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December 2012
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Hall v. Bed Bath & Beyond, Inc.

This case concerns a design patent for a “Tote Tow- el,” as the patented design is designated by inventor Roger J. Hall. The Tote Towel is a large towel with binding around all the edges, zippered pockets at both ends, and an angled cloth loop in the middle, pictured in U.S. Design Patent No. D596,439 S (“the ’439 patent”). The patent issued on July 21, 2009, claiming the following design and similar designs: [picture omitted]

Mr. Hall filed this design patent application on November 17, 2008, and began producing the Tote Towel soon after the patent application was filed, with a label marked “patent pending.” On March 20, 2009, while the ’439 patent application was pending, Mr. Hall contacted Bed Bath & Beyond (“BB&B”) to discuss whether BB&B would provide retail sales of the Tote Towel. At a business meeting, Mr. Hall left samples of his packaged Tote Towel with BB&B. Both the package and the towel were marked “patent pending.” BB&B then, through a suppli- er West Point Home, Inc., had copies of the Hall towel manufactured in Pakistan, for retail sale by BB&B. The patent duly issued, and Mr. Hall sued BB&B, West Point Home, and several executives of BB&B, for patent in- fringement, for unfair competition under the Lanham Act, and for misappropriation under New York statutory and common law. The defendants raised various defenses and counterclaims. The district court dismissed all of the claims and counterclaims on the pleadings,1 and all parties appeal. We conclude that the counts of patent infringement, unfair competition, and misappropriation were not subject to dismissal on the pleadings, but affirm the district court’s dismissal of the counts against the BB&B executives who had been sued in their personal capacity, and affirm the dismissal of the counterclaims.

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Ethypharm SA France v. Abbott Labs

Ethypharm S.A. France (“Ethypharm”) appeals the judgment of the United States District Court for the District of Delaware granting Abbott Laboratories (“Abbott”) summary judgment on Ethypharm‟s antitrust and state law claims. Although the District Court ruled in Abbott‟s favor, it had earlier denied Abbott‟s motion to dismiss, a motion premised on the assertion that Ethypharm lacked standing to bring antitrust claims under §§ 1 and 2 of the Sherman Antitrust Act. Abbott has pressed its standing argument on appeal, and we conclude that the District Court erred in holding there is antitrust standing in this case. Because Ethypharm‟s state law claims have not been argued on appeal, the District Court‟s judgment on those claims will remain undisturbed, but we will vacate the District Court‟s grant of summary judgment as to the federal claims and will remand with directions that they be dismissed for Ethypharm‟s lack of standing.

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Mattel, Inc., et al v. MGA Entertainment, Inc.

MGA’s claim of trade-secret misappropriation was not logically related to Mattel’s counterclaim; we therefore reverse the district court’s holding that MGA’s counterclaim- in-reply was compulsory. Because the district court did not abuse its discretion in awarding fees and costs under the Copyright Act, we affirm that award.

While this may not be the last word on the subject, perhaps Mattel and MGA can take a lesson from their target demographic: Play nice.

AFFIRMED IN PART, REVERSED IN PART AND REMANDED.

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Rexnord Indus., LLC v. Kappos

Rexnord Industries requested inter partes reexamination of U.S. Patent No. 6,523,680 (the ’680 patent), owned by Habasit Belting, Inc. The United States Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (Board) confirmed claims 1–14 of the ’680 patent. Rexnord appeals. We affirm that the claims are not anticipated, and reverse the Board’s determination that the claimed invention is not obvious in view of certain prior art.

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Soverain Software, LLC v. Newegg, Inc.

The claims in suit of the ’314 and ’492 patents are invalid for obviousness over the CompuServe Mall system. The claims of the ’639 patent are invalid for obviousness over Johnson in view of additional prior art, and the other evidence presented. The judgments of validity are reversed, and therefore the judgments of infringement and damages are vacated.

REVERSED IN PART, VACATED IN PART

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Latin Am. Music Co., Inc. v. Media Power Group, Inc.

Appellants Latin American Music Company ("LAMCO") and Asociación de Compositores y Editores de Música Latinoamericana ("ACEMLA") sued Media Power Group, Inc.  ("MPG") and its president Eduardo Rivero Albino for infringement of copyright with respect to twenty-one songs. The United States District Court for the District of Puerto Rico granted the defendants' motion for summary judgment as to twelve songs. Claims as to the remaining nine songs went to trial, resulting in a jury verdict for the defendants. LAMCO challenges both the summary judgment and the unfavorable jury verdict. Finding no error, we affirm.

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Allflex USA, Inc. v. Avid Identification Sys., Inc.

In this appeal only one side has appeared and submitted a brief. The defendant-appellant, Avid Identification Systems, Inc., seeks to overturn the district court’s judgment in several respects and has filed a brief in support of its appeal. The plaintiff and would-be appellee, Allflex U.S.A., Inc., has declined to file a brief defending the judgment in its favor. The reason for the plaintiff’s lack of interest in the appeal is clear: The parties have settled their dispute in this case with a payment from Avid to Allflex. Their settlement agreement provided that Avid would pay Allflex a lump sum, but that Avid would be permitted to appeal from several aspects of the judgment and that, if it were to succeed on any of the appealed issues, Avid’s settlement payment to Allflex would be reduced by $50,000. While acknowledging that the case would be moot if it were not for the $50,000 contingency payment, Avid argues that the payment (termed an “appeal consideration” by the settlement agreement) ensures that there is a real controversy between the parties sufficient to rescue the appeal from being dismissed as moot. For the reasons set forth below, we are not persuaded, and we therefore dismiss the appeal on grounds of mootness.

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Parallel Networks, LLC v. Abercrombie & Fitch Co.

Parallel argues that the district court erred in denying its Rule 59(e) motion because the court failed to address all the pertinent factors that bear on whether a motion to alter a judgment should be granted. In an effort to portray its argument as a purely legal one, Parallel contends that the district court never addressed one of three factors that the Fifth Circuit considers under Rule 59(e)—the need to prevent a “manifest injustice”— and failed to consider four “good cause” factors for allowing amendments to infringement contentions under Local Patent Rule 3-6(b).

Parallel’s argument is unpersuasive. We agree with the district court that Parallel is seeking to amend its infringement contentions in order to make arguments that could have been made before the entry of summary judgment, a tactic that the district court correctly held to be improper. See, e.g., Templet v. HydroChem Inc., 367 F.3d 473, 478-79 (5th Cir. 2004). As Parallel concedes, it “reanalyzed” the defendants’ accused instrumentalities and identified allegedly infringing activities by a subset of defendants based on the fact that a single file is transmitted in a single transmission. Because the patent makes clear that the applet must be transferred with data and functionality initially, and because the parties briefed that very issue before the district court, Parallel’s newly claimed infringement allegations do not rely on anything new that gives rise to a valid Rule 59(e) motion. In particular, the district court’s claim construction was not an intervening change in the law. Parallel chose to pursue a theory that allowed it to accuse a larger number of defendants. Having lost, Parallel may not now initiate what would amount to a completely new infringement proceeding.

Nor is there any merit to Parallel’s effort to characterize the district court’s ruling as a legal error based on the court’s failure to consider all the relevant factors. The need to prevent “manifest injustice” is a catch-all factor, the court’s resolution of which is implicit in its consideration, and rejection, of Parallel’s Rule 59 motion as a characterized Parallel’s motion as seeking to “prevent a manifest injustice” by “amend[ing] its infringement contentions . . . .” Requiring the formality of an additional sentence to that effect is unnecessary, and Parallel cites no Rule 59 cases in support of its argument. That is unsurprising, as courts frequently deny Rule 59(e) motions without discussion, and such dispositions are not treated as legally erroneous because they are summary in nature. See, e.g., Boone v. Citigroup, Inc., 416 F.3d 382, 387 n.6 (5th Cir. 2005) (“The district court also summarily denied a rule 59(e) motion to reconsider the denial of remand.”); Hinojosa v. Brown, 129 F. App’x 915, 916 (5th Cir. 2005) (same).

For the same reasons, we reject Parallel’s contention that the court erred by failing to consider the proper factors bearing on whether there was “good cause” to amend the infringement contentions under Local Patent Rule 3-6(b). Parallel sought to amend its contentions pursuant to Local Patent Rule 3-6(a), which the district court held was “inapplicable,” again because the “claim construction was hardly unanticipated.” Nor does Local Patent Rule 3-6(b) provide Parallel any basis for relief. The factors set forth in that subsection of the rule go to the party’s explanation for its failure to make the allegations sooner and the potential prejudice resulting from what is to be excluded. Parallel has no good explanation for its failure to bring its new infringement contentions earlier and thus has brought any perceived prejudice on itself. AFFIRMED

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Harney v. Sony Pictures Television, Inc.

On a sunny April day in 2007, freelancer Donald Harney snapped a photograph ("the Photo") of a blond girl in a pink coat riding piggyback on her father's shoulders as they emerged from a Palm Sunday service in the Beacon Hill section of Boston. Just over a year later, the pair in the Photo became a national media sensation. The father, soon-to-be revealed as a German citizen who had assumed the name Clark Rockefeller, had abducted his daughter during a parental visit and was being sought by law enforcement authorities. Harney's fatherdaughter photo was used in an FBI "Wanted" poster, and the image was widely distributed in the media as the abduction saga unfolded. Appellee Sony Pictures Television, Inc. ("Sony") later  produced a made-for-television movie based on Gerhartsreiter's identity deception. Sony depicted the Photo in that movie using an image that was similar in pose and composition to Harney's original, but different in a number of details.

Harney subsequently filed this infringement action, alleging that appellees' use of his photograph without permission violated federal copyright law. Appellees moved for summary judgment. Concluding that no reasonable jury could find "substantial similarity" between Sony's recreated photo and Harney's original, the district court held that Sony had not violated Harney's exclusive rights to his work. After careful review, we affirm the grant of summary judgment for appellees.

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DC Comics v. Pacific Pictures Corp., et al

The panel held that it had jurisdiction over an interlocutory appeal of an order denying defendants’ motion, pursuant to California’s anti-SLAPP statute, to strike certain state law claims in an action under the Copyright Act.

The panel concluded that Batzel v. Smith, 333 F.3d 1018 (9th Cir. 2003), holding that the collateral order doctrine permits a party to take an interlocutory appeal of an order denying an anti-SLAPP motion, remains good law after the Supreme Court’s intervening decision in Mohawk Indus. v. Carpenter, 130 S. Ct. 599 (2009). The panel distinguished Metabolic Research, Inc. v. Ferrell, 693 F.3d 795 (9th Cir. 2012), and Englert v. MacDonell, 551 F.3d 1099 (9th Cir. 2009), which addressed Oregon and Nevada anti-SLAPP statutes more akin to defenses against liability than immunities from suit. The panel noted that its holding comported with the conclusions of the First and Fifth Circuits.

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