Mavrix Photographs, LLC v. LiveJournal, Inc.

The panel filed an amended opinion (1) reversing the district court’s holding, on summary judgment, that the defendant was protected by the safe harbor of the Digital Millennium Copyright Act from liability for posting the plaintiff’s photographs online and (2) vacating a discovery order.

In its amended opinion, the panel held that the safe harbor set forth in 17 U.S.C. § 512(c) would apply if the photographs were stored at the direction of users. The defendant, a social media platform, posted the photographs after a team of volunteer moderators, led by an employee of the defendant, reviewed and approved them. The panel held that whether the photographs were stored at the direction of users depended on whether the acts of the moderators could be attributed to the defendant. Disagreeing with the district court, the panel held that the common law of agency applied to the defendant’s safe harbor defense. Because there were genuine factual disputes regarding whether the moderators were the defendant’s agents, the panel reversed the district court’s summary judgment and remanded the case for trial.

The panel also discussed the remaining elements of the safe harbor affirmative defense. If an internet service provider shows that the infringing material was posted “at the direction of the user,” it must then also show that (1) it lacked actual or red flag knowledge of the infringing material; and (2) it did not financially benefit from infringements that it had the right and ability to control. The panel held that to fully assess actual knowledge, the fact finder must consider not only whether the copyright holder has given notice of the infringement, but also the service provider’s subjective knowledge of the infringing nature of the posts. The panel held that to determine whether the defendant had red flag knowledge, the fact finder would need to assess whether it would be objectively obvious to a reasonable person that material bearing a generic watermark or a watermark referring to the plaintiff’s website was infringing. When assessing the service provider’s right and ability to control the infringements, the fact finder should consider the service provider’s procedures that existed at the time of the infringements and whether the service provider had “something more” than the ability to remove or block access to posted materials.

Finally, the panel vacated the district court’s order denying discovery of the moderators’ identities. It remanded the case for further proceedings.

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Vicor Corp. v. SynQor, Inc.

SynQor, Inc. (SynQor) owns several patents directed to a particular architecture for direct current-to-direct current (DC-DC) power converters, including U.S. Patent Nos. 8,023,290 (the ’290 patent) and 7,272,021 (the ’021 patent) (hereinafter, we refer to the ’290 and ’021 patents collectively as the SynQor Patents). Vicor Corporation (Vicor) requested, and the Patent and Trademark Office (PTO) granted, inter partes reexaminations of the SynQor Patents. The reexaminations were ultimately decided by the Patent Trial and Appeal Board (Board), which was confronted with many proposed rejections and highly technical competing arguments. Vicor appeals the Board’s decision in the ’290 patent’s reexamination holding that certain claims are patentable over prior art combinations proposed by Vicor. SynQor, for its part, appeals the Board’s decision in the ’021 patent’s reexamination holding that certain claims in that patent are unpatentable as anticipated or obvious.

We address these two appeals in a single opinion because the two patents claim very similar inventions, and their respective reexaminations share common patentability issues. Both reexaminations were decided by the same panel of administrative patent judges. The panel’s decision in the ’290’s reexamination issued on the same date as the panel’s decision on rehearing in the ’021’s reexamination. Despite sharing a common panel and having opinions issued on the same date, the decisions in the respective reexaminations contain inconsistent findings on identical issues and on essentially the same record. We affirm in part, vacate in part, and remand the Board’s decisions in both reexaminations.

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Ultratec, Inc. v. CaptionCall, LLC

The present appeals arise from a series of inter partes reviews (“IPRs”) between Ultratec, Inc. (“Ultratec”) and CaptionCall, LLC (“CaptionCall”). Ultratec owns U.S. Patent Nos. 5,909,482 (“the ’482 patent”), 6,233,314 (“the ’314 patent”), 6,594,346 (“the ’346 patent”), 6,603,835 (“the ’835 patent”), 7,003,082 (“the ’082 patent”), 7,319,740 (“the ’740 patent”), 7,555,104 (“the ’104 patent”), and 8,213,578 (“the ’578 patent”). The patents disclose and claim systems for assisting deaf or hard-ofhearing users to make phone calls. CaptionCall petitioned for IPR of certain claims of Ultratec’s patents. The Patent Trial and Appeal Board (“the Board”) held that all challenged claims were either anticipated or would have been obvious in light of a variety of prior art references. Ultratec appealed to our court. The United States Patent and Trademark Office and the Department of Justice (collectively, “the PTO”) intervened to defend the Board’s decisions. Because the Board failed to consider material evidence and failed to explain its decisions to exclude the evidence, we vacate and remand.

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Return Mail, Inc. v. United States Postal Service

Patent assignee Return Mail, Inc. (“Return Mail”) appeals from the final written decision of the U.S. Patent and Trademark Office’s (“PTO”) Patent Trial and Appeal Board (“Board”) in a review of a covered business method (“CBM”) patent. The Board held that the U.S. Postal Service and the United States (collectively, “the Postal Service”) were not statutorily barred from filing the underlying petition for review. On the merits, the Board determined that all of the challenged patent claims were directed to ineligible subject matter under 35 U.S.C. § 101. We affirm.

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Stepan Co.

Stepan Company (“Stepan”) appeals from a decision of the Patent Trial and Appeal Board (“Board”) affirming the examiner’s rejection of claims 1–31 of U.S. Patent Application No. 12/456,567 (“the ’567 application”). For the reasons discussed below, we vacate and remand.

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