SoCal IP Law Group

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Monthly Archives: March 2013

SoCal IP Institute :: April 1, 2013 :: Contributory Copyright Infringement and “Contested Cases” before the PTO

Our weekly SoCal IP Institute meeting on Monday, April 1, 2013 will be a discussion of one Federal Circuit case regarding patent divided infringement and a 9th Circuit case regarding copyright fair use.  Brief synopses of the cases appear below.

Columbia Pictures et al. v. Gary Fung; Isohunt Web Tech., Inc., Case No. 10-55946 (9th Cir. March 21, 2013) (available here).

The 9th Circuit affirmed in part and vacated in part the district court’s judgment in favor of film studios, which alleged that the services offered and websites maintained by the defendants induced third parties to download infringing copies of the studios’ copyrighted works.  The panel held that under Metro-Goldwyn-Mayer Studios, Inc. v. Grokster Ltd., 545 U.S. 913 (2005), the defendants were liable for contributory copyright infringement on an inducement theory because the plaintiffs established (1) distribution of a device or product, (2) acts of infringement, (3) an object of promoting the product’s use to infringe copyright, and (4) causation in the defendants’ use of the peer-to-peer file sharing protocol known as BitTorrent.

The panel also held that the defendants were not entitled to protection from liability under any of the safe harbor provisions of the Digital Millennium Copyright Act, including safe harbors provided by 17 U.S.C. § 512(a), (c), and (d) for transitory digital network communications, information residing on systems or networks at direction of users, and information location tools. The panel nonetheless rejected the argument that inducement liability is inherently incompatible with protection under the safe harbors.  Finally, the panel held that certain provisions of the injunction were too vague to meet the notice requirements of Fed. R. Civ. P. 65(d), and certain provisions were unduly burdensome.

Abbot Labs. v. Cordis Corp., Case No. 2012-1244 (Fed. Cir. March 11, 2013) (available here).

Cordis Corporation appealed from the decision of the United States District Court for the Eastern District of Virginia granting Abbott Laboratories’ motion to quash two subpoenas duces tecum issued pursuant to 35 U.S.C. § 24. The district court concluded that section 24 only empowers a district court to issue a subpoena for use in a “contested case,” and that contested cases are limited to those in which the regulations of the United States Patent and Trademark Office (“PTO”) authorize the parties to take depositions. Since the PTO does not provide for depositions in inter partes reexamination proceedings, such proceedings are not “contested cases” within the meaning of section 24, and subpoenas under section 24 are not available. The Federal Circuit affirmed.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, April 1, 2013 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.

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SoCal IP Institute :: March 25, 2013 :: Divided Infringement and Fair Use

We were lucky enough to have Young-Wook Ha , the President of Korean intellectual property firm firm Ha & Ha, visiting with us last week.  Mr. Ha provided some guidance on the differences between Korean and U.S. patent practice and recent changes to Korean practice.  As a result of Mr. Ha’s visit, we did not cover those cases that we had intended to cover. We will now cover those cases on Monday, March 25, 2013 in our weekly SoCal IP Institute meeting.

We will discuss one Federal Circuit case regarding patent divided infringement and one 9th Circuit case regarding copyright fair use that were first outlined last week. Brief synopses of the cases appear below.

Aristocrat Technologies Australia PTY Ltd. et al. v. IGT, Case No. 2010-1426 (Fed. Cir. March 13, 2013) (available here).

This is a gambling-related patent suit stemming from a method of offering a patron a reward from a secondary game after a patron has taken part in a first game.  One of the steps of the process is “making a wager at a particular gaming machine in the network of gaming machines,” which the district court construed as requiring the patron to place a bet.  As a result, the district court granted IGT’s motion for summary judgment because all claims require two separate actors, the operator of the gaming machine and the player.  Aristocrat appealed the claim construction and the divided infringement decision.

On appeal, the Federal Circuit agreed with the district court’s construction of the “making a wager” limitation.  Next, they indicated that no single actor performs all of the required step and, therefore, there can be no direct infringement.  However, the Federal Circuit remanded the case for a determination whether here was indirect infringement of the patent under the recent Akamai decision.  The case was, therefore, affirmed in part, vacated and remanded in part.

SOFA Entertainment, Inc. v. Dodger Prod., Inc. Etc. D.C. No. 2:08-cv-02616 (9th Cir. March 11,, 2013) (available here).

This 9th Circuit decision affirmed the district court’s grant of summary judgment and award of attorneys’ fees in a copyright infringement suit regarding a seven-second clip of Ed Sullivan’s introduction of the Four Seasons on The Ed Sullivan Show.  The panel held that the defendants were entitled to prevail on their fair use defense as a matter of law.

The defendants used the clip in Jersey Boys, a musical about the Four Seasons, to mark a historical point in the band’s career. The panel held that this was a fair use because by using the clip for its historical significance, the defendants had imbued it with new meaning and had done so without usurping whatever demand there was for the original clip.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, March 18, 2013 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 :: March 18, 2013 :: Divided Infringement and Fair Use

Our weekly SoCal IP Institute meeting on Monday, March 18, 2013 will be a discussion of one Federal Circuit case regarding patent divided infringement and a 9th Circuit case regarding copyright fair use.  Brief synopses of the cases appear below.

Aristocrat Technologies Australia PTY Ltd. et al. v. IGT, Case No. 2010-1426 (Fed. Circ. March 13, 2013) (available here).

This is a gambling-related patent suit stemming from a method of offering a patron a reward from a secondary game after a patron has taken part in a first game.  One of the steps of the process is “making a wager at a particular gaming machine in the network of gaming machines,” which the district court construed as requiring the patron to place a bet.  As a result, the district court granted IGT’s motion for summary judgment because all claims require two separate actors, the operator of the gaming machine and the player.  Aristocrat appealed the claim construction and the divided infringement decision.

On appeal, the Federal Circuit agreed with the district court’s construction of the “making a wager” limitation.  Next, they indicated that no single actor performs all of the required step and, therefore, there can be no direct infringement.  However, the Federal Circuit remanded the case for a determination whether here was indirect infringement of the patent under the recent Akamai decision.  The case was, therefore, affirmed in part, vacated and remanded in part.

SOFA Entertainment, Inc. v. Dodger Prod., Inc. Etc. D.C. No. 2:08-cv-02616 (9th Cir. March 11,, 2013) (available here).

This 9th Circuit decision affirmed the district court’s grant of summary judgment and award of attorneys’ fees in a copyright infringement suit regarding a seven-second clip of Ed Sullivan’s introduction of the Four Seasons on The Ed Sullivan Show.  The panel held that the defendants were entitled to prevail on their fair use defense as a matter of law.

The defendants used the clip in Jersey Boys, a musical about the Four Seasons, to mark a historical point in the band’s career. The panel held that this was a fair use because by using the clip for its historical significance, the defendants had imbued it with new meaning and had done so without usurping whatever demand there was for the original clip.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, March 18, 2013 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 Attalla by 9 am Monday morning.

SoCal IP Institute :: March 11, 2013 :: Indirect infringement and Equitable Estoppel

Our weekly SoCal IP Institute meeting on Monday, March 11, 2013 will be a discussion of two patent cases from the Federal Circuit.  Brief synopses of the cases appear below.

Radio Systems Corp v. Lalor, Case No. 2012-1233 (Fed. Cir. March 6, 2013) (available here).

The Federal Circuit affirmed in part the district court’s decision that the plaintiffs did not infringe two of defendant’s patents. The patents were on improvements to electronic animal collars. The court held that district court decision is: 1) affirmed in part as to the judgment of non-infringement for GS-011, FieldPro, and SD-1825 collars, where the district court correctly construed the claim terms “electrode base” and “inside surface,” and correctly applied its constructions to these accused collars, 2) affirmed in part, where the district court did not abuse its discretion in concluding that equitable estoppel applied to defendant’s ’014 patent infringement allegations on the UltraSmart collar against both plaintiff Innotek and its successor-in-interest, plaintiff Radio Systems; but 3) reversed in part and remanded, as to the ’082 patent, where the district court abused its discretion by granting summary judgment of non-infringement for the UltraSmart collar on the basis of equitable estoppel.

Move, Inc. v. Real Estate Alliance Ltd., Case No. 12-1342 (Fed. Cir. March 4, 2013) (available here).

Summary judgment that plaintiff did not infringe claim 1 of defendant’s ’989 patent related to methods for locating available real estate properties using a zoom-enabled map on a computer, is vacated and remanded for a determination whether plaintiff is liable for indirect infringement, where the district court: 1) did not err by finding no genuine issue of material fact that plaintiff is not liable for direct infringement of claim 1 of the ’989 patent; but, 2) legally erred by not analyzing inducement under 35 U.S.C. 271(b); and 3) failed to conduct an indirect infringement analysis and did not determine whether a genuine issue of material fact existed as to the performance of all the claim steps, whether by one entity or several.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, March 11, 2013 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 Attalla by 9 am Monday morning.

SoCal IP Institute :: March 11, 2013 :: Indirect infringement and Equitable Estoppel

Our weekly SoCal IP Institute meeting on Monday, March 11, 2013 will be a discussion of two patent cases from the Federal Circuit.  Brief synopses of the cases appear below.

Radio Systems Corp v. Lalor, Case No. 2012-1233 (Fed. Cir. March 6, 2013) (available here).

The Federal Circuit affirmed in part the district court’s decision that the plaintiffs did not infringe two of defendant’s patents. The patents were on improvements to electronic animal collars. The court held that district court decision is: 1) affirmed in part as to the judgment of non-infringement for GS-011, FieldPro, and SD-1825 collars, where the district court correctly construed the claim terms “electrode base” and “inside surface,” and correctly applied its constructions to these accused collars, 2) affirmed in part, where the district court did not abuse its discretion in concluding that equitable estoppel applied to defendant’s ‘014 patent infringement allegations on the UltraSmart collar against both plaintiff Innotek and its successor-in-interest, plaintiff Radio Systems; but 3) reversed in part and remanded, as to the ‘082 patent, where the district court abused its discretion by granting summary judgment of non-infringement for the UltraSmart collar on the basis of equitable estoppel.

Move, Inc. v. Real Estate Alliance Ltd., Case No. 12-1342 (Fed. Cir. March 4, 2013) (available here).

Summary judgment that plaintiff did not infringe claim 1 of defendant’s ‘989 patent related to methods for locating available real estate properties using a zoom-enabled map on a computer, is vacated and remanded for a determination whether plaintiff is liable for indirect infringement, where the district court: 1) did not err by finding no genuine issue of material fact that plaintiff is not liable for direct infringement of claim 1 of the ’989 patent; but, 2) legally erred by not analyzing inducement under 35 U.S.C. 271(b); and 3) failed to conduct an indirect infringement analysis and did not determine whether a genuine issue of material fact existed as to the performance of all the claim steps, whether by one entity or several.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, March 11, 2013 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 Attalla by 9 am Monday morning.