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Downloading Pirated Software Without Installing It May Constitute Infringement

Addressing the de minimis requirement of copyright infringement and the ownership of a software program’s output, the US Court of Appeals for the Ninth Circuit determined that downloading pirated software was not a de minimis...more

State Law Cannot Blur the Line Between Patents and Copyrights

The US Court of Appeals for the Fifth Circuit determined that a plaintiff could not use a state law claim for unfair competition to protect a valve design, because federal copyright law preempts such a claim. Ultraflo Corp....more

Arm’s Length Royalty Rates Save Medtronic from $1.36 Billion Tax Deficiency

Addressing whether certain intercompany technology license agreements were negotiated at arm’s length, the US Tax Court rejected the Internal Revenue Service’s (IRS’s) alleged $1.36 billion tax deficiency and determined that...more

Most-Favored Licensee Entitled to Refund of 99 Percent of Lump Sum Royalty

The US Court of Appeals for the Fifth Circuit ruled that a most-favored licensee clause allowed a licensee that paid a lump sum of $70 million to be entitled to a refund when a subsequent licensee paid a lump sum of only...more

No Appellate “Second Guessing” of Witness Credibility Determinations - Guzman v. Hacienda Records and Recording Studio, Inc.

Addressing whether nearly identical opening song lyrics showed copying and whether to give more weight to testimony from witnesses who contradicted themselves, the U.S. Court of Appeals for the Fifth Circuit determined that...more

Settlement Agreement Precludes Consideration of Order Criticizing Attorney Conduct - Tesco Corp. v. Nat’l Oilwell Varco, L.P.

Addressing for the first time the effect of a settlement agreement on an appeal from an order criticizing two attorneys’ conduct, the U.S. Court of Appeals for the Federal Circuit concluded that the intervening settlement...more

Fact-Intensive Reasonable Royalty Analysis Need Not Be Peer Reviewed or Published to Be Admissible - Summit 6, LLC v. Samsung...

Addressing the admissibility of expert testimony on damages issues, the U.S. Court of Appeals for the Federal Circuit upheld the district court’s admission of expert testimony based on a fact-intensive analysis that was not...more

An Evaluation of Secondary Meaning Can Consider Both Parties’ Use of the Mark - Test Masters Educ. Servs., Inc. v. Robin Singh...

Addressing when a descriptive mark acquires a secondary meaning, the U.S. Court of Appeals for the Fifth Circuit affirmed the district court, determining that neither party is entitled to a federal registration of the...more

Standing Requires the Transfer of All Substantial Rights, Regardless of Whether a Patent Is Expired - Keranos, LLC v. Silicon...

Addressing whether an exclusive licensee of an expired patent had standing to sue for patent infringement, the U.S. Court of Appeals for the Federal Circuit confirmed that a licensee has standing when it holds all substantial...more

No Lost Profits for Extraterritorial Lost Contracts - WesternGeco L.L.C. v. ION Geophysical Corp.

Addressing whether a patentee could recover lost profits for foreign uses of a product manufactured domestically, the U.S. Court of Appeals for the Federal Circuit reversed the district court’s lost profits award, holding...more

Covered Business Patents Jurisdiction Continues to Develop - Apple Inc. v. Smartflash LLC

In three parallel decisions, the Patent Trial and Appeal Board (PTAB or Board) determined that patents directed to validating payment and then granting access to data were eligible for covered business method (CBM) review and...more

CBM that Recites Scanning Receipts, Encrypting the Data and Transmitting Not Patent-Eligible - Fidelity Nat’l Info. Servs., Inc....

Addressing the subject-matter eligibility of a business-method patent for scanning receipts, encrypting the data, and then transmitting it to a cloud server, the Patent Trial and Appeal Board (PTAB or Board) concluded that...more

“A Hole” Can Refer to Multiple Holes - Eidos Display, LLC v. AU Optronics Corp.

Addressing indefiniteness in a post-Nautilus world, the U.S. Court of Appeals for the Federal Circuit concluded that the claim limitation “a contact hole” could refer to multiple, separate contact holes and was not indefinite...more

Tangible Claim Elements Failed to Save Abstract Business-Method Patent - Dell Inc. v. Disposition Servs. LLC

Further clarifying its views on subject-matter eligibility, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) determined that a patent describing the disposal of obsolete assets—for example,...more

Solving Problems Unique to the Internet May Be Patent-Eligible - DDR Holdings, LLC, v. Hotels.com, L.P.

In another decision sculpting the contours of what is patent-eligible subject matter under 35 U.S.C. § 101, the U.S. Court of Appeals for the Federal Circuit determined that an invention that combined one webpage with a...more

Ineligible Subject Matter in One Court Is Still Ineligible in Another

DietGoal Innovations LLC v. Chipotle Mexican Grill, Inc. - Addressing the issue of whether the court was bound by another court’s holding that a patent was invalid for being directed to patent-ineligible subject...more

Method Implemented on Generic Computers Is Not Patent Eligible, but Method for Processing Paper Checks Is

Salesforce.com, Inc. v. Virtualagility, Inc. and U.S. Bancorp v. Solutrain, Inc. - In a pair of covered business method (CBM) decisions, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB or...more

Patent Owner Cannot Assert a Claim That Is Missing a Material Limitation

H-W Tech., L.C. v. Overstock.com, Inc. - Addressing an attempt by a patent owner to assert a patent claim that was missing a material limitation, the U.S. Court of Appeals for the Federal Circuit affirmed a summary...more

Inferring Trade Secret "Use" Based on the Potential for Harm

Aspen Tech., Inc. v. M3 Tech., Inc. - Addressing the question of what constitutes “use” of a trade secret absent direct evidence, the U.S. Court of Appeals for the Fifth Circuit upheld the jury’s finding of...more

Data-Encryption Is Patent Eligible Despite Not Being Tied to a Particular Machine - TQP Development, LLC v. Intuit Inc.

Addressing an argument that a data-encryption patent was directed to non-eligible subject matter because it covered an abstract idea divorced from a particular machine, Judge William Bryson, sitting by designation in the U.S....more

IP Update, Vol. 16, No. 9, September 2013

Patents/Preliminary Injunction: Preliminary Injunction Ordered Based on Appellate Claim Construction Aria Diagnostics, Inc. v. Sequenom, Inc. - Addressing a preliminary injunction filed by a defendant in a...more

IP Update, Vol. 16, No. 6, June 2013

Patents / Patent Eligible Subject Matter - Supreme Court to Myriad: Isolated DNA Sequences Are Not Patent-Eligible Subject Matter -- AMP et al. v. Myriad Genetics, Inc.: In a 9–0 decision the Supreme...more

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