The Eleventh Circuit affirmed and began its analysis by noting that a split exists among the appellate circuits regarding when copyright registration occurs. The Tenth Circuit requires the Register of Copyrights to act on an application before a copyright is registered and the copyright owner may bring a suit for copyright infringement. However, the Ninth and the Fifth Circuits allow a copyright infringement suit to occur if a copyright application has been filed with the Copyright Office, even if the application has not been acted upon by the copyright office. Looking to the language of the Copyright Act, the Eleventh Circuit decided that registration occurs after the Register of Copyrights examines the application and issues a certificate of registration.

TV Over Internet Not a “Cable Company”

Fox Television Stations, Inc. v. Aereokiller, LLC, 851 F.3d 1002 (9th Cir. 2017). Plaintiffs are a group of broadcast stations and copyright holders (collectively Fox) who sued Aereokiller, now known as FilmOn X (FilmOn) for copyright infringement. FilmOn operates a service that uses antennas to capture over-the-air broadcast programming and retransmits the programming over the Internet to paying subscribers. The Supreme Court recently held that such a service does perform the retransmitted works publicly, and hence infringes the copyright holders’ exclusive performance rights.

In its defense, FilmOn claims that it is a “cable system” eligible for a compulsory license. Under §111 of the Act, a “cable system” is eligible for a compulsory license that allows it to retransmit “a performance or display of a work” that had originally been broadcast by someone else—even if such material is copyrighted—without having to secure the consent of the copyright holder. The Copyright Act defines “cable system” as “a facility … that in whole or in part receives signals transmitted or programs broadcast by one or more television broadcast stations licensed by the FCC, and makes secondary transmissions of such signals or programs by wires, cables, microwave, or other communications channels to subscribing members of the public who pay for such service.”

The Ninth Circuit reversed the district court’s partial summary judgment in favor of defendants, and held that Internet-based retransmission services are not eligible for the compulsory license that §111 makes available to “cable systems.” The Ninth Circuit concluded that §111 was ambiguous on the question of whether an Internet transmission provider is a “cable system.” The Ninth Circuit deferred to the Copyright Office’s interpretation, which requires that “a provider of broadcast signals [must] be an inherently localized transmission media of limited availability to qualify as a cable system.”

Website Moderation Could Negate Safe Harbor for Infringing Content

Mavrix Photographs, LLC v. LiveJournal, Inc., 853 F.3d 1020, 122 U.S.P.Q.2d 1396 (9th Cir. 2017). Mavrix, a provider of photographs of celebrities, sued LiveJournal, a website, for copyright infringement because Mavrix photographs were appearing in a LiveJournal community called “Oh No They Didn’t!” without Mavrix’s approval. The district court granted LiveJournal’s motion for summary judgement on the basis that the safe harbor provision of 17 U.S.C. § 512(c) shielded Live Journal from liability based on the idea that uploads were done by users. The Ninth Circuit evaluated LiveJournal’s practices and considered that the uploading process might not be entirely controlled by LiveJournal’s users, but could be influenced by moderators hired by LiveJournal. The Ninth Circuit remanded the case to the district court with instructions that the district court conduct further proceedings consistent with its opinion. Among other factors, the Ninth Circuit required an evaluation of whether moderators were serving as agents of LiveJournal.

PATENTS

Anticipation

In re Chudik, 851 F.3d 1365, 122 U.S.P.Q.2d 1146 (Fed. Cir. 2017). The Federal Circuit reversed the PTAB’s finding that two references each anticipated selected claims of the application. The Federal Circuit found that substantial evidence did not support the PTAB’s anticipation findings because the PTAB had to modify the references—either by removing a feature or relocating a feature —to disclose every claim limitation.

Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 851 F.3d 1270, 122 U.S.P.Q.2d 1116 (Fed. Cir. 2017). The Federal Circuit reversed the PTAB’s finding that the patent was anticipated. The Federal Circuit reversed the decision and noted that anticipation cannot exist where a reference lacked a limitation—even if a person of skill would have envisaged the missing limitation.

Claim Construction

Core Wireless Licensing S.a.r.l. v. Apple Inc., 853 F.3d 1360, 122 U.S.P.Q.2d 1452 (Fed. Cir. 2017). The Federal Circuit affirmed the district court’s denial of Core Wireless’s motion for JMOL of infringement, while approving the district court’s construction of a means-plus-function limitation. The construction required that, for Apple’s cellphones to infringe, the phones must be able to make what was called a “channel selection decision.” To support the construction, the Federal Circuit noted that each embodiment implemented the channel selection decision at the “mobile station,” which Core Wireless equated with Apple’s cellphone. The use of the term “advantageously” to describe the embodiments failed to render those embodiments merely exemplary. The patent’s prosecution history, along with extrinsic evidence, including a presentation made to a European telecommunications group, supported the Federal Circuit’s holding.

The Meds. Co. v. Mylan, Inc., 853 F.3d 1296, 122 U.S.P.Q.2d 1217 (Fed. Cir. 2017). The Federal Circuit affirmed-in-part and reversed-in-part the district court’s finding on the issue of infringement of two patents. The Federal Circuit construed the claims to require “efficient mixing” as part of the batches’ limitation. The Federal Circuit found the “efficient mixing” element was required to yield a workable claim construction. To determine what “efficient mixing” would mean to one of ordinary skill in the art, the Federal Circuit referred to the specification and Example 5 in the specification.

TVIIM, LLC v. McAfee, Inc., 851 F.3d 1356, 122 U.S.P.Q.2d 1381 (Fed. Cir. 2017). The Federal Circuit affirmed the jury’s determination that (1) the defendant did not infringe the asserted patent; and (2) the patent was invalid. The Federal Circuit also affirmed the denial of the plaintiff’s post-verdict motions for JMOL and a new trial. TVIIM failed to seek construction of certain claim terms, and the Federal Circuit held that TVIIM could not be allowed to create a new claim construction dispute following the close of the jury trial.

Collateral Estoppel

Phil-Insul Corp. v. Airlite Plastics Co., 854 F.3d 1344, 122 U.S.P.Q.2d 1441 (Fed. Cir. 2017). The Federal Circuit affirmed the district court’s summary judgment of noninfringement based on collateral estoppel. Here, the patent owner asserted the same infringement claims against products having the same design as in an earlier case that the patent owner had lost at the Federal Circuit.

Exceptional Case

Bayer CropScience AG v. Dow Agrosciences LLC, 851 F.3d 1302, 122 U.S.P.Q.2d 1052 (Fed. Cir. 2017). The Federal Circuit affirmed the district court’s finding that the case was exceptional and awarded attorney’s fees because the district court did not abuse its discretion. The district court found the case was exceptional because of the infringers’ weak position on the merits and litigation conduct.

Inter Partes Review

In re Affinity Labs of Tex., LLC, 856 F.3d 902, 122 U.S.P.Q.2d 1493 (Fed. Cir. 2017). The Federal Circuit affirmed the PTAB’s finding that certain claims were invalid. The Federal Circuit found the estoppel provision of pre-AIA section 317(b) was not a bar because the district court’s dismissal of claims of invalidity without prejudice does not present a final decision that the party failed to sustain its burden of invalidity of those claims.

In re Affinity Labs of Tex., LLC, 856 F.3d 883, 122 U.S.P.Q.2d 1497 (Fed. Cir. 2017). This case is related to the one above. Similarly, the Federal Circuit found estoppel did not apply.

Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 122 U.S.P.Q.2d 1267 (Fed. Cir. 2017). The Federal Circuit affirmed-in-part and reversed the PTAB’s findings of certain claims being unpatentable and other claims being patentable in an inter partes review. In an IPR, the Federal Circuit reviews PTAB’s legal conclusions de novo.

Inventorship/Exceptional Cases

Univ. of Utah v. Max-Planck-Gesellschaft, 851 F.3d 1317, 122 U.S.P.Q.2d 1057 (Fed. Cir. 2017). The Federal Circuit affirmed the district court’s finding that the case was not exceptional and grant of the defendant’s motion for summary judgment on a joint inventorship issue. The evidence did not support a finding of collaboration between the University of Utah and Max Planck’s inventors. While the mini-review by the Utah inventor was integral to the Max Planck inventors’ research, the mini-review was already in the public domain by the time the Max Planck’s inventors relied on it.

Marking

Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., 853 F.3d 1370, 122 U.S.P.Q.2d 1301 (Fed. Cir. 2017). The Federal Circuit affirmed the district court’s claim construction and findings of infringement and validity. However, the denial of the motion based on the marking statute was vacated and remanded. Rembrandt licensed the patent to a party who sold unmarked products embodying a claim that was later disclaimed by Rembrandt. The Federal Circuit stated that allowing Rembrandt to use statutory disclaimer to avoid the consequences of its failure to mark undermines the public notice function of the marking statute.

Obviousness

Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 122 U.S.P.Q.2d 1238 (Fed. Cir. 2017). The Federal Circuit affirmed-in-part, vacated-in-part, and remanded the PTAB’s rejection of all claims being obvious. The Federal Court considered whether the appellant had waived its right to contest the Examiner’s reliance on an expert. The Federal Circuit found enough considerations existed allowing the Federal Circuit to exercise discretion and decide the issue. On selected claims, the Federal Circuit found both the PTAB and the Examiner did not make any factual findings and only incorporated the attorney’s arguments. Attorney’s arguments are not evidence. Therefore, the Federal Circuit vacated the PTAB’s rejection of those claims.

Novartis AG v. Noven Pharm. Inc., 853 F.3d 1289, 122 U.S.P.Q.2d 1195 (Fed. Cir. 2017). The Federal Circuit affirmed the PTAB’s final decisions that various claims of the patents would have been obvious. The Federal Circuit rejected Novartis’s argument that the PTAB’s decisions on obviousness were subject to prior judicial opinions. Not only were the records different in the prior litigation, but the Federal Circuit noted that the petitioner in an inter partes review proves unpatentability by a preponderance of the evidence rather than clear and convincing evidence as required in district court litigation, meaning that the PTAB properly may reach a different conclusion based on the same evidence.

Novartis AG v. Torrent Pharma. Ltd., 853 F.3d 1316, 122 U.S.P.Q.2d 1289 (Fed. Cir. 2017). The Federal Circuit affirmed the PTAB’s analysis of the evidence and finding of obviousness in two consolidated inter partes review proceedings. The PTAB found all the claims invalid along with the proposed substitute claims.

Patent Ineligibility

RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 122 U.S.P.Q.2d 1377 (Fed. Cir. 2017). The Federal Circuit affirmed the district court’s judgment on the pleadings that the claims were directed to an abstract idea and did not contain an inventive concept sufficient to render the patent eligible under 35 U.S.C. § 101. The Federal Circuit held that adding one abstract idea to another abstract idea did not render the claim non-abstract. The claims lack an inventive concept that transforms the claimed subject matter from an abstract idea into a patent-eligible application.

Permanent Injunctions

Asetek Danmark A/S v. CMI USA Inc., 852 F.3d 1352, 122 U.S.P.Q.2d 1182 (Fed. Cir. 2017). The Federal Circuit affirmed the district court’s rulings on infringement, invalidity, and damages. The Federal Circuit remanded the part of the injunction that went beyond abetting a new violation by CMI. Here, the Federal Circuit found that a determination of the propriety of the injunction’s reach would benefit from further findings and, if sought and needed, further develop the record.

Nichia Corp. v. Everlight Ams., Inc., 855 F.3d 1328, 122 U.S.P.Q.2d 1429 (Fed. Cir. 2017). The Federal Circuit affirmed the district court’s finding that three LED-related patents were infringed and not invalid, but that a permanent injunction was not warranted. The district court found that the patentee, Nichia, failed to demonstrate that past and any continuing infringing activities had caused or would cause it irreparable harm and that Nichia could be adequately compensated for infringement with money damages. In particular, the record showed that Nichia had little meaningful competition in the LED market; Nichia failed to establish harm due to lost sales or price erosion; and Nichia licensed the asserted patents to major competitors, which suggested that the harm due to infringement was not irreparable.

Practice/Procedure

Fairchild (Taiwan) Corp. v. Power Integrations, Inc., 854 F.3d 1364, 122 U.S.P.Q.2d 1395 (Fed. Cir. 2017). The Federal Circuit granted the patent owner’s motion to remand to the PTAB with instructions to vacate its decision affirming the rejection of patent claims. The Federal Circuit recognized that if a defendant brought an invalidity challenge in a district court litigation and was unsuccessful, it is not permitted to bring the same challenge in inter partes reexamination. This restriction applies when all appeals have terminated, which the Federal Circuit found was precisely the situation here.

Reexamination Proceedings

In re AT&T Intellectual Prop. II, LP, 856 F.3d 991, 122 U.S.P.Q.2d 1509 (Fed. Cir. 2017). The Federal Circuit affirmed the PTAB’s decision that the representative claim was invalid based on prior art. After its request for a reexamination was granted, the requester asked for the request to be denied. The PTAB denied the request and continued with the re-examination. The Federal Circuit held the PTAB’s decision to be the correct one as the statute requires a request and requester and those conditions were met. The Federal Circuit then continued to affirm the PTAB’s decision on the finding of anticipation.

Various Issues

Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, 122 U.S.P.Q.2d 1120 (Fed. Cir. 2017). The Federal Circuit (1) affirmed the district court’s denial of Synopsis’s (parent company EVE-USA) motion for JMOL that its products did not infringe selected claims of the ‘376 patent; (2) affirmed the district court’s application of assignor estoppel to Synopsis’s ability to challenge the ’376 patent; (3) affirmed the district court’s damages; (4) reversed the district court’s finding that the word “near” was indefinite; (5) affirmed the district court’s finding that selected claims of the ‘526 patent were patent ineligible; (6) reversed the district court’s written description invalidity finding for selected claims of the ‘882 patent relying on the originally filed claims; and (7) reversed the district court’s summary judgment ruling that claim preclusion barred Mentor’s assertion of the ‘531 and ‘176 patents.

TRADE SECRETS

Advanced Fluid Sys. v. Huber, 2017 WL 2445303, 2017 U.S. Dist. LEXIS 86145 (D. Pa. 2017). Ownership, in the traditional sense, is not a prerequisite to a trade secret misappropriation claim. AFS needed to demonstrate only lawful possession of a trade secret to maintain its claim for trade secret misappropriation. The undisputed evidence established that AFS used reasonable efforts to keep its information secret and that it shared its engineering files only as necessary. There is likewise no dispute that AFS expended copious resources developing the system, and that the fact that AFS employees are not bound by confidentiality agreements did not affect the weighted balance of this analysis.

Fres-Co Sys. USA v. Hawkins, 2017 WL 2376568, 2017 U.S. App. LEXIS 9679 (3d Cir. 2017). The Third Circuit found no abuse of discretion and affirmed the district court’s court decision granting the preliminary injunction to the former employer. The district court did not err in finding a likelihood of irreparable harm because given the substantial overlap between the employee’s work for the former employer and his intended work for the new employer, same role, same industry, and same geographic region, the district court was well within its discretion to conclude that he would likely use his confidential knowledge to the former employer’s detriment. The threatened misappropriation of trade secrets may be enjoined. The misappropriation of trade secrets need not have already occurred to warrant injunctive relief.

Jacked Up, LLC v. Sara Lee Corp., 854 F.3d 797 (5th Cir. 2017). The district court conducted an extensive choice of law analysis and found that Ohio law governs the trade secret claim filed in Texas. Under the “most significant relationship” test used by Texas courts, there are four factors to consider in determining the applicable law for a tort case: (1) the place where the injury occurred; (2) the place where the conduct causing the injury occurred; (3) the residence, nationality, and place of business of the parties; and (4) the place where the relationship between the parties is centered. In trade secret misappropriation cases, the principal location of the defendant’s conduct is given weight greater than the place of injury. Even though the place of injury to Jacked Up was Texas, Ohio law governs plaintiff’s trade secret misappropriation claim because Smucker allegedly misappropriated the trade secrets in Ohio.

Molon Motor & Coil Corp. v. Nidec Motor Corp., 2017 U.S. Dist. LEXIS 71700 (N.D. Ill. 2017). Molon’s allegations on the direct competition between the parties, as well as the allegations on the employment breadth and similarity of Desai’s quality control work at the two companies, were enough to trigger the circumstantial inference that the trade secrets inevitably would be disclosed by Desai to Nidec. Going forward, Molon ultimately will have to prove enough facts so disclosure is not premised on a mere unsubstantiated fear. For now, Molon pled enough for the trade secrets’ claims to avoid Rule 12(b)(6).

Organik Kimya, San. ve Tic. A.S. v. ITC, 848 F.3d 994 (Fed. Cir. 2017). The ITC found Organik Kimya in default and in violation of Section 1337, and entered a 25-year exclusion order for trade secret misappropriation. The Federal Circuit affirmed the 25-year exclusion order and confirmed the Commission’s determination that Dow’s expert was credible when he opined that it would take Organik Kimya 15 to 25 years to develop opaque polymers independently.

Sleekez, LLC v. Horton, 2017 WL 1906957, 2017 U.S. Dist. LEXIS 71410 (D. Mont. 2017). The DTSA went into effect on May 11, 2016. Therefore, to assert a claim under the Act, the plaintiff must allege an act of misappropriation after the implementation date. Whether pre-enactment conduct is actionable under the DTSA depends on the plaintiff’s theory of liability. Under the DTSA, prohibited misappropriation includes both the acquisition of a trade secret and its disclosure or use. Under an acquisition theory of liability, a DTSA claim is only actionable if the trade secret was acquired after the effective date of the Act. However, under a disclosure/use theory of liability, a DTSA claim is actionable when the disclosure or use continued to occur after the effective date. Here, the plaintiff is pursuing a disclosure/use theory of liability so there is DTSA jurisdiction.

Waymo LLC v. Uber Techs., Inc., 2017 U.S. Dist. LEXIS 73843 (N.D. Cal. May 11, 2017). Based on compelling evidence that Anthony Levandowski downloaded over 14,000 confidential files from Waymo before leaving and going to work for Uber, the district court granted injunctive relief including: (1) provisions for an accounting of all downloaded materials; (2) the creation of complete chronological log of all oral and written communications between Levandowski and officers, directors, agents, suppliers, or consultants of the defendants; and (3) the appointment of a special master to oversee compliance with the district court’s order.

TRADEMARKS

Descriptiveness/Standard Character Mark

In re Calphalon Corp., 122 U.S.P.Q.2d 1153 (TTAB 2017). Calphalon appealed the refusal of registration of the mark SHARPIN for “cutlery knife blocks which incorporate built-in sharpeners that automatically sharpen knives” on the basis that the mark was merely descriptive for the applied-for goods. The TTAB affirmed.

The TTAB initially decided whether the mark should be treated as “SHARPIN” (the standard character mark) or “SharpIN” as a special form mark based on Calphalon’s amended drawing. The TTAB decided that because Calphalon had not altered the original standard character designation and had not chosen the special form option that would have limited the mark to a “particular font style, size and color,” it was appropriate to treat the mark in the amended drawing as a standard character mark. Thus, there was no basis to remand the application to the Examining Attorney on this issue. On the descriptiveness issue, the TTAB clarified that the test for descriptiveness is not whether someone who is presented with the mark could guess what the goods are, but rather whether someone who knows what the goods are will understand that the mark conveys information about the goods. Under that standard, the TTAB found that the mark SHARPIN evoked an immediate association with the word “sharpen” to describe the function of the goods, i.e., that they sharpen knives. Moreover, Calphalon’s arguments that the mark SHARPIN was incongruous and a double entendre were not persuasive, and the decision to refuse registration was affirmed.

Generic Marks

In re Emergency Alert Sols. Grp., LLC, 122 U.S.P.Q.2d 1088 (T.T.A.B. 2017). The applicant Emergency Alert sought registration on the Supplemental Register of its mark LOCKDOWN ALARM in standard characters for “training services in the fields of school security and crisis preparedness; training services in the field of security and crisis preparedness for schools, hospitals, college campuses, malls, public buildings, and other commercial buildings” in Class 41. The Examining Attorney refused registration under Section 23 of the Trademark Act on the ground that the applicant’s mark was generic and, thus, incapable of distinguishing the identified services and under Rule 2.61(b) on the ground that the applicant failed to comply with the Examining Attorney’s requirement of information. The applicant appealed. The TTAB affirmed the Section 23 rejection and reversed the Rule 2.61(b) rejection.

The TTAB found that the record made clear that LOCKDOWN ALARM was a recognized term for a type of emergency warning device, so the question before it was whether LOCKDOWN ALARM referred to a category of training services. The TTAB considered whether LOCKDOWN ALARM identified “a key aspect and component” of the applicant’s services and whether the public would understand it to refer to a “central focus or key aspect” of the services. The TTAB found that LOCKDOWN ALARM identified the subject matter of the applicant’s services because the training program covered how to properly use a lockdown alarm and how to properly respond to the activation of an alarm, and that relevant consumers would readily understand the mark to refer to such training.

With respect to the refusal of registration under Rule 2.61(b), the TTAB found that the applicant was reasonably forthcoming with its responses and did not withhold the information required by the Examining Attorney. Although the applicant did not provide traditional “yes” or “no” responses, the TTAB found that providing the information in its own words constituted an acceptable response. Thus, the TTAB affirmed the refusal to register the mark LOCKDOWN ALARM on the Supplemental Register based on the finding that the proposed mark was generic and reversed the refusal based on Rule 2.61(b).

Likelihood of Confusion/Effect of Third-Party Uses and Registrations

Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 U.S.P.Q.2d 1030 (TTAB 2016). The TTAB dismissed Primrose’s opposition to a trademark application filed by Edward Rose for ROSE SENIOR LIVING in connection with, inter alia, “rental of apartments; rental of residential housing; management of senior housing communities” in Class 36, and “retirement homes; providing assisted living facilities; . . .” in Class 44. Primrose owns a registered mark for PRIMROSE in connection with “providing congregate, independent, and assisted living facilities” in International Class 43. The TTAB determined that Edward Rose’s services were, in part, identical to Primrose’s services, and, given there were no restrictions on trade channels and classes of consumers, there was a presumption that the services travelled in the same channels of trade (senior living and retirement communities) and were offered to the same classes of customers (senior citizens and/or their families making a housing choice). Thus, this factor favored Primrose.

However, the TTAB found Edward Rose’s evidence of third-party uses and registrations to be “powerful on its face,” citing Federal Circuit precedent that extensive evidence of use and registration of a term by others is relevant, even without establishing the extent and impact of the usage. Based on the evidence, the TTAB found that relevant customers had been exposed to so many ROSE and ROSE-formative marks in senior living communities that consumers had become alert to “minute distinctions.” Moreover, although there were similarities between the marks, the marks were different in sound, appearance, and meaning, and consumers exercised significant thought and deliberation when making decisions about senior living communities, as this was typically a once-in-a-lifetime—and a relatively expensive—choice. Thus, the TTAB found no likelihood of confusion between the marks and dismissed the opposition.

Surnames

In re Beds & Bars Ltd., 122 U.S.P.Q. 2d 1546 (TTAB 2017). The applicant sought registration on the Principal Register of the mark BELUSHI’S (in standard character format) for travel – and hospitality-related services. The Examining Attorney refused registration of the mark pursuant to Section 2(e)(4) of the Trademark Act on the ground that the mark is primarily merely a surname. The applicant appealed, and the TTAB affirmed. The TTAB noted that neither the applicant nor the Examining Attorney presented any evidence showing that BELUSHI has a meaning other than a surname or that it has any alternative meaning. Although the TTAB conceded that BELUSHI was an exceedingly rare surname, it found that the celebrity and continuing media attention of brothers John and Jim Belushi supported a finding that a substantial portion of Americans know BELUSHI to be a surname. Thus, the refusal to register the applicant’s proposed BELUSHI’S mark pursuant to Section 2(e)(4) of the Trademark Act was affirmed.