other patents relate to asking whether individuals are able to go to locations (deliver goods or pick up individuals) and, if not, seeking others to go to locations.  The court here found that these claims similarly do not provide any “inventive concept” as required by Alice. The court granted McKinley’s motion to dismiss.

Every Penny Counts, Inc. v. Wells Fargo Bank, N.A., No. 11-cv-2826 (M.D. Fl. September 11, 2014) (available here). Here, the two asserted patents “claim, respectively, a method of and a system of automated saving or automated charitable giving.” For example, the dollars and cents amount of a bank customer’s credit card purchase is “rounded up” to the next whole dollar. The difference between the dollars and cents amount of the purchase and the next whole  dollar, to which the amount is “rounded up,” is withdrawn from the customer’s bank account and deposited into a recipient account for personal saving or charitable giving.  The court describes the method as follows:

The ’849 patent’s “representative” method, Alice, 134 S. Ct. at 2359, comprises (1) electronically receiving data, including the transaction amounts,6 (2) modifying the transaction amounts in accord with a formula, (3) depositing the differences between the modified and unmodified transaction amounts into one or more recipient accounts, and (4) adjusting each account balance accordingly. The function performed by the computer at each step of the method is “purely conventional.”

In sum, the ’849 patent, a method patent, is invalid under Section 101 because the patent claims an abstract idea that is implemented by “well-understood, routine, conventional activities previously known to the industry.”

Thus, Wells Fargo’s motion for summary judgment was granted.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, September 15, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: September 8, 2014 :: Trademarks and Patentable Subject Matter

Our weekly SoCal IP Institute meeting on Monday, September 8, 2014 will be a discussion of a recent trademark decision and a recent decision on patentable subject matter from the District of Delaware. Brief synopses of the cases appear below. Panda Kroll, Esq., will lead the discussion on the trademark case.

Blackhorse v. Pro-Football, Inc., Cancellation No. 92046185 (TTAB June 18, 2014) (available here), involves a case of what constitutes disparaging trademarks. The marks at issue were REDSKINETTES (typeset word(s)), REDSKINS (typeset word(s)), THE REDSKINS (drawing which includes word(s)), WASHINGTON REDSKINS (drawing which includes word(s)), WASHINGTON REDSKINS (typeset word(s)), and THE REDSKINS (drawing which includes word(s) in stylized form). The registrations for the marks above were issued in 1990, 1978, 1974, 1974, 1974, and 1967 respectively.

The Board applied a two-step analysis in finding that the marks were disparaging.  The steps are: “a. What is the meaning of the matter in question, as it appears in the marks and as those marks are used in connection with the goods and services identified in the registrations?” and “b. Is the meaning of the marks one that may disparage Native Americans?” The Board found that the Pro Football, Inc.’s alleged honorable intent and manner of use do not contribute to the determination of whether the term is disparaging. The record established that at least thirty percent of Native Americans found REDSKINS used in connection with Pro Football, Inc.’s services to be disparaging at the time they were registered. The Board found this number to be substantial.

 

Walker Digital, LLC, v. Google, No.: 11-318-LPS (D. Del. 9/3/2014) (available here). The plaintiff sued Google for infringing two of its patents related to facilitating employment searches. Google filed a motion for summary judgment asserting that the patents were invalid under 35 U.S.C. 101. The district court held the patents invalid.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, September 8, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: August 18, 2014 :: Detection/Prevention of Substance Abuse

Our weekly SoCal IP Institute meeting on Monday, August 18, 2014 will be a discussion on how to cope with the unique challenges of legal practice. The course will involve watching a streamed video of instructors Richard Carlton and David Mann of the California Bar discussing the topic followed by a brief discussion of the subject matter of the video.  The instructors summarize the presentation as an examination of the stress, anxiety, depression and substance abuse challenges often encounter by legal professionals, and the strategies and resources available to address these concerns.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, August 18, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of Detection/Prevention of Substance Abuse MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

Follow

Get every new post delivered to your Inbox.