Google and the Library Project

An interesting article by Brian Sites in the Fall 2006 ASU Jurimetrics Journal statistically analyzes the copyright fair use factors from 110 cases and uses the results to argue that Google's Library Project should be considered fair use.

The four fair use factors of 17 U.S.C. § 107 are:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.

In his article, Sites concludes that the factors are not weighted equally by courts, and that factors 1 and 4 are the most important.

Sites uses his analysis to argue that Google's creation of a searchable book index from the Library Project should be considered a fair use for a number of reasons, including the transformative nature of Google's project.

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“Disinfectable” Cannot Be The Subject Of Trademark Protection

Case: Rudolph Int'l, Inc. v. Realy's, Inc., No. 05-55605 (9th Cir. 4/12/2007)

The One Sentence Summary: The term “disinfectable,” when used in the nail file industry, is generic and thus cannot be the subject of trademark protection.


Plaintiff Rudolph International, Inc. (“Rudolph”), a manufacturer and seller of abrasive nail files, brought suit against its competitor, Realys, Inc. (“Realys”), for trademark infringement when Realys began using the term “disinfectable” on its nail files. The U.S. PTO had previously rejected Rudolph’s application to register “disinfectable” as a trademark.

The district court granted summary judgment to Realys, and in this opinion, the Ninth Circuit affirmed the district court’s ruling, holding that the term “disinfectable” was a generic term that was not a proper subject of trademark protection in the nail file industry. Many states’ regulations require nail technicians to disinfect instruments – such as nail files – used on multiple customers. The term “disinfectable” is generic in the parties’ industry as it developed from regulatory obligations. The term describes the type of product, falling on the “what-are-you” side of the “who-are-you/what-are-you” test that is often referenced to answer the question of genericness.

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Declaratory Judgment Action Available for ANDA Filer Sued on One of Five Patents

Case: Teva Pharmaceuticals v. Novartis, No. 06-1181 (Fed. Cir. 3/30/07)

The Short Summary: Declaratory judgment action seeking declaration of non-infringement was proper where ANDA filer had been sued on only one of five patents, and subsequently filed action to obtain "patent certainty." An "actual controversy" existed in light of the Supreme Court's recent decision in MedImmune v. Genentech, Inc., 127 S.Ct. 764 (2007).

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DMCA Safe Harbor and CDA Immunity Protects Web Credit Card Processors

Case: Perfect 10 v. CCBill, No. 04-57143, 04-57207 (9th Cir. 3/29/07)

The One Sentence Summary: Defective DMCA notices did not provide knowledge of infringement, and the CDA provided immunity from claims arising from state intellectual property law.



Ninth Circuit Holdings:

• Defendants had a reasonably implemented DMCA policy under 17 U.S.C. § 512(i)(1)(A). The procedures implemented by defendants for tracking repeat infringers were reasonable.
• Defective notices by plaintiff of infringement meant that knowledge of infringement could not be imputed to defendants.
• The district court on remand should consider evidence of how defendants implemented their policies as to non-party copyright holders.
• On remand, the district court should consider whether defendants knew of infringement due to "red flags" raised by non-parties.
• On remand, the district court should consider whether blocking access to the site interfered with "standard technical measures."
• The presence of allegedly infringing material on the websites did not provide sufficient direct financial benefit to defendants to deprive them of the safe harbor of 512(c) for information stored by third parties.
• Section 230 of the Communications Decency Act ("CDA") provided immunity from intellectual property law claims arising under state rather than federal law.
• Issues of material fact existed as to whether there was direct infringement.
• The district court validly exercised its discretion to deny attorneys' fees to defendants.
  
  

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Federal Circuit Clarifies Law of Prosecution History Estoppel and States Strict Proof Requirements for Doctrine of Equivalents

Case: AquaTex Industries, Inc. v. Techniche Solutions, __ F.3d __ (Fed. Cir. 2/27/07)

The One Sentence Summary:
The Federal Circuit found that the district court had misapplied both prosecution history estoppel and the doctrine of equivalents; it nonetheless affirmed the district court's summary judgment of noninfringement based on the Plaintiff-Appellant's failure to meet the evidentiary burden required for a theory of infringement based on the doctrine of equivalents.

What They Were Fighting About:
AquaTex Industries holds a patent on “evaporative cooling garments,” and it sued Techniche Solutions alleging patent infringement.

In an earlier decision, the Federal Circuit asked the lower court to address whether Techniche’s products infringed the AquaTex patent under the Doctrine of Equivalents (“DOE”). The DOE allows a court to hold a party liable for patent infringement where the infringing product or method does not fall within the literal scope of a patent claim, but it nevertheless is equivalent to the claimed invention. The DOE requires a showing (1) that the difference between the claimed invention and the accused product or method is insubstantial or (2) that the accused product or method performs substantially the same function in substantially the same way with substantially the same result as each claim limitation of the patented product or method.

The district court found that AquaTex’s claim of infringement under the DOE was barred by prosecution history estoppel (“PHE”). Under PHE, when a patentee surrenders subject matter during patent prosecution, say, through an amendment, there is a presumption that the patentee cannot recapture that subject matter by asserting the DOE. The patentee can rebut that presumption, however, by showing that the amendment was unrelated to patentability.

The district court found that PHE barred AquaTex’s claim because (1) AquaTex’s narrowing amendments made during prosecution “surrender[ed] subject matter within which [Techniche’s] product falls,” and (2) AquaTex failed to prove that the asserted equivalent performs “substantially the same function in substantially the same way” as the patented method.

Here, the Federal Circuit found that the district court erred in applying both PHE and the DOE. Despite these errors of the district court, the Federal Circuit ultimately affirmed the summary judgment of noninfringement based on the Plaintiff-Appellant AquaTex's failure to meet the evidentiary burden required for a theory of infringement based on the DOE, as discussed below.

Federal Circuit Holdings:

• PHE only applies if the narrowing amendment bears a direct relation to the alleged equivalent element. Here, there was no direct relationship because the amendment “was directed to a completely different claim limitation.”
• The standard test for infringement under the DOE requires that each element of the asserted claim either be infringed literally or under the DOE.
• Under the DOE, the court should look only to the patent’s claim language and specification in order to determine whether the accused product or method is “substantially the same” as the patented invention. The inquiry “leaves no room for consideration of the patentee’s product.” Here, the lower court improperly used the patentee’s description of the product on its website to determine whether the DOE applied.
• For a patentee to show infringement under the DOE, it must show equivalence through “particularized testimony and linking argument on a limitation-by-limitation basis.” Ideally, this evidence would be presented by a PHOSITA, “typically a qualified expert, who (on a limitation-by-limitation basis) describes the claim limitations and established that those skilled in the art would recognize the equivalents.” Here, AquaTex provided only lawyer argument and general testimony by the Techniche CEO. The CEO testimony “only explained how the defendant’s product operated.”

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