Update: The date has been changed to October 17, 2016.  We will have a visiting speaker on October 10, 2016.

For our weekly SoCal IP Institute meeting on Monday, October 17, 2016, we will discuss the following:

McRO v. Bandai et al. (Fed Cir. Sept. 13, 2016) (available here). We previously covered this case at the district court level here. It was one of the first substantive Section 101 cases following Alice.  At the district court level, Judge Wu found that the claims of the two McRO patents were invalid under Section 101 as directed to an abstract idea. Here Judge Reyna found that “the ordered combination of claimed steps, using unconventional rules that relate to sub-sequences of phonemes, timings, and morph weight sets, is not directed to an abstract idea and is therefore patent-eligible.”  Judge Wu’s decision was reversed.

The decision is of particular interest to patent practitioners because it (1) emphasizes that claims must not be over-simplified by courts so as to arrive at an “abstract idea” that is not actually commensurate with the scope of the claims and (2) emphasizes that preemption is the primary concern so as to avoid “improperly monopoliz[ing] ‘the basic tools of scientific and technological work.'” (citing Alice).  Thus, the courts “look to whether the claims in these patents focus on a specific means for method that improves the relevant technology or are instead directed to the result itself and merely invoke generic processes and machinery.” (citing Enfish).

Once the Federal Circuit found that the claims were drafted in such a way that broad preemption was impossible and that the claims were sufficiently limited so as to not preempt “all techniques” for automating 3-D animation that rely upon rules, the decision was essentially complete.

Newegg Inc. v. Ezra Sutton, P.A.  (C.D. Cal. Sept. 13, 2016 ) (available here). In this case, Mr. Sutton apparently was asked to represent his client in a lawsuit alongside Newegg where both parties were defendants.  The case was eventually appealed to the Federal Circuit.  Mr. Sutton allegedly copied in large part the Federal Circuit appeal brief prepared by Newegg and filed it as his own.  Newegg registered a copyright in the brief and sued.  A factual description of the overall situation may be most-easily gleaned from the Declaration of Daniel Brean accompanying Newegg’s motion for summary judgment decided here. The Exhibit K, which is a redline comparison of Newegg’s and Mr. Sutton’s briefs, is too large to share via WordPress. The copying appears to be substantial, but there are man changes to Mr. Sutton’s brief as well.

Still, the court here granted Newegg’s motion for summary judgment of infringement and granted Mr. Sutton leave to add the affirmative defense of fair use.

All are invited to join us on Monday, October 17, 2016, 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 Elisha Manzur by 9 am Monday morning.