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March 2006
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WB Music Corp. v. RTV Communication Group, Inc.

JOHN M. WALKER, JR., Chief Judge: The plaintiffs-appellants in these consolidated cases appeal from final judgments of the United States District Court for the Southern District of New York (John F. Keenan, Judge) awarding them statutory damages for copyright infringement pursuant to 17 U.S.C. § 504(c). The district court computed statutory damages based on seven “compilations,” in the form of compact discs prepared by the defendants, that infringed the copyrights in thirteen separate works owned by the plaintiffs. We hold that, for purposes of statutory damages under § 504(c), a compilation created without authorization from the owners of the separate, infringed copyrights in its constituent parts is not a compilation contemplated by the last sentence of § 504(c)(1), which states that “[f]or the purposes of this subsection, all the parts of a compilation or derivative work constitute one work.” We vacate the judgments of the district court and remand these cases for the district court to recalculate the amount of statutory damages. Download the decision.
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Lava Trading, Inc. v. Sonic Trading Mgmt., LLC

Before MAYER, RADER, and LINN, Circuit Judges. Opinion for the court filed by Circuit Judge RADER. Dissenting opinion filed by Circuit Judge MAYER. RADER, Circuit Judge. This appeal stems from two stipulated judgments of non-infringement of U.S. Patent No. 6,278,982 (the ’982 patent). Lava Trading, Inc. v. Sonic Trading Mgmt., LLC, 03-CV-9382 (S.D.N.Y. Dec. 8, 2004) (Royalblue Stipulation); Lava Trading, Inc. v. Sonic Trading Mgmt., LLC, 03-CV-0842 (S.D.N.Y. Dec. 8, 2004) (Sonic Stipulation). Because flaws in the district court’s interpretation of claim 9 call the stipulated judgments into question, this court vacates and remands for further proceedings. Download the decision.
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Bruckelmyer v. Ground Heaters, Inc.

Before MICHEL, Chief Judge, LOURIE and LINN, Circuit Judges. Opinion for the court filed by Circuit Judge LOURIE. Dissenting opinion filed by Circuit Judge LINN. LOURIE, Circuit Judge. Mark Bruckelmyer appeals from the decision of the United States District Court for the District of Minnesota granting summary judgment of invalidity of U.S. Patents 5,567,085 and 5,820,301 (the “patents in suit”) in favor of Ground Heaters, Inc. and T.H.E. Machine Company (collectively “Ground Heaters”). Bruckelmyer v. Ground Heaters, Inc., No. 02-CV-1761 (D. Minn. May 13, 2005) (“Final Decision”). Prior to the district court’s entry of judgment, Bruckelmyer stipulated that if the Canadian patent application that issued as Canadian Patent 1,158,119 (“the ’119 application”) were a “printed publication” under 35 U.S.C. § 102(b), it would render the patents in suit invalid on the ground of obviousness. Id., slip op. at 6. Because the court correctly determined that the ’119 application, including figures 3 and 4 contained therein, was a “printed publication,” we affirm its judgment of invalidity. Download the decision.
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Parental Guide of Texas, Inc. v. Thomson, Inc.

Before RADER, Circuit Judge, CLEVENGER, Senior Circuit Judge, and DYK, Circuit Judge. CLEVENGER, Senior Circuit Judge. Plaintiff-appellant Parental Guide of Texas, Inc. (Parental Guide) appeals the decision of the United States District Court for the Eastern District of Texas granting summary judgment to Defendant-appellee Thomson, Inc. (Thomson). Parental Guide of Texas, Inc. v. Thomson, Inc., No. 2:03-CV-22 (E.D. Tex. Jan. 20, 2005) (Summary Judgment). The court held that Thomson did not owe Parental Guide a contingent payment under the Release and License Agreement (the Agreement) that had settled a previous patent infringement suit between the parties. Because we agree with the district court that there was no "Litigation Royalty" "expressly determined in the Lawsuit in accordance with the law applicable to 35 U.S.C. § 284," such that Thomson is not obligated to pay a contingent payment under the Agreement, we affirm. Download the decision.

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Breckenridge Pharm., Inc. v. Metabolite Labs., Inc.

MICHEL, Chief Judge.
Breckenridge Pharmaceutical, Inc. (“Breckenridge”) appeals the decision of the United States District Court for the Southern District of Florida dismissing for lack of personal jurisdiction its claims of tortious interference, unfair competition, and declaratory judgment of non-infringement against patent holder, Metabolite Laboratories, Inc. (“Metabolite”). Breckenridge Pharm., Inc. v. Metabolite Labs., Inc., 348 F. Supp. 2d 1335 (S.D. Fla. 2004) (Breckenridge). Breckenridge also appeals the district court’s subsequent grant of summary judgment on all claims to PamLab, L.L.C. (“PamLab”), the exclusive licensee of the patents at issue. Breckenridge Pharm., Inc. v. Metabolite Labs., Inc., No. 04-80090-CIV-COHN (S.D. Fla. May 17, 2005) (PamLab). The district court held that the patent-related claims could not proceed without Metabolite, an indispensable party, and that the state law claims were preempted under Federal Circuit law. Id. Because the district court erroneously concluded that it lacked personal jurisdiction over Metabolite, and because there are genuine disputes of material fact with respect to the state law claims, the district court incorrectly dismissed Metabolite and granted summary judgment to PamLab. Therefore, we reverse the dismissal of Metabolite, vacate the grant of summary judgment to PamLab, and remand.

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Semitool, Inc. v. Dynamic Micro Sys. Semiconduct Equip.

PROST, Circuit Judge.

Semitool, Inc. and Dynamic Micro Systems Semiconductor Equipment GmbH (“DMS”) both manufacture and sell competing semiconductor wafer carrier cleaning systems. In 2001, Semitool sued DMS alleging that DMS’s Model 300 and 310 cleaning devices infringed Semitool’s patents. The parties entered into a settlement agreement that provided for a stipulated injunction with regard to DMS’s Model 300 and 310 and to any colorable variants. Both the agreement and the injunction explicitly retained the district court’s jurisdiction over the future enforcement of the agreement and the injunction. Subsequently, DMS produced a new device called the Tornado, which Semitool claims violates their settlement agreement and the injunction by literally infringing the patent claims. The district court denied the motion to enforce the permanent injunction and the settlement agreement and instead granted DMS’s motion for summary judgment of non-infringement. As the district court properly granted the cross-motion for summary judgment of non-infringement, we affirm.

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Glenayre Elecs., Inc. v. Jackson

Opinion for the court filed by Circuit Judge PROST. Dissenting opinion filed by Circuit Judge NEWMAN.
PROST, Circuit Judge.

Phillip Jackson and PMJ Family Limited Partnership (collectively, “Jackson”) appeal from the order of the United States District Court for the Northern District of Illinois denying Jackson’s motion to set trial on the issue of indirect infringement of United States Patent No. 4,596,900 (“the ’900 patent”) by Glenayre Electronics, Inc. (“Glenayre”). See Glenayre Elecs., Inc. v. Jackson, No. 02-CV-256 (N.D. Ill. June 29, 2004) (“June 29th Order”). We conclude that, as a matter of law, Jackson has been fully compensated for infringement of the ’900 patent by the manufacture and sale of Glenayre’s products and the use of the same products by Glenayre’s customers. Jackson may not collaterally challenge the district court’s previous judgment that he is entitled to only $2.65 million rather than $12 million in damages for the manufacture, sale, and use of Glenayre’s products that infringe the ’900 patent, because that judgment, which was affirmed in a previous appeal, disposed of his current argument that he should be awarded greater damages based on the benefits Glenayre’s customers enjoyed by using products sold by Glenayre. Furthermore, Jackson is not entitled to a second trial as a matter of right simply because the district court stayed his counterclaims of indirect infringement. We therefore affirm the district court’s denial of the motion to set trial.

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ICEE Distribs. Inc. v. J & J Snack Foods Corp.

This case, which involves an allegation of infringement of the ICEE trademark, was previously before us on an interlocutory appeal, ICEE Distributors, Inc. v. J&J Snack Foods Corp., 325 F.3d 586 (5th Cir. 2003). We upheld an injunction, solely on breach-ofcontract grounds, against J&J Snack Food Corp. (“J&J”) and Wal-Mart Stores, Inc. prohibiting them from selling ICEE-marked squeeze tubes within the territory covered by the exclusive license agreement between ICEE Distributors, Inc. (“Distributors”) and the ICEE trademark-owner, ICEE of America (“IOA”). On remand, the District Court denied Distributors’ motion for reconsideration of its earlier summary judgment dismissing Distributors’ trademarkinfringement claim and partially granted defendants’ motion to modify the judgment by narrowing the injunction so as to apply only to J&J.

In this appeal, Distributors challenges both the District Court’s grant of summary judgment on the trademark-infringement claim and the District Court’s modification of the injunction. We AFFIRM, in part, and REVERSE, in part, the grant of summary judgment and VACATE the modification of the injunction.

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Zoltek Corp. v. US

PER CURIAM. Concurring opinion filed by Circuit Judge GAJARSA. Separate concurring opinion filed by Circuit Judge DYK. Dissenting opinion filed by Senior Circuit Judge PLAGER.
The United States appeals the order of the Court of Federal Claims holding that it could assert jurisdiction over Zoltek Corporation’s (“Zoltek”)’s patent infringement allegations by treating the action as a Fifth Amendment taking under the Tucker Act. Zoltek cross-appeals the trial court’s ruling that 28 U.S.C. § 1498(c) bars this action as arising in a foreign country. The Court of Federal Claims certified the rulings under 28 U.S.C. § 1292(d)(2), and this court accepted jurisdiction. See Zoltek Corp v. United States, No. 96-166 C (Fed. Cl. Feb. 20, 2004) (certification); see generally Zoltek Corp. v. United States, 58 Fed. Cl. 688 (2003), Zoltek Corp. v. United States, 51 Fed. Cl. 829 (2002).

We conclude that under § 1498, the United States is liable for the use of a method patent only when it practices every step of the claimed method in the United States. The court therefore affirms the trial court’s conclusion that § 1498 bars Zoltek’s claims. However, we reverse the trial court’s determination that it had jurisdiction under the Tucker Act based on a violation of the Fifth Amendment.

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On Demand Mach. Corp. v. Ingram Indus., Inc.

NEWMAN, Circuit Judge.
Ingram Industries, Inc., Lightning Source, Inc., and Amazon.com, Inc. (collectively the defendants) appeal the judgment of the United States District Court for the Eastern District of Missouri,1 holding them liable for infringement of United States Patent No. 5,465,213 (the Ross patent) owned by On Demand Machine Corporation (ODMC). We conclude that the jury verdict of infringement was based on a partly incorrect claim construction, and that on the correct construction a reasonable jury could not find the patent to be infringed. Accordingly, the judgment of infringement is reversed and the damages award vacated. The grant of a royalty-bearing license during appeal is vacated, and the issues raised by cross-appeal are moot.

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