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BWP Media USA v. Clarity Digital Group

Plaintiff-Appellant BWP Media USA, Inc. d/b/a Pacific Coast News and National Photo Group, LLC (“BWP”) appeals from the district court’s summary judgment in favor of Defendant-Appellee Clarity Digital Group, LLC n/k/a AXS Digital Media Group, LLC (“AXS”). See BWP Media USA Inc. v. Clarity Dig. Grp., LLC, No. 14-cv-00467-PAB-KMT, 2015 WL 1538366 (D. Colo. Mar. 31, 2015). BWP owns the rights to photographs of various celebrities. In February 2014, BWP filed a complaint alleging that AXS infringed its copyrights by posting 75 of its photographs without permission on AXS’s website, Examiner.com.1 AXS asserted it was protected from liability by the safe harbor provision of the Digital Millennium Copyright Act (“DMCA”) and moved for summary judgment. The district court agreed. Exercising jurisdiction pursuant to 28 U.S.C. § 1291, we affirm.

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Mankes v. Vivid Seats Ltd.

Robert Mankes owns U.S. Patent No. 6,477,503, which describes and claims methods for managing a reservation system that divides inventory between a local server and a remote Internet server. In October 2013, Mr. Mankes sued Vivid Seats Ltd. and Fandango, LLC in the Eastern District of North Carolina, alleging that their operation of Internet-based reservation systems, in conjunction with the operation of local reservation systems by movie theaters and other entertainment venues, infringes the ’503 patent. Because it is undisputed that no one person performs all of the steps of the method claims, Mr. Mankes’s case depends on establishing what has been called “divided infringement.”

When Mr. Mankes filed his complaints, the law relating to divided infringement was in the midst of a multiyear process of active judicial reconsideration, including by this court sitting en banc and by the Supreme Court. This court had granted en banc review to address the standards for direct-infringement liability for divided infringement but, in its decision, had left existing directinfringement standards in place without reconsidering them, while providing an independent inducement basis for divided-infringement liability. Akamai Techs., Inc. v. Limelight Networks, Inc., 692 F.3d 1301 (Fed. Cir. 2012) (en banc) (Akamai II). By mid-2014, however, the Supreme Court had reversed Akamai II, held that dividedinfringement liability of the sort at issue here requires some person to be liable for direct infringement under 35 U.S.C. § 271(a), and remanded for possible reconsideration of direct-infringement standards by this court. Limelight Networks, Inc. v. Akamai Techs., Inc., 134 S. Ct. 2111, 2120 (2014) (Limelight).

In early 2015, the district court in the present cases, applying the law on direct-infringement liability as it then stood, concluded that Mr. Mankes’s allegations are insufficient to establish direct infringement under § 271(a), and on that basis the court granted judgments on the pleadings for Vivid Seats and Fandango. When Vivid Seats thereafter sought attorney’s fees against Mr. Mankes under 35 U.S.C. § 285, the court denied the request, finding the case not to be exceptional, a prerequisite to a fee award under § 285. Mr. Mankes has appealed the merits judgments against him, and Vivid Seats has appealed the denial of fees.

During the briefing on the merits appeal here, the legal standards applied by the district court were first reinforced, then revised, by further decisions of this court in the Akamai-Limelight case. In Akamai Technologies, Inc. v. Limelight Networks, Inc., 786 F.3d 899 (Fed. Cir. 2015) (Akamai III), a panel of this court, on remand from the Supreme Court, rejected direct-infringement liability for Limelight—as had the initial panel in the case in 2010, Akamai Techs., Inc. v. Limelight Networks, Inc., 629 F.3d 1311, 1318–22 (Fed. Cir. 2010) (Akamai I), and the en banc court in 2012, Akamai II, 692 F.3d at 1307, 1318– 19. The Akamai III panel reasoned that Limelight did not direct or control its customers’ performance of claim steps, that its customers were not agents for Limelight, and that Limelight and its customers did not together constitute a joint enterprise (whose members can be charged with each other’s acts in the enterprise). 786 F.3d at 914–15.

Three months later, however, the en banc court vacated Akamai III and decided Akamai Technologies, Inc. v. Limelight Networks, Inc., 797 F.3d 1020 (Fed. Cir. 2015) (en banc) (Akamai IV), cert. denied, 2016 WL 442440 (U.S. Apr. 18, 2016). The en banc court changed the result in the Akamai-Limelight case, now ruling against Limelight and for Akamai. Id. at 1025. The court did so by broadening the circumstances in which others’ acts may be attributed to an accused infringer to support directinfringement liability for divided infringement, relaxing the tighter constraints on such attribution reflected in our earlier precedents and in the three previous rulings for Limelight on direct infringement. See Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 709 F.3d 1348, 1362– 63 (Fed. Cir. 2013); Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1329–30 (Fed. Cir. 2008); BMC Res., Inc. v. Paymentech, L.P., 498 F.3d 1373, 1380–82 (Fed. Cir. 2007). The en banc court concluded that attribution is proper in a joint-enterprise setting, and it also articulated a standard that permits liability “when an alleged infringer conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance.” Akamai IV, 797 F.3d at 1023. The court added: “In the future, other factual scenarios may arise which warrant attributing others’ performance of method steps to a single actor. Going forward, principles of attribution are to be considered in the context of the particular facts presented.” Id. And the court stated: “To the extent our prior cases formed the predicate for [Akamai III], those decisions are also overruled.” Id. at 1023 n.3.

We need not say how much broadening occurred in Akamai IV. In the present cases, the district court’s rulings and the arguments of Fandango and Vivid Seats to the district court were squarely based on the earlier, narrower standard. We vacate the judgments on the pleadings against Mr. Mankes and remand for further proceedings in light of Akamai IV.

We affirm the denial of attorney’s fees to Vivid Seats. Not only is Vivid Seats no longer a prevailing party (given our vacatur of the judgment in its favor), but we readily conclude that the district court did not abuse its discretion in deeming the case not to be exceptional even under the state of the law before Akamai IV. Mr. Mankes rested his case on reasonable arguments for adjustment of legal standards that this court had already granted en banc review to consider in Akamai II and that remained in play, as indicated by Akamai II’s postponing reconsideration of those standards, by Limelight’s remand, and, ultimately, by Akamai IV’s adoption of broadened standards. In these circumstances, the district court did not err in refusing to deem unreasonable Mr. Mankes’s pursuit of this case to date.

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In Re: Man Machine Interface Tech., LLC

Man Machine Interface Technologies (“Man Machine”) appeals the decision of the Patent Trial and Appeal Board (“Board”) affirming the examiner’s rejection of claims 1, 4, 7–10, and 17 of Man Machine’s U.S. Patent No. 6,069,614 (“ ’614 patent”). For the reasons below, we affirm-in-part, reverse-in-part, vacate-in-part, and remand.

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Sport Dimension, Inc. v. Coleman Co., Inc.

Coleman Company, Inc. appeals from a stipulated judgment of noninfringement entered by the United States District Court for the Central District of California. Coleman challenges the district court’s claim construction on which the stipulated judgment was based and its exclusion of Coleman’s expert. For the reasons stated below, we vacate the judgment, affirm the court’s exclusion of Coleman’s expert, and remand for proceedings consistent with this opinion.

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Flo & Eddie, Inc. v. Sirius XM Radio, Inc.

Defendant-Appellant Sirius XM Radio, Inc. appeals from the November 14, 2014 and December 12, 2014 orders of the United States District Court for the Southern District of New York (McMahon, J.) denying its motions, respectively, for summary judgment and for reconsideration in connection with Plaintiff-Appellee Flo & Eddie, Inc.’s copyright infringement suit. A significant and unresolved issue of New York law is determinative of this appeal: Is there a right of public performance for creators of sound recordings under New York law and, if so, what is the nature and scope of that right? Accordingly, we CERTIFY this question to the New York Court of Appeals and reserve decision.

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Genetic Techs. Ltd. v. Merial L.L.C.

Genetic Technologies Limited (“GTG”) brought suit against Merial L.L.C. (“Merial”) and Bristol-Myers Squibb (“BMS”) (together, “appellees”). GTG alleged that appellees had infringed U.S. Patent No. 5,612,179 (“the ’179 patent”), which relates to methods of detecting genetic variations. The district court granted appellees’ motions to dismiss for failure to state a claim and entered final judgment that claims 1–25 and 33–36 of the ’179 patent are ineligible for patenting under 35 U.S.C. § 101. For purposes of this appeal, the parties have stipulated that claim 1 is representative of all of the invalidated claims. Because we agree that claim 1 is directed to unpatentable subject matter, we affirm.

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Millennium Labs. v. Ameritox, Ltd.

We also reverse the district court’s decision to grant summary judgment on Millennium’s California unfair competition claim. The district court relied on Cleary v. News Corp., 30 F.3d 1255, 1262–63 (9th Cir. 1994), which clarified that trade dress infringement claims under the Lanham Act and unfair competition claims under California Business and Professions Code section 17200 are inextricably linked. Because we hold that summary judgment was not appropriate on Millennium’s trade dress claim, we hold the same for its unfair competition claim. 

We reverse the district court’s grant of summary judgment in favor of Ameritox on Millennium’s claim of trade dress infringement under the Lanham Act and unfair competition under California Business and Professions Code section 17200, and we remand for further proceedings. Although it is functional to have a system to portray test results, there is a genuine fact issue whether the precise manner in which Millennium presented its results was functional. REVERSED and REMANDED.

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Rembrandt Vision Techs., L.P. v. Johnson & Johnson Vision Care, Inc.

Rembrandt Vision Technologies, L.P. (“Rembrandt”) appeals from the district court’s denial of Rembrandt’s motion for a new trial under Federal Rules of Civil Procedure 60(b)(2) and (3). Because the district court abused its discretion in denying Rembrandt’s Rule 60(b)(3) motion, we reverse and remand for a new trial.

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Pride Mobility Prods. Corp. v. Permobil, Inc.,

Pride Mobility Products Corp. owns U.S. Patent Nos. 8,408,598 and 8,408,343, which disclose and claim wheelchairs designed to travel stably over obstacles. The Patent and Trademark Office’s Patent Trial and Appeal Board, acting through a panel under authority delegated by the Director, instituted inter partes reviews of the ’598 and ’343 patents on petitions filed by Permobil, Inc. under 35 U.S.C. § 311 et seq. After reviewing the patents, the Board cancelled all claims of both patents for obviousness. Permobil, Inc. v. Pride Mobility Prods. Corp., IPR2013- 407, 2014 WL 7405755 (PTAB Dec. 31, 2014) (’598 Decision); Permobil, Inc. v. Pride Mobility Prods. Corp., IPR2013-411, 2014 WL 7405756 (PTAB Dec. 31, 2014) (’343 Decision). Pride Mobility’s appeal centers on two issues: (1) whether the Board misconstrued claim 7 of the ’343 patent, which requires a “substantially planar” mounting plate “oriented perpendicular” to the axis of the claimed wheelchair’s drive wheel; and (2), as to all other claims, whether the Board erred in concluding that a relevant skilled artisan would have been motivated to make the claimed wheelchair by lowering the position of a pivot in a prior-art wheelchair. We reverse the Board’s construction and cancellation of claim 7 of the ’343 patent. As to the other claims, we affirm.

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HP Inc. v. MPHJ Tech. Inv., LLC

HP Inc. (“HP”) appeals from the final decision of the United States Patent and Trademark Office (“PTO”) Patent Trial and Appeal Board (the “Board”) in an inter partes review (“IPR”) proceeding finding claims 1–12, 14, and 15 of U.S. Patent 6,771,381 (the “’381 patent”), owned by MPHJ Technology Investments (“MPHJ”), unpatentable as anticipated, and finding claim 13 of the ’381 patent not unpatentable as anticipated. See Hewlett-Packard Co. v. MPHJ Tech. Invs., LLC, IPR2013-00309, 2014 WL 6617698 (P.T.A.B. Nov. 19, 2014) (“Final Decision”). HP argues that the Board erred by not also finding claim 13 unpatentable as anticipated, and challenges the Board’s decision not to review whether claim 13 is unpatentable as obvious. Because the Board did not err and because we cannot review the decision not to institute, we affirm.

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