Decisions in brief

DECISIONS IN BRIEF John C. Gatz Copyrights Don’t Forget the Originality! 33 UIRC-GSA Holdings, LLC v. William Blair & Co., L.L.C. , 90 F.4th 908, 2024 U.S.P.Q.2d 76 (7th Cir. 2024). Plaintiff UIRC-GSA Holdings (UIRC) appealed the district court’s decision that there was no infringement of two of its documents regularly utilized in issuing bonds to secure funding for its rental properties. The plaintiff revises the subject documents for each transaction. However, the district court found, and the Seventh Circuit affirmed, that the documents do not contain enough original authorship to be subject to copyright protection. Plaintiff UIRC did not create the underlying documents on its own, but utilized existing documents created by the Idaho Housing and Finance Association (Idaho). For each of UIRC’s transactions issuing bonds, UIRC updates the standard documents and, after the transaction is closed, files copyright applications at the U.S. Copyright Office seeking protection for the “additional and revised text” it had drafted in the final documents. During prosecution, the Copyright Office required UIRC to clarify which parts of the bond documents were original text or otherwise substantial revisions to preexisting text. The copyright registrations were granted with limiting language, excluding protection for the “standard legal language” in the documents. UIRC learned that a third party it hired to help market its bonds had used its documents in a transaction with another company. In fact, references to UIRC remained in the final documents, even though it was not a party to the transaction. UIRC sued defendant Blair, alleging that Blair had copied original portions of UIRC offering documents, thereby infringing its copyrights in the documents under the Copyright Act, 17 U.S.C. §§ 101 et seq. The Seventh Circuit affirmed the district court’s grant of the defendant’s motion for summary judgment, determining that the documents in question were not subject to copyright protection. The UIRC documents failed to be independently created or possess even the most minimal amount of creativity. The UIRC documents were near replicates of the Idaho documents; in one section, the only difference was the changing of a semicolon to a period. After eliminating all of the text that was directly copied from the Idaho documents, the Seventh Circuit determined that even in the areas of the documents where a court could accept that UIRC made substantive additions, those additions lacked creative expression because the text was “a mixture of fragmented phrases, facts, and language dictated solely by functional considerations,” which are not copyrightable. The documents were not entitled to copyright protection, so the court did not consider the second element of the copyright infringement claim. Just Dance Hanagami v. Epic Games, Inc. , 85 F.4th 931, 2023 U.S.P.Q.2d 1296 (9th Cir. 2023). The Ninth Circuit determined that the district court erred in granting the defendant’s motion to dismiss because it improperly applied the substantial similarity test for copyright infringement when determining that the plaintiff did not plausibly allege that its copyrighted choreography and the allegedly infringing dance in the video game share substantial similarities. Plaintiff Hanagami appealed the dismissal of his claim for copyright infringement against Epic, the developer of the virtual reality game Fortnite . In 2017, Hanagami created a choreographic dance work to Charlie Puth’s “How Long” song. In 2020, Fortnite released a new version of the game that permits users to purchase various accessories for their virtual avatar, as well as “emotes” that allow the avatar to celebrate or dance in the game. One emote is called “It’s Complicated,” and Hanagami alleged that four of the 16 counts of emote movement were copied from Hanagami’s work, which he obtained a copyright registration for in 2021, covering only the choreography in the video, not the music or audiovisual elements. Hanagami sued for direct and contributory copyright infringement against Epic, which moved to dismiss the claims for failure to state a copyright claim on the grounds that the allegedly copied dance steps were not protectable and the works are not substantially similar. The district court granted Epic’s motion. The Ninth Circuit reversed the dismissal. To state a claim for copyright infringement, one must show that (1) there is a valid copyright and (2) the defendant copied protected aspects of the work. There is no question that Hanagami owns a valid copyright. To establish that the defendant copied protected elements of the work, Hanagami must show that Epic copied protected aspects of the “How Long” choreography. Whether there was unlawful appropriation by Epic requires a demonstration that the works share substantial similarities because the defendant copied the author’s expression of the work, not just the underlying idea. The Ninth Circuit held that the district court erred in its determination that the steps at issue are unprotectable as individual poses when considered in isolation because choreography is more than just a “static collection of poses,” and the district court failed to consider the other expressive elements of the choreography. Patents ANDA Application H. Lundbeck A/S v. Lupin Ltd. , 87 F.4th 1361, 2023 U.S.P.Q.2d 1453 (Fed. Cir. 2023). The Federal Circuit affirmed the district court’s finding of no direct infringement because the abbreviated new drug applications (ANDAs) were effective after the expiration of the compound patents and were directed to a use case not covered by the method patents. The Federal Circuit also affirmed the district court’s finding of no induced infringement because Published in Landslide, Volume 16, Number 4, 2024. © 2024 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association. the defendants lacked the requisite specific intent and action to induce infringement. The Federal Circuit further affirmed the district court’s finding of no contributory infringement based on substantial noninfringing uses. Attorney Fees In re PersonalWeb Technologies LLC , 85 F.4th 1148, 2023 U.S.P.Q.2d 1308 (Fed. Cir. 2023). The Federal Circuit upheld the district court’s finding that this case was exceptional and its awarding of attorney fees. The Federal Circuit found that the district court appropriately applied the correct standard. The district court also found that the patentee had shifting infringement positions, which supported the position that this was an exceptional case. Claim Construction Actelion Pharmaceuticals Ltd. v. Mylan Pharmaceuticals Inc. , 85 F.4th 1167, 2023 U.S.P.Q.2d 1314 (Fed. Cir. 2023). The Federal Circuit vacated the district court’s construction of the phrase “a pH of 13 or higher” and judgment of infringement for failing to consider extrinsic evidence relevant to claim construction. Actelion’s construction would allow for a pH of 12.5, rounded to 13, to meet the claim limitation, whereas Mylan argued that the limitation cannot cover any pH less than 13. The district court did not consider extrinsic evidence regarding the number of significant digits in a pH. K-fee System GmbH v. Nespresso USA, Inc. , 89 F.4th 915, 2024 U.S.P.Q.2d 12 (Fed. Cir. 2023). The Federal Circuit reversed the district court’s claim construction and subsequent grant of summary judgment of noninfringement and remanded for further proceedings. After considering the ordinary meaning of the claim term, the Federal Circuit reversed the district court’s construction. The Federal Circuit also found no disclaimer based on K-fee’s European prosecution history, as K-fee did not act with the clarity required to prescribe a new meaning for the claim term or to disclaim any portion of the apparent meaning. 33 Malvern Panalytical Inc. v. TA Instruments-Waters LLC , 85 F.4th 1365, 2023 U.S.P.Q.2d 1297 (Fed. Cir. 2023). The Federal Circuit vacated and remanded the stipulated judgment of noninfringement due to the district court’s erroneous claim construction. The patentee included an unrelated patent and its office actions in an information disclosure statement. The alleged infringer argued that this meant the prosecution history of the cited patent could be used in claim construction. The Federal Circuit found that the mere listing of the office actions in the information disclosure statement was not an admission that the other patent’s prosecution history was controlling in construing the claim term. ParkerVision, Inc. v. Vidal , 88 F.4th 969, 2023 U.S.P.Q.2d 1497 (Fed. Cir. 2023). The Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB’s) claim construction and found no procedural error in how it treated certain arguments raised by the parties. The Federal Circuit found that ParkerVision had acted as its own lexicographer, which was correctly tracked in the PTAB’s claim construction. The Federal Circuit also found that substantial evidence supported the PTAB’s finding that prior art disclosed the constructed term. John C. Gatz is a member of the firm Nixon Peabody in Chicago, Illinois. Column contributors include the following writers: Copyrights: Jenni Psihoules and Kaleigh Morrison, Nixon Peabody LLP. Patents: Cynthia K. Barnett, Johnson & Johnson; R. Trevor Carter and Andrew M. McCoy, Faegre Drinker Biddle & Reath LLP; Robert W. (Bill) Mason, Southwest Research Institute; and Angelo Christopher, Nixon Peabody LLP. Trade Secrets: R. Mark Halligan, FisherBroyles LLP. Trademarks: Elizabeth W. Baio, Allison Strong, and Eliana Torres, Nixon Peabody LLP; and Amy L. Sierocki, Blumenfield & Shereff LLP. Domestic Industry/Invalidity Roku, Inc. v. International Trade Commission , 90 F.4th 1367, 2024...