Intellectual Property and Tech Law Reports

Brilliance Audio, Inc. v. Haights Cross Communications, Inc.

Plaintiff-appellant Brilliance Audio (“Brilliance”) appeals from the district court’s dismissal of its claims for copyright and trademark infringement under Fed. R. Civ. P. 12(b)(6). This case presents a question that has not been considered by this or any other court – whether the record rental exception to copyright’s first sale doctrine, codified at 17 U.S.C. § 109(b)(1)(A), applies to all sound recordings, or only sound recordings of musical works. Specifically, this case asks whether the exception applies to sound recordings of literary works (known as “audiobooks” or “books on tape”). We find that it does not, and thus, the district court did not err in dismissing Brilliance’s claims for copyright infringement. We disagree, however, with the district court’s dismissal of Brilliance’s claims for trademark infringement. Following the law of our sister circuits, we conclude that two exceptions exist to the first sale doctrine under trademark law and that Brilliance’s complaint, construed broadly, has alleged that these exceptions apply in the present case. Thus, we affirm the decision of the district court in respect to the copyright claims but reverse in respect to the trademark claims.

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Kahle v. Gonzales

Plaintiffs appeal from the district court’s dismissal of their complaint. They allege that the change from an “opt-in” to an “opt-out” copyright system altered a traditional contour of copyright and therefore requires First Amendment review under Eldred v. Ashcroft, 537 U.S. 186, 221 (2003). They also allege that the current copyright term violates the Copyright Clause’s “limited Times” prescription.

Arguments similar to Plaintiffs’ were presented to the Supreme Court in Eldred, which affirmed the constitutionality of the Copyright Term Extension Act against those attacks. The Supreme Court has already effectively addressed and denied Plaintiffs’ arguments. We AFFIRM.

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Corwin v. Walt Disney Co.

Plaintiff-appellant, Orrin Monroe Corwin, appeals (1) a 12 November 2004 order disposing of several evidentiary issues and granting summary judgment in favor of defendant-appellee, Walt Disney World Company (“WorldCo” or “Disney” for its precursor); (2) a 28 April 2005 order denying Corwin’s motion for clarification and reconsideration; and (3) a 9 May 2005 order adopting the report and recommendation of the United States magistrate judge awarding taxable costs to WorldCo. Because we find that Corwin has failed to raise a genuine issue of material fact as to either WorldCo’s access to Mark Water’s rendering of a theme park concept entitled “Miniature Worlds” or as to striking similarity between that rendering and EPCOT (Experimental Prototype City of Tomorrow), we AFFIRM as to summary judgment and the motion to reconsider. Because the district court awarded costs that it lacked discretion to award, we VACATE the order on costs, and REMAND for proceedings consistent with this opinion.

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Vas-Cath, Inc. v. Curators of the Univ. of Missouri

Vas-Cath, Inc. appeals the dismissal of its appeal of the decision of the United States Patent and Trademark Office ("PTO") in an interference proceeding between Vas-Cath and the University of Missouri. The appeal was dismissed by the United States District Court for the Western District of Missouri, on Eleventh Amendment grounds. We conclude that the Eleventh Amendment does not shield the University from appeal of the PTO's decision in favor of the University. By requesting and participating in the interference proceeding in the PTO, the University waived its constitutional immunity not only in that proceeding but also in the appeal taken by the losing party. Accordingly, the dismissal of the appeal is reversed.

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MBO Labs., Inc. v. Becton, Dickinson & Co.

This appeal arises under the patent laws. Plaintiff MBO Laboratories, Inc. (“MBO”) appeals a summary judgment of noninfringement of U.S. Patent No. RE 36,885 (“the RE ’885 patent”) granted by the United States District Court for the District of Massachusetts. After conducting a Markman hearing, the district court construed the various disputed claim terms. MBO Labs. v. Becton, Dickinson, & Co., 385 F. Supp. 2d 88 (D. Mass. 2005). MBO conceded that under the district court’s claim construction there was no infringement of the patent claims. The district court therefore granted summary judgment in favor of defendant Becton, Dickinson & Company (“Becton”). MBO timely appealed the claim construction to this court.

For the reasons given below, we affirm the district court’s construction of the disputed term “immediately” except as that construction affects claims 32 and 33, and we reverse as to “slidably receiving,” “relative movement,” “adjacent,” “proximity,” and “mounted on said body,” and remand for further proceedings consistent with this opinion.

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Hydril Co. LP v. Grant Prideco LP

This appeal challenges the district court’s dismissal, under Rule 12(b)(6) of the Federal Rules of Civil Procedure for failure to state a valid claim for relief, of a complaint alleging that the defendant (1) monopolized two product markets by enforcing a patent that had been obtained by fraud on the Patent and Trademark Office, (2) infringed a different patent that the appellant owns, and (3) breached a contract between the parties. We reverse the dismissal of the antitrust and patent claims, vacate the dismissal of the state law claim, and remand for further proceedings.

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Andersen Corp. v. Fiber Composites, LLC

Andersen Corporation owns a number of patents relating to composite materials made from a mixture of polymer and wood fiber, and to structural parts made from those composite materials. Fiber Composites, LLC, manufactures and sells deck railing and spindle products (the “Fiberon products”), which are made from a polymer and wood fiber mixture. Andersen brought this action in the United States District Court for the District of Minnesota, alleging that the Fiberon products infringe six of its patents.

The parties have classified the six asserted patents into two groups. The four Group I patents cover compositions capable of being extruded into structural members. The two Group II patents cover the extruded structural members themselves. The parties agree that the disputed claim terms—“composite composition” for the Group I patents and “composite structural member” for the Group II patents—have the same meaning throughout each respective group.

The Fiberon products are made by direct extrusion, a process in which polymer and wood fibers are mixed and melted in an extruder and then forced through a die to form a finished structural part. Fiber contends that its products do not infringe any of the asserted patents because the “composite compositions” of the Group I patents are limited to compositions in either pellet or linear extrudate form, and because the “composite structural members” of the Group II patents are limited to members that are extruded from composites that have previously been extruded into either pellet or linear extrudate form.

After a hearing, the district court agreed with Fiber that the “composite compositions” claimed in the Group I patents are limited to materials that have been extruded to make pellets or the linear extrudate from which pellets can be cut. The court agreed with Andersen, however, that the “composite structural members” claimed in the Group II patents constitute any articles that are made from a composite polymer and wood fiber mixture and have load-bearing capabilities. The court rejected Fiber’s contention that “composite structural members” are limited to items made from a composite mixture that has previously been extruded into pellet or linear extrudate form.

Based on the district court’s construction of the term “composite composition,” Andersen modified its theory of infringement to allege that its Group I patents are infringed by Fiber’s “repro,” a substance made from reground rejected railing parts and used as an ingredient in the manufacturing process. Following discovery, both parties moved for summary judgment. The district court held that Fiber’s “repro” did not infringe the Group I patents, but that a subset of the Fiberon products (those with more than 30% wood content) infringed the Group II patents.

At trial, the jury found that (1) the Group II patents are not invalid due to obviousness, inadequate written description, or lack of enablement, (2) the Group II patents are not invalid due to anticipation, and (3) Fiber’s infringement of the Group II patents was not willful. The jury awarded Andersen $46,020 in damages. The district court denied Andersen’s request for a permanent injunction with regard to the Group II patents.

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Therese M. Newholm, JD Joins Gehrke & Associates, S.C.

Gehrke & Associates, S.C. is pleased to announce that Therese M. Newholm, JD has been named of counsel to the firm. She is a registered patent attorney whose practice focuses on patent prosecution, reexamination and reissue proceedings, PCT applications, and appeal practices. She will be augmenting Gehrke & Associates, S.C.'s growing patent practice.

Therese is a former Patent Examiner and earned a B.S. in Mechanical Engineering from the University of Wisconsin-Platteville and a J.D. from George Mason University-School of Law.

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CreAgri, Inc. v. USANA Health Sciences, Inc.

In a contest involving competing products claiming trademark priority, the district court determined, in order to acquire priority, a “use in commerce” means a lawful use—here, a use compliant with federal labeling requirements. We agree.

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Transclean Corp. v. Jiffy Lube Int'l, Inc.

Transclean Corporation, James P. Viken, Jon A. Lang, and Donald E. Johnson (collectively “Transclean”) brought suit against Bridgewood Services, Inc. (“Bridgewood”), alleging that the automatic transmission fluid changing machine manufactured and sold by Bridgewood, the “T-Tech machine,” infringed Transclean’s patent. Transclean obtained a judgment in its favor, including a damages award of $1,874,500. The judgment and award were affirmed on appeal. Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364 (Fed. Cir. 2002) (“Transclean I”).

Transclean then filed a separate patent infringement suit against Jiffy Lube International, Inc. (“Jiffy Lube”) and more than thirty other fast lube businesses, each of which had purchased one or more T-Tech machines from Bridgewood. That case is the subject of the present appeal.

In this case, the district court granted summary judgment in favor of Jiffy Lube and eight other defendants (“Participating Defendants”), holding that under the doctrine of claim preclusion, the judgment against Bridgewood bars Transclean from bringing a separate infringement action against Bridgewood’s customers. The district court previously had entered default judgment in favor of Transclean against several other defendants (“Defaulting Defendants”), none of whom had answered the complaint. Because we agree with the district court that under the doctrine of claim preclusion Transclean may not obtain relief against the Participating Defendants, we affirm that portion of the district court’s judgment. In light of that affirmance, we conclude that the claims against the Defaulting Defendants should be disposed of in the same manner; accordingly, the judgment in favor of Transclean and against the Defaulting Defendants is reversed.

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