Preparing Designs for Infringing Products Was Sufficient Preparation to Allow Declaratory Judgment Jurisdiction

Case: Cat Tech. LLC. v. Tubemaster Inc., Fed. Cir. No. 07-1443 (5/28/08)

The One Sentence Summary: The second prong of the Federal Circuit's declaratory judgment test survives after the Supreme Court's Medimmune decision, and was met here where the accused infringer had made preparations to infringe.


What They Were Fighting About: The Federal Circuit panel affirmed summary judgment of non-infringement for reactors that did not meet spacing requirements set out in claim language.

Federal Circuit Holdings:

• "[A]lthough MedImmune articulated a “more lenient legal standard” for the availability of declaratory judgment relief in patent cases, the issue of whether there has been meaningful preparation to conduct potentially infringing activity remains an important element in the totality of circumstances which must be considered in determining whether a declaratory judgment is appropriate. If a declaratory judgment plaintiff has not taken significant, concrete steps to conduct infringing activity, the dispute is neither “immediate” nor “real” and the requirements for justiciability have not been met." Slip opinion at 12.
• Preparation of CAD drawings of 3 versions of devices, and production of one was sufficient "meaningful preparation to conduct potentially infringing activity" to allow declaratory judgment action.
• Design of four infringing configurations met "reality" test for declaratory judgment because the accused configurations were fixed and not fluid.
• District court properly exercised discretion in ruling on declaratory judgment in order to give certainty to accused infringer without requiring betting the farm.
• Claim language interpretation of "a spacing" smaller than a particle size required that all spacings be smaller.
• Prosecution history of parent application supported interpretation that all spacings must be smaller than the particle size.

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Summary Judgment for Defense Affirmed in Copyright Action Where the Similarity in Architectural Plans Was in Unprotectable Concepts and Not Expression

Case: Oravec v. Sunny Isles Luxury Ventures, L.C. , No. 06-14495 (11th Cir. 5/14/08)

The One Sentence Summary: Summary judgment of non-infringement for defendants of copyright in architectural plans is upheld where similarities were only in non-protectable ideas and concepts rather than in expression of ideas.



Eleventh Circuit Holdings:

• "[N]on-infringement may be determined as a matter of law on a motion for summary judgment, either because the similarity between two works concerns only non-copyrightable elements of the plaintiff’s work, or because no reasonable jury, properly instructed, could find that the two works are substantially similar.”
• In comparing works, the court must determine if there is substantial similarity in expressions of ideas rather than the ideas themselves which cannot be copyrighted.
• "[W]hile individual standard features and architectural elements classifiable as ideas are not themselves copyrightable, an architect’s original combination or arrangement of such features may be."
• Differences in the designs "preclude a finding of substantial similarity. While it is true that Oravec’s designs and the Trump Buildings have a number of features in common, those elements are similar only at the broadest level of generality. At the level of protected expression, the differences between the designs are so significant that no reasonable, properly instructed jury could find the works substantially similar. As the district court observed, to conclude otherwise would require a finding that Oravec owns a copyright in the concept of a convex/concave formula or in that of using three external elevator towers that extend above the roof of a building. Such a conclusion would extend the protections of copyright law well beyond their proper scope."
• Protection of broad concepts under copyright would not be allowed because it would diminish the store of ideas available to other architects.
• Construction of a plan registered as a pictorial, graphic or sculptural work rather than as an architectural work under the Copyright law was not an infringement.
• “[A]lthough an owner of copyrighted architectural plans is granted the right to prevent the unauthorized copying of those plans, that individual . . . does not obtain a protectable interest in the useful article depicted by those plans.”
• Effective registration doctrine did not allow protection of unregistered elements of models in later registration as a pictorial, graphic or sculptural work that did not incorporate those models.
• The district court did not abuse discretion in denying late amendment of plaintiff's complaint.
  
  

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Assignment Agreement Incorporating Patent Law Terms Should Have Patent Law Principles in Jury Instructions

Case: Medtronic v. White, Ninth Circuit No. No. 06-16229, (May 15, 2008)

The One Sentence Summary: The Ninth Circuit panel reversed and remanded a jury verdict in a dispute over ownership of a patent where the district court gave agency instructions to the jury in lieu of patent law instructions regarding interpretation of a contract assigning inventions "conceived" or "reduced to practice" during employment.


Ninth Circuit Holdings:

• Objections to agency instructions were adequately preserved.
• The parties to a contract assigning inventions "conceived" or "reduced to practice" during employment incorporated patent law principles by reference to a policy stating that patent law principles would apply.
• Giving agency instructions rather than instructions defining the law of inventorship under patent law principles was clear error.
• An admission against interest by the inventor could be allowed without corroborating evidence although it concerned reduction to practice - corroborating evidence is only required with respect to reduction to practice when the inventor is the proponent of the testimony.
  
  

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