We will be discussing one Federal Circuit case and one Ninth Circuit case during our weekly SoCal IP Institute meeting on Monday, August 20, 2012. Brief synopses are presented below.

Monge v. Maya Magazines, Inc., Case Nos. 10-56710 and 11-55483 (9th Cir. August 14, 2012) (attached).

Noelia Monge is a pop singer and model in Latin America.  In 2007, she married her manager and music producer Jorge Reynoso in a private, unpublicized wedding in Las Vegas.  Maya Magazines, Inc. and Maya Publishing Group, LLC obtained and publishing previously unpublished photos of the secret wedding in “TVNotas,” a Spanish-language celebrity gossip magazine. The photos were allegedly stolen by a third party.  Monge sued Maya claiming copyright infringement. The district court granted Maya’s summary judgment on the ground that publication of the images was fair use under the Copyright Act of 1976.

On appeal, the Ninth Circuit Court of Appeals reversed and remanded, holding that the balancing of factors must be weighed against defendants’ burden to establish fair use.  The Ninth Circuit determined that not a single factor weighed in favor of the defendants and the defendants’ affirmative defense of fair use failed as a matter of law.

Magsil Corp. v. Hitachi Global Storage Tech., Inc., Case No. 2011-1221 (Fed. Cir. August 14, 2012) (attached).

MIT owns Patent No 5,629,922, which covers read-write sensors for computer hard disk storage systems that use a quantum mechanical effect to pass electric current from one electrode to another.  MIT and the patent’s exclusive licensee Magsil sued Hitachi et al. for infringement of the ’922 patent.  The Federal Circuit upheld the district court’s grant of summary judgment in favor of the defendants, finding the disputed claims invalid for lack of enablement.

The patent claims a device that has a change in resistance of “at least 10%.”  The district court found that the asserted claim coverage includes “resistance changes beyond 120% and up to infinity.”    The defendant was able to prove that the change in resistance levels could not have been achieved at the time of the patent filing without undue experimentation.  The field of art had advanced greatly after the filing of the patent application. The Federal Circuit stated that the specification at the time of filing must teach one of ordinary skill in the art to fully perform the method across the entire scope.  Accordingly, the district court’s finding of invalidity for lack of enablement was upheld.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, August 20, 2012 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 Attalla by 9 am Monday morning.