Our weekly SoCal IP Institute meeting on Monday, April 1, 2013 will be a discussion of one Federal Circuit case regarding patent divided infringement and a 9th Circuit case regarding copyright fair use.  Brief synopses of the cases appear below.

Columbia Pictures et al. v. Gary Fung; Isohunt Web Tech., Inc., Case No. 10-55946 (9th Cir. March 21, 2013) (available here).

The 9th Circuit affirmed in part and vacated in part the district court’s judgment in favor of film studios, which alleged that the services offered and websites maintained by the defendants induced third parties to download infringing copies of the studios’ copyrighted works.  The panel held that under Metro-Goldwyn-Mayer Studios, Inc. v. Grokster Ltd., 545 U.S. 913 (2005), the defendants were liable for contributory copyright infringement on an inducement theory because the plaintiffs established (1) distribution of a device or product, (2) acts of infringement, (3) an object of promoting the product’s use to infringe copyright, and (4) causation in the defendants’ use of the peer-to-peer file sharing protocol known as BitTorrent.

The panel also held that the defendants were not entitled to protection from liability under any of the safe harbor provisions of the Digital Millennium Copyright Act, including safe harbors provided by 17 U.S.C. § 512(a), (c), and (d) for transitory digital network communications, information residing on systems or networks at direction of users, and information location tools. The panel nonetheless rejected the argument that inducement liability is inherently incompatible with protection under the safe harbors.  Finally, the panel held that certain provisions of the injunction were too vague to meet the notice requirements of Fed. R. Civ. P. 65(d), and certain provisions were unduly burdensome.

Abbot Labs. v. Cordis Corp., Case No. 2012-1244 (Fed. Cir. March 11, 2013) (available here).

Cordis Corporation appealed from the decision of the United States District Court for the Eastern District of Virginia granting Abbott Laboratories’ motion to quash two subpoenas duces tecum issued pursuant to 35 U.S.C. § 24. The district court concluded that section 24 only empowers a district court to issue a subpoena for use in a “contested case,” and that contested cases are limited to those in which the regulations of the United States Patent and Trademark Office (“PTO”) authorize the parties to take depositions. Since the PTO does not provide for depositions in inter partes reexamination proceedings, such proceedings are not “contested cases” within the meaning of section 24, and subpoenas under section 24 are not available. The Federal Circuit affirmed.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, April 1, 2013 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.