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Oracle v. Google – Redefining The Applicability and Scope of The Fair Use Defense for Software

Oracle v. Google – Redefining The Applicability and Scope of The Fair Use Defense for Software

2018 Summer Associate Mira Park contributed to this post. On March 27, 2018, in Oracle America Inc. v. Google LLC, No. 17-1118 (Fed. Cir. 2018), the Court of Appeals for the Federal Circuit held that Google’s use of Oracle’s software code did not constitute a fair use and remanded for a trial on damages. Oracle is the copyright owner of the “declaring code”, as well as the structure, sequence, and organization (“SSO”) of the Java application programming interface (“API”) packages at issue in this case. A Java API package is a collection of pre-written Java source code programs for providing computer functions, and allows programmers to provide desired functions into their own programs without the need to write the corresponding code from scratch. In 2005, Google wrote its own code to run programs written in the Java language on its Android platform, but used the declaring code verbatim (i.e. 11,500… Continue Reading

SQUARELY DECIDED: THE FIFTH CIRCUIT SIDES WITH SPONGEBOB

SQUARELY DECIDED: THE FIFTH CIRCUIT SIDES WITH SPONGEBOB

On May 22, 2018, in Viacom Int’l, Inc. v. IJR Captial Invs., LLC, 242 F. Supp.3d 563 (2017), the Fifth Circuit Court of Appeals upheld summary judgment in favor of Viacom International Inc. (Viacom) on its trademark infringement and unfair competition claims against IJR Capital Investments, LLC (IJR).  In a case of first impression, the court held that “specific elements from within a television show—as opposed to the title of the show itself—[can] receive trademark protection.” Viacom is the owner of SpongeBob SquarePants, an animated television series created for Viacom’s Nickelodeon Network that first premiered in 1999, and recently renewed for a twelfth season.  The series follows the life of the title character, SpongeBob SquarePants, and his friends in the underwater town of Bikini Bottom.  The Krusty Krab, the center of the controversy in this case, is a fast-food restaurant in the submerged town owned by Mr. Krabs, a money-hungry… Continue Reading

Vanda v. West-Ward: This Time, Dosage Adjustment Claims are Patent Eligible Subject Matter

Vanda v. West-Ward: This Time, Dosage Adjustment Claims are Patent Eligible Subject Matter

The Federal Circuit’s decision in Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals, No. 2016-2707, addresses the complicated topic of patent eligibility in the pharmaceutical space. The decision upheld the district court’s decision finding of Vanda’s personalized medical treatment claims as patent eligible under § 101.  The case also confirms that amending an Abbreviated New Drug Application (ANDA) to address a patent issued after the original ANDA’s filing can infringe the later-issued patent. Vanda owns a New Drug Application (NDA) for FANPAT (iloperidone), an antipsychotic drug used to treat schizophrenia. Id. at 4. Upon filing the NDA, Vanda listed U.S. Reissue Patent No. 39,198 in the Food and Drug Administration’s Orange Book for iloperidone. Id. at 2. In 2013, West-Ward filed its ANDA seeking approval to manufacture and sell a generic version of iloperidone. Id. at 5. While West-Ward’s ANDA was pending, the Patent Office issued U.S. Patent No. 8,586,610. Soon thereafter,… Continue Reading

SimpleAir v. Google: Consider the Scope of the Claims in a Claim Preclusion Analysis

On May 12, 2018, the Federal Circuit held in SimpleAir, Inc. v. Google LLC, No. 2016-2738, that a terminal disclaimer does not raise a presumption that a continuation patent is patentably indistinct from its parent patent.  In SimpleAir, the issue was whether an action asserting infringement of two patents was barred by claim preclusion or the Kessler doctrine when the same activity had been judged not infringing in earlier litigations involving other patents in the same family, all of which were related as continuations, and all of which included terminal disclaimers to the ultimate parent patent.  The Federal Circuit held that notwithstanding the terminal disclaimers, the district court could not simply rely on a presumption that the claims were patentably indistinct, and instead must compare the scope of the claims to determine whether claim preclusion or the Kessler doctrine applies.  Id. at *2. SimpleAir filed a series of patent infringement actions against… Continue Reading

PTAB Goes Off-Roading With Commercial Success and Teaching Away Analysis

Recently, in Polaris Industries, Inc., v. Arctic Cat, Inc., No. 2016-1807, 2016-2280 (Fed. Cir. February 9, 2018), the Court of Appeals for the Federal Circuit (“CAFC”) overturned a Patent Trial and Appeal Board (“Board”) decision that all claims of a patent directed to a side-by-side all-terrain vehicle (ATV) were unpatentable as obvious in a first inter partes review (IPR), while affirming the Board’s decision that the claims of the same patent were not unpatentable in view of a different combination of references in a second IPR. Specifically, the CFAC found that the Board failed to conduct a proper teaching away analysis and failed to weigh Polaris’s argument of commercial success when determining certain claims were obvious. This appeal stems from two IPR petitions filed by Arctic Cat challenging the patentability of U.S. Patent No. 8,596,405 (“the ‘405 patent”) after Arctic Cat was sued by Polaris for infringing claims of that… Continue Reading

Collateral Estoppel Springs From Final IPR Decisions and Applies to Proceedings Involving the Same Claims and Claims Not “Patentably Distinct”

Collateral Estoppel Springs From Final IPR Decisions and Applies to Proceedings Involving the Same Claims and Claims Not “Patentably Distinct”

In MaxLinear, Inc. v. CF CRESPE LLC., No. 2017-1039, 2018 U.S. App. LEXIS 1930 (Fed. Cir. Jan. 25, 2018), the Federal Circuit vacated and remanded the Patent Trial and Appeal Board’s (PTAB) final written decision in IPR2015-00592 (the ‘592 IPR).  The PTAB had found that all instituted claims were not shown to be unpatentable, but during the pendency of the appeal, the Federal Circuit affirmed a decision in another IPR finding the same patent’s independent claims unpatentable. The Federal Circuit then held that collateral estoppel applied and vacated the Board’s decision.  Because the PTAB focused solely on the now-invalid independent claims in its decision, the Court ordered the PTAB to consider on remand whether the dependent claims were “patentably distinct.” However, the Federal Circuit’s guidance on this point presents logical and procedural uncertainties for the PTAB, as it has been directed to consider prior art not of record in the… Continue Reading

Federal Circuit Sets the Record “Relatively Straight” on Indefiniteness

Federal Circuit Sets the Record “Relatively Straight” on Indefiniteness

The Court of Appeals for the Federal Circuit (CAFC) found in Exmark Mfg. Co. Inc. v. Briggs & Stratton Power Prods. GRP., LLC, No. 2016-2197 (Fed. Cir. January 12, 2018) that a district court did not err in denying summary judgment for indefiniteness.  Exmark, page 16.  Specifically, the CAFC determined that the claim language and specification of U.S. Patent No. 5,987,863 (“the ‘863 patent”) provided reasonable certainty on how to determine whether a lawn mower baffle portion was long enough and straight enough to be considered “elongated and substantially straight” (claim 1 of the ‘863 patent) for the purposes of determining infringement.  Exmark, page 16. An annotated version of FIG. 4 of the ‘863 patent (see below) was provided on appeal illustrating the baffle portion 58 in question.  Exmark, page 4.  The baffle portion 58 is disposed between a first arcuate baffle portion 56 and a second arcuate baffle portion 60 (col.… Continue Reading

Prior Art Combinations Cannot Substantially Reconstruct the Primary Reference – But POSITAs Are Not Limited to Physically Combinable References

Prior Art Combinations Cannot Substantially Reconstruct the Primary Reference – But POSITAs Are Not Limited to Physically Combinable References

In University of Maryland Biotech Institute v. Presens Precision Sensing, Nos. 2016-2745, 2017-1057 (Nov. 3, 2017) (nonprecedential) (“UMBI”), the Federal Circuit affirmed the USPTO Patent Trial and Appeal Board’s (“PTAB”) inter partes reexamination decision that found U.S. Patent No. 6,673,532 (“the ’532 patent”) invalid as obvious over two prior art references. The Federal Circuit’s decision highlighted that, while “a person of ordinary skill generally would not be motivated to modify a reference by contradicting its basic teachings [or] by making it inoperable for its intended purpose,” portions or elements of a secondary reference may be combined with and adapted to the particular physical arrangement of a primary reference even if the secondary reference discloses a different or incompatible physical arrangement.  Id. at 6 (citations omitted). Background The University of Maryland Biotechnology Institute (“UMBI”) owns the ’532 patent, which is directed to methods for measuring and optimizing the parameters of in… Continue Reading

Mastermine v. Microsoft: Following Precedent or Pivoting Away?

At the end of October, in Mastermine Software, Inc. v. Microsoft Corp., No. 2016-2465 (Fed. Cir. Oct. 30, 2017), the Federal Circuit reversed a district court’s determination that a system claim was invalid for indefiniteness. The Federal Circuit disagreed with the district court’s conclusion that certain claims were indefinite for improperly claiming two different classes of subject matter.[1] The court found that the claims informed those skilled in the art with “reasonable certainty”[2] in conformity with the Nautilus guidance, specifically on the basis that one can determine when infringement occurs.[3] Overview of the District Court’s decision Mastermine asserted U.S. Patent Nos. 7,945,850 and 8,429,518 against Microsoft in the U.S. District Court for the District of Minnesota. In its claim construction order, the District Court held that claims in both patents were invalid for indefiniteness for claiming two different classes – apparatus and method.[4] Claim 8 of the ’850 Patent recites,… Continue Reading

Ignore Broader Claim Constructions at Your Own Risk

Ignore Broader Claim Constructions at Your Own Risk

In Owens Corning v. Fast Felt Corp., No. 2016-2613, 2017 U.S. App. LEXIS 19827 (Fed. Cir. October 11, 2017), the Federal Circuit reversed the Patent Trial and Appeal Board’s (PTAB) final written decision in IPR2015-00650.  While the PTAB found that the petitioner had failed to show obviousness of any challenged claim, the Federal Circuit disagreed, finding that under a proper broadest reasonable interpretation of the claims, the “record conclusively establishe[d] obviousness.” Owens Corning, 2017 U.S. App. LEXIS 19827 at *2.  The Federal Circuit therefore reversed the PTAB’s final written decision without remand, finding the challenged claims unpatentable as obvious. Background Owens Corning petitioned for inter partes review of Fast Felt’s U.S. Patent No. 8,137,757, which claims and describes methods of “applying nail tabs to roofing and building cover materials” which cover wood roof decks and stud walls. ’757 Patent, Abstract. For example, during the construction of a roof, an underlayment… Continue Reading

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