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April 2014
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Oracle Am., Inc. v. Google Inc.

This copyright dispute involves 37 packages of computer source code. The parties have often referred to these groups of computer programs, individually or collectively, as “application programming interfaces,” or API packages, but it is their content, not their name, that matters. The predecessor of Oracle America, Inc. (“Oracle”) wrote these and other API packages in the Java programming language, and Oracle licenses them on various terms for others to use. Many software developers use the Java language, as well as Oracle’s API packages, to write applications (commonly referred to as “apps”) for desktop and laptop computers, tablets, smartphones, and other devices.

Oracle filed suit against Google Inc. (“Google”) in the United States District Court for the Northern District of California, alleging that Google’s Android mobile operating system infringed Oracle’s patents and copyrights. The jury found no patent infringement, and the patent claims are not at issue in this appeal. As to the copyright claims, the parties agreed that the jury would decide infringement, fair use, and whether any copying was de minimis, while the district judge would decide copyrightability and Google’s equitable defenses. The jury found that Google infringed Oracle’s copyrights in the 37 Java packages and a specific computer routine called “rangeCheck,” but returned a noninfringement verdict as to eight decompiled security files. The jury deadlocked on Google’s fair use defense.

After the jury verdict, the district court denied Oracle’s motion for judgment as a matter of law (“JMOL”) regarding fair use as well as Google’s motion for JMOL with respect to the rangeCheck files. Order on Motions for Judgment as a Matter of Law, Oracle Am., Inc. v. Google Inc., No. 3:10-cv-3561 (N.D. Cal. May 10, 2012), ECF No. 1119. Oracle also moved for JMOL of infringeIn granting that motion, the court found that: (1) Google admitted to copying the eight files; and (2) no reasonable jury could find that the copying was de minimis. Oracle Am., Inc. v. Google Inc., No. C 10-3561, 2012 U.S. Dist. LEXIS 66417 (N.D. Cal. May 11, 2012) (“Order Granting JMOL on Decompiled Files”).

Shortly thereafter, the district court issued its decision on copyrightability, finding that the replicated elements of the 37 API packages—including the declaring code and the structure, sequence, and organization—were not subject to copyright protection. Oracle Am., Inc. v. Google Inc., 872 F. Supp. 2d 974 (N.D. Cal. 2012) (“Copyrightability Decision”). Accordingly, the district court entered final judgment in favor of Google on Oracle’s copyright infringement claims, except with respect to the rangeCheck code and the eight decompiled files. Final Judgment, Oracle Am., Inc. v. Google Inc., No. 3:10-cv- 3561 (N.D. Cal. June 20, 2012), ECF No. 1211. Oracle appeals from the portion of the final judgment entered against it, and Google cross-appeals from the portion of that same judgment entered in favor of Oracle as to the rangeCheck code and eight decompiled files.

Because we conclude that the declaring code and the structure, sequence, and organization of the API packages are entitled to copyright protection, we reverse the district court’s copyrightability determination with instructions to reinstate the jury’s infringement finding as to the 37 Java packages. Because the jury deadlocked on fair use, we remand for further consideration of Google’s fair use defense in light of this decision. With respect to Google’s cross-appeal, we affirm the district court’s decisions: (1) granting Oracle’s motion for JMOL as to the eight decompiled Java files that Google copied into Android; and (2) denying Google’s motion for JMOL with respect to the rangeCheck function. Accordingly, we affirm-in-part, reverse-in-part, and remand for further proceedings.

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InTouch Tech., Inc. v. VGo Commc'ns, Inc.

The world has come a long way; this is a patent case about robots. InTouch Technologies, Inc. d/b/a InTouch Health (“InTouch”) and VGo Communications, Inc. (“VGo”) both manufacture remote telepresence robot systems. In 2012, InTouch filed a First Amended Complaint in the Central District of California alleging that VGo’s remote telepresence robot system infringed several of its patents, including U.S. Patent Nos. 6,346,962 (“the ’962 patent”), 6,925,357 (“the ’357 patent”), and 7,593,030 (“the ’030 patent”) (collectively, “the asserted patents”). The asserted patents generally relate to remote telepresence technology regarding camera movement, arbitrating control of a robot, and a call back mechanism to notify a previously denied user that the robot is now available. VGo counterclaimed for declaratory judgment of non-infringement and invalidity.

After a jury trial, the jury returned a verdict of noninfringement of all three asserted patents. It also found claim 79 of the ’357 patent and claim 1 of the ’030 patent invalid based on obviousness. The district court subsequently denied motions for judgment as a matter of law (“JMOL”) and a new trial regarding non-infringement, invalidity, and numerous evidentiary rulings.

InTouch appeals from the district court’s final judgment of non-infringement and invalidity, and denial of the post-trial motions for JMOL on those questions. InTouch also appeals from its motion for a new trial based on two allegedly erroneous evidentiary rulings, one which InTouch says tainted the infringement verdict and another which InTouch says calls into question the integrity of the invalidity judgments. For the reasons explained below, we affirm the judgment of non-infringement of the asserted patents and the denial of the motion for a new trial on infringement, reverse the findings of invalidity
regarding the ’357 and ’030 patents, and remand to vacate the district court’s invalidity judgments.

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Monsanto Co. v. E.I. du Pont de Nemours & Co.

E.I. Du Pont de Nemours and Company and its subsidiary Pioneer Hi-Bred International, Inc. (collectively “DuPont”) appeal from the orders of the United States District Court for the Eastern District of Missouri imposing sanctions on DuPont by striking DuPont’s contract reformation defense and counterclaims and awarding Monsanto Company and Monsanto Technology, LLC (collectively “Monsanto”) attorney fees. See Monsanto Co. v. E.I. Du Pont de Nemours & Co., No. 4:09-CV-0686, ECF No. 974 (E.D. Mo. Dec. 21, 2011) (sealed sanctions order); ECF No. 1043 (E.D. Mo. Feb. 16, 2012) (order approving itemized attorney fees); ECF No. 1662 (E.D. Mo. Nov. 16, 2012) (unsealed and redacted version of sanctions order). Because the district court did not abuse its discretion in imposing the sanctions, we affirm.

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In re: Roslin Inst. (Edinburgh)

The Roslin Institute of Edinburgh, Scotland (Roslin) is the assignee of U.S. Patent Application No. 09/225,233 (the ’233 application) and appeals from a final decision of the Patent Trial and Appeal Board (Board). The Board held that all of Roslin’s pending claims—claims 155-159 and 164—were unpatentable subject matter under 35 U.S.C. § 101. The Board also rejected Roslin’s claims as anticipated and obvious under 35 U.S.C. §§ 102 and 103. We affirm the Board’s rejection of the claims under § 101.

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General Electric Co. v. Wilkins

Thomas A. Wilkins (“Wilkins”) appeals from the decision of the United States District Court for the Eastern District of California entering declaratory judgment in favor of General Electric Company and GE Wind Energy, LLC (collectively “GE”) that Wilkins is not a coinventor of GE’s U.S. Patent 6,921,985 (the “’985 patent”) pursuant to 35 U.S.C. § 256. See Gen. Electric Co. v. Wilkins, No. 10-0674, 2012 WL 5989349 (E.D. Cal. Nov. 29, 2012) (unpublished). Because Wilkins failed to prove by clear and convincing evidence that he was entitled to co-inventorship of the ’985 patent, we affirm.

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In re: Packard

This case raises an important question: what standard for indefiniteness should the U.S. Patent and Trademark Office (“USPTO”) apply to pre-issuance claims? The parties point to no case in which we previously have addressed this question.

The Patent Trial and Appeal Board (“Board”) held Mr. Packard’s applied-for patent claims indefinite, and therefore not in compliance with the statutory drafting requirements of 35 U.S.C. § 112(b), which provide that the specification conclude with “one or more claims particularly pointing out and distinctly claiming” the subject matter of the invention.1 Mr. Packard, on appeal to this court, insists that the Board misapplied the standard of indefiniteness by finding his claims indefinite on grounds that they “contain[ ] words or phrases whose meaning is unclear.” J.A. 14. He believes that, had the Board applied an “insolubly ambiguous” standard to his claims, those claims would not have been held indefinite.

For the reasons we shall explain, we affirm the Board’s rejection of Mr. Packard’s claims.

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GE Lighting Solutions, LLC v. AgiLight, Inc.

GE Lighting Solutions, LLC (GE) appeals from the district court’s grant of summary judgment that AgiLight, Inc.’s (AgiLight) accused products and processes do not infringe asserted claims of GE’s U.S. Patent Nos. 7,160,140, 7,520,771, 7,832,896, and 7,633,055. We reverse the grant of summary judgment with regard to the ’140, ’771 and ’896 patents and remand. We affirm the grant of summary judgment with regard to the ’055 patent.

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Apple Inc. v. Motorola, Inc.

Plaintiffs Apple Inc. and Next Software, Inc. (“Apple”) filed a complaint against Defendants Motorola, Inc. and Motorola Mobility, Inc. (“Motorola”) on October 29, 2010 in the United States District Court for the Western District of Wisconsin, asserting infringement of three patents. Motorola counterclaimed, asserting six of its own patents. Apple amended its complaint to include an additional twelve patents. Both parties also sought declaratory judgments of non-infringement and invalidity.

After claim construction began in Wisconsin, the case was transferred to the United States District Court for the Northern District of Illinois, Judge Posner sitting by designation. The district court in Illinois completed claim construction. Based upon its claim construction decisions, the court granted summary judgment of non-infringement with respect to certain claims and excluded the vast majority of both parties’ damages expert evidence for the remaining claims. With little expert evidence deemed admissible, the court granted summary judgment that neither side was entitled to any damages or an injunction. Despite infringement being assumed, the district court dismissed all claims with prejudice before trial.

Only six patents are at issue on appeal: Apple’s U.S. Patent Nos. 7,479,949; 6,343,263; and 5,946,647; and Motorola’s U.S. Patent Nos. 6,359,898; 6,175,559; and 5,319,712. The parties contest the district court’s claim construction, admissibility, damages, and injunction decisions. As detailed below, we affirm the district court’s claim construction decisions, with the exception of its construction of Apple’s ’949 patent. With a minor exception, the district court’s decision to exclude the damages evidence presented by both Apple and Motorola is reversed. We also reverse the district court’s grant of summary judgment of no damages for infringement of Apple’s patents. Based upon our reversal of the district court’s claim construction of the ’949 patent, we vacate the court’s grant of summary judgment regarding Apple’s request for an injunction. The court’s decision that Motorola is not entitled to an injunction for infringement of the FRAND-committed ’898 patent is affirmed. We address these, and all related issues, in turn.

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Highmark Inc. v. Allcare Health Mgmt. Sys., Inc.

Held: All aspects of a district court’s exceptional-case determination under §285 should be reviewed for abuse of discretion. Prior to Oc- tane Fitness, LLC v. ICON Health & Fitness, Inc., ante, p. ___, this determination was governed by the framework established by the Federal Circuit in Brooks Furniture Mfg., Inc. v. Dutailier Int’l, Inc., 393 F. 3d 1378. Octane rejects the Brooks Furniture framework as unduly rigid and holds that district courts may make the exceptional- case determination under §285 in the exercise of their discretion. The holding in Octane settles this case. Decisions on “matters of dis- cretion” are traditionally “reviewable for ‘abuse of discretion,’ ” Pierce v. Underwood, 487 U. S. 552, 558, and this Court previously has held that to be the proper standard of review in cases involving similar de- terminations, see, e.g., id., at 559; Cooter & Gell v. Hartmarx Corp., 496 U. S. 384, 405. The exceptional-case determination is based on statutory text that “emphasizes the fact that the determination is for the district court,” Pierce, 487 U. S., at 559; that court “is better posi- tioned” to make the determination, id., at 560; and the determination is “multifarious and novel,” not susceptible to “useful generalization” of the sort that de novo review provides, and “likely to profit from the experience that an abuse-of discretion rule will permit to develop,” id., at 562. Pp. 4–5.

 687 F. 3d 1300, vacated and remanded.

S OTOMAYOR , J., delivered the opinion for a unanimous Court.

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