Our weekly SoCal IP Institute meeting on Monday, June 16, 2014 will be a discussion of two Supreme Court cases. The first deals with indefiniteness and the second deals with copyright ownership. Brief synopses of the cases appear below.
Nautilus, Inc. v. Biosig Instrum., Inc. 110 U.S.P.Q.2d 1688, 572 U.S.___ June 2, 2014) (available here). In Nautilus, the Supreme Court remanded to the Federal Circuit to determine whether claims to an exercise machine were indefinite under 35 U.S.C. §112,¶2. Procedurally, the District Court granted Nautilus’ summary judgment motion to dismiss on the basis of invalidity, but the Federal Circuit reversed saying the claim term at issue was not “insolubly ambiguous.” In remanding, the Supreme Court stated that the “insolubly ambiguous” standard does not comport with the statute. “To tolerate imprecision just short of that rendering a claim ‘insolubly ambiguous’ would diminish the definiteness requirement’s public-notice function and foster the innovation-discouraging ‘zone of uncertainty.’ ” The ball is back in the CAFC’s court to clearly define a definiteness test.
Side-issue brought up in Nautilus: What are “hybrid” apparatus/method claims, and when are they invalid?
Petrella v. Metro-Goldwyn-Mayer, Inc. et al., S.Ct. No. 12-1315 (May 19, 2014) (available here). The screenplay for the movie “Raging Bull,” written by Jack Petrella and Jake LaMotta, was copyrighted in 1963 and assigned to MGM. The movie was released in 1980, and upon Petrella’s death, his rights reverted to his daughter, plaintiff here. She renewed the copyright in 1991, becoming its sole owner. In 1998 she threatened MGM with an infringement suit, and in 2009 she sued, claiming monetary and injunctive relief limited to the three years prior to the date the suit was filed. The Ninth Circuit granted summary judgment to MGM based on laches. The Supreme Court reversed on a 6-3 vote, holding that laches does not apply to copyright claims for damages brought within the copyright statute’s prescribed three-year window. In extraordinary circumstances, however, laches might curtail some forms of equitable relief.
All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, June 16, 2014 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.