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July 2009
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Christoff v. Nestle

In 1986, professional model Russell Christoff was paid $250 to pose for a photograph to be used in Canada on a label for bricks of coffee. Sixteen years later, Christoff saw his face on a jar of Taster‟s Choice instant coffee in the United States and discovered that his image had been used without his consent on millions of labels sold internationally for the preceding five years. Christoff filed the present action for appropriation of his likeness six years after Nestlé USA, Inc. (Nestlé), began using his image on the Taster‟s Choice label but less than a year after his discovery.

The trial court applied a two-year statute of limitations and instructed the jury to determine under the discovery rule whether Christoff knew or should have known earlier that Nestlé had used his image. The jury found that Christoff did not know, and should not reasonably have suspected prior to seeing the jar, that his image was being used without his consent and awarded him more than $15 million in damages.

The Court of Appeal reversed, holding that under the single-publication rule, because Christoff had not filed his lawsuit within two years after Nestlé first “published” the label, his cause of action is barred by the statute of limitations unless, on remand, the trier of fact finds that Nestlé had hindered Christoff‟s discovery of the use of his photograph, or that the label had been “republished.” We granted review.

We agree with the Court of Appeal that the judgment must be reversed because the trial court erroneously ruled that the single-publication rule does not apply to claims for appropriation of likeness. But we do not agree with the Court of Appeal that this means that Christoff‟s action necessarily is barred by the statute of limitations unless he can show on remand that Nestlé had hindered his discovery of the use of his photograph, or that the label had been “republished.” The Court of Appeal‟s ruling presupposes that Nestlé‟s various uses of Christoff‟s likeness, including its production of the product label for a five-year period, necessarily constituted a “single publication” within the meaning of the single-publication rule. Because the parties were prevented by the trial court‟s erroneous legal ruling from developing a record concerning whether the single-publication rule applied, we remand the matter for further proceedings.

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Sky Technologies, LLC. v. Sap AG

Appellants SAP AG and SAP America, Inc. (“SAP”) filed an interlocutory appeal from the judgment of the United States District Court for the Eastern District of Texas finding that Sky Technologies LLC has standing to bring a patent infringement suit in the district court. Because the district court correctly relied on the holding in Akazawa v. Link New Technology International, Inc., 520 F.3d 1354 (Fed. Cir. 2008), to determine that patent ownership was properly transferred by operation of state foreclosure law, giving Appellee clear title to the patents-in-suit and therefore standing in the underlying case, we affirm.

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Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc.

Cardiac Pacemakers, Inc., Guidant Sales Corporation, Mirowski Family Ventures, LLC, and Anna Mirowski (collectively, “Cardiac” or “appellants”) appeal from the decision of the United States District Court for the Southern District of Indiana granting summary judgment of invalidity of claim 4 of U.S. Patent 4,407,288 (“the ’288 patent”). See Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 483 F. Supp. 2d 734 (S.D. Ind. 2007) (“Invalidity Decision”). Cardiac also appeals aspects of the district court’s decision concerning damages. See Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 418 F. Supp. 2d 1021, 1027-30 (S.D. Ind. 2006) (“Damages Decision”). Because the district court erred in concluding in light of our prior mandates that it could find the ’288 patent anticipated, we reverse on invalidity. In light of the fact that infringement has already been decided by the district court, we remand the case solely for a determination of damages. We affirm the court’s decision limiting damages to those devices that can be shown to have executed the steps of claim 4 of the ’288 patent.

St. Jude Medical, Inc. and Pacesetter, Inc. (collectively, “St. Jude”) cross-appeal from the district court’s decision permitting damages under 35 U.S.C. § 271(f). See Id. at 1027-30. The en banc court reverses the district court’s determination that 35 U.S.C. § 271(f) applies to method claims and hence permits damages in this case on devices exported where the claimed method is carried out in countries other than the United States (see Section C.2 of this opinion).

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Arista Records, LLC v. Launch Media, Inc.

Arista Records, LLC, Bad Boy Records, BMG Music, and Zomba Recording LLC (collectively, “BMG”), appeal from the judgment of the United States District Court for the Southern District of New York (Owen, J.), and from interlocutory orders merged into the judgment, finding that the webcasting – internet radio – service LAUNCHcast provided by Defendant-Appellee Launch Media, Inc. (“Launch”) was not an interactive service within the meaning of 17 U.S.C. § 114(j)(7). We affirm because as a matter of law LAUNCHcast was not an interactive service. It does not provide copyrighted sound recordings on request, nor does it transmit a program specially created for the user within the meaning of § 114(j)(7).

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R.W. Beck, Inc. v. E3 Consulting, LLC

We affirm the judgment on the unfair-competition and unjust-enrichment claims because they are preempted by the Copyright Act. We affirm the judgment on the deceptive-trade-practices claim because Beck cannot establish that the alleged deceptive practice significantly impacted the public. As for the copyright claim, E3 first defends the favorable summary judgment by arguing on appeal (1) that most of the language at issue in the copyrighted Beck reports is not protected by copyright law because Beck took it from a third-party report that predated Beck’s copyrighted reports; and (2) that even if the language in Beck’s copyrighted reports was taken from earlier Beck reports, the language in those earlier reports was not protected because it had not been copyrighted and had entered the public domain. We reject these grounds for affirmance because Beck created genuine disputes of material fact by presenting evidence (1) that Beck did not take the language in its copyrighted reports from the third-party report relied upon by E3; and (2) that the copyrighted reports derived their language from earlier Beck reports and internal documents that were themselves copyrighted by Beck and whose language had not entered the public domain. E3 also defends the copyright summary judgment on the ground that the allegedly copied language cannot be protected by copyright law because it serves functional purposes and copyright protects only expression, not ideas. The district court apparently relied in part on this ground in granting summary judgment, but it did so sua sponte; E3 had not argued the point below. Although E3’s argument may be meritorious, we refrain from so deciding on this appeal, believing that Beck should be afforded the opportunity to respond to this argument in district court. We therefore reverse the summary judgment on the copyright claim and remand for further proceedings.

Beck also contends on appeal that the district court erred in denying its motion under Federal Rule of Civil Procedure 56(f) to permit more discovery before acting on E3’s summary-judgment motion. But because of the grounds for our disposition of the various claims, we need not address the merits of this issue.

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Callaway Golf Co. v. Acushnet Co.

Callaway Golf Company (“Callaway”) brought suit against Acushnet Company (“Acushnet”), alleging that Acushnet had infringed various claims of four golf ball patents owned by Callaway (known as the “Sullivan patents”).1 Acushnet stipulated that its golf balls infringed, but contended that the asserted claims were invalid for anticipation and obviousness. After construing the claims, the district court granted summary judgment of no anticipation. Callaway Golf Co. v. Acushnet Co., 523 F. Supp. 2d 388, 407 (D. Del. 2007) (“Summary Judgment Order”), vacated in part by 585 F. Supp. 2d 600 (D. Del. 2008) (“JMOL Order”). Following a trial on obviousness, the jury determined that—with the exception of dependent claim 5 of the ’293 patent—none of the asserted claims was invalid. The district court entered final judgment concluding that dependent claim 5 of the ’293 patent was invalid for obviousness, but that independent claim 4 (from which it stemmed), as well as the other seven asserted claims, were not.

We conclude that Acushnet raised a genuine question of material fact concerning anticipation, and we reverse the district court’s entry of summary judgment on that issue and remand. As to obviousness, we affirm the district court’s determination that Acushnet was not entitled to judgment as a matter of law that the asserted claims are invalid for obviousness. But because the judgment on obviousness was based upon irreconcilably inconsistent jury verdicts, we vacate the judgment of the district court and remand for a new trial. Thus, for the reasons that follow, we affirm-in-part, reverse-in-part, vacate-in-part, and remand for a new trial.

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Wedgetail, Ltd. v. Huddleston Deluxe, Inc.

Huddleston Deluxe, Inc. appeals from an order of the U.S. District Court for the Eastern District of Texas that dismissed with prejudice Wedgetail Ltd.’s claims of infringement and Huddleston’s declaratory judgment counterclaims, and established that each party was to bear its own costs and legal fees. Specifically, Huddleston appeals the district court’s decision not to award attorney fees under 35 U.S.C. § 285.  Because we find that the district court’s decision was not an abuse of discretion and, at most, amounts to harmless error, we affirm.

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Hyatt v. Acting Director, Patent and Trademark Office

Plaintiff-Appellant Gilbert P. Hyatt appeals from the grant of summary judgment in favor of Jon Dudas, in his official capacity as the Director of the United States Patent and Trademark Office ("PTO"),1 sustaining the decision of the Board of Patent Appeals and Interferences ("Board") to uphold the examiner's rejection of 79 of the 117 claims of Hyatt's U.S. Patent Application Serial No. 08/471,702 ("the '702 application") as not supported by adequate written description. The appeal was argued on April 7, 2008. It is clear from the record that under our caselaw Hyatt had an affirmative and specific duty to disclose to the PTO the evidence excluded by the district court, and was so notified by the PTO, but willfully refused to cooperate in the examination process. On the facts of this case, we uphold the district court's exclusion of Hyatt's evidence. We therefore hold that the district court correctly granted summary judgment sustaining the Board decision because Hyatt offered no other evidence and the Board's decision was based on findings of fact and factual conclusions, all of which are supported by substantial evidence, and thus we affirm.

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Bayer Schering Pharma AG v. Barr Laboratories Inc.

Bayer Schering Pharma AG (“Bayer”) appeals the judgment of the United States District Court for the District of New Jersey, holding U.S. Patent No. 6,787,531 (“’531 Patent”) invalid due to obviousness. Bayer Schering Pharma AG v. Barr Labs., Inc., No. 05-CV-2308 (D.N.J March 3, 2008). Because we hold that the invention would have been obvious to try, we affirm.

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Exergen, Corp. v. Wal Mart Stores, Inc.

S.A.A.T. Systems Application of Advanced Technology, Ltd. and Daiwa Products, Inc. (collectively “SAAT”) appeal the denial of their motion for judgment as a matter of law (“JMOL”) after a jury found that SAAT willfully infringed U.S. Patents No. 5,012,813 (“the ’813 patent”), No. 6,047,205 (“the ’205 patent”), and No. 6,292,685 (“the ’685 patent”) and awarded lost profit damages to the patentee, Exergen Corporation (“Exergen”). Exergen Corp. v. Wal-Mart Stores, Inc., No. 01-CV-11306 (D. Mass. Aug. 4, 2005). SAAT further appeals the denial of its motion for leave to amend its answer to allege that the ’813 and ’685 patents are unenforceable due to inequitable conduct. Exergen cross-appeals the denial of its motion to alter or amend judgment for an award of enhanced damages and prejudgment interest.

We conclude that all claims of the ’205 patent are anticipated and that no substantial evidence supports the jury’s contrary finding. Furthermore, we conclude that Exergen failed to introduce substantial evidence to support the jury’s finding that the ’813 and ’685 patents are infringed. Because our invalidity and non-infringement determinations require that we reverse the damages award, we need not address Exergen’s cross-appeal regarding enhanced damages and prejudgment interest. Finally, we conclude that the district court did not abuse its discretion in denying SAAT’s motion to amend its pleading because it correctly held that SAAT’s proposed allegations of inequitable conduct failed to satisfy the heightened pleading requirement of Federal Rule of Civil Procedure 9(b). Thus, we affirm-in-part and reverse-in-part.

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