Weekly IP Takeaways

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

1. In a recent decision out of the Northern District of California in a patent case, the Court granted a motion to strike an inequitable conduct defense with leave to amend, denied without prejudice a motion for judgment on the pleadings on a Section 101/Alice defense, and construed a few claim terms. The Court granted the motion to strike the inequitable conduct defense because defendant GoPro failed to plead the identity of the specific persons who allegedly committed the inequitable conduct, as well as the particular acts and specific intent of each. The Court denied without prejudice the Section 101/Alice motion stating that taking the plaintiff’s pleading as true, there was enough there; but, that on a more developed evidentiary record, a Section 101/Alice challenge may be viable on summary judgment. The takeaway here is that inequitable conduct defenses or counterclaims come with very high and specific evidentiary standards, and that Section 101/Alice challenges may be temporarily averted by very detailed and specific pleadings that must be taken as true at the motion to dismiss/motion for judgment on the pleadings stage.

2. In a recent opinion from the Ninth Circuit Court of Appeals in a copyright infringement case, the Ninth Circuit reversed a district court decision that limited use of infringing material could support a de minimis defense to copyright infringement. Rather, the Ninth Circuit clarified that the de minimis concept is one that pertains to the amount of the copyrighted work copied, and is germane to the question of substantial similarity. It is not applicable to the volume of infringing works distributed or used. “[T]he de minimis concept applies to the amount or substantiality of the copying – and not the extent of the defendant’s use of the infringing work.” Slip Op. at 21. Thus, a de minimis “defense” may be a misnomer, as it seems to be “code” for “lack of substantial similarity.” To put this in practical terms, a minimal use of a substantially similar work is copyright infringement. Extensive use of a non-substantially similar work is not copyright infringement.

3. In a very interesting opinion from the Federal Circuit Court of Appeals, the Court reversed a decision of the Patent Trial and Appeal Board (PTAB) that upheld a patent Examiner’s rejection of a design patent application for a lip implant design. The patent examiner found that the applied-for design of a lip implant was anticipated by an art tool called a stump. The PTAB upheld the rejection notwithstanding the argument that the art tool was a significantly different “article of manufacture” than a lip implant. The Federal Circuit, however, reversed finding that a design patent is limited in scope of the article of manufacture claimed in the patent, and that even if the designs were the same, if the articles of manufacture were different, anticipation would not stand. The Federal Circuit predicated its reversal on a determination that the prior art did not anticipate the claim when construed to be limited to its proper scope based on the indicated article of manufacture. There are a few takeaways here: (1) a design patent covers only the design as shown in the drawings for the article of manufacture set forth in the claim, and (2) it should be easier to procure theoretically narrower design patents (“theoretically” because most often, if a design patent is directed to e.g., a chair, the applicant is unlikely to argue it covers something else).