Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.
1. In another Section 101 case, the Federal Circuit invalidated representative claims directed to a method for manufacturing driveline propeller shafts with liners that damp vibrations transmitting through the shaft assembly. The opinion is here. The opinion has sparked a significant amount of outrage, as well as a blistering dissent. In essence, the opinion analyzed representative claims 1 and 22, and based on the alleged lack of subject matter eligibility in those claims, the majority invalidated all of the asserted claims in the patent. The majority invalidated the claims based on the vibration damping being a natural law (Hooke’s Law), or a combination of natural laws (Hooke’s Law and other unspecified laws). Among other things, the dissent took issue with the majority’s inability to specify the precise natural law(s) that remove the invention from the realm of subject matter eligibility, as well as the majority’s apparent failure to apply Step 2 of the Alice/Mayo analysis to the representative claims. The bottom line is that the majority believed that the features that made the invention “inventive,” were not in the claims, and thus, the claims were invalidated. There are some juicy quotes from Judge Kimberly Moore at page 2 of the dissent in the Slip Opinion. The outrage here is that it appears that the majority invalidated a mechanical invention under Section 101. The takeaway is that it is important to understand the inventive aspects of a client’s invention, and then make sure those inventive aspects are somehow recited in the claims.
2. On the other hand, the Northern District of Illinois issued an opinion in which a litigant attempted to invalidated a patent directed to a tug toy for animals that emits a sound when it is pulled on both sides. The argument made by the moving party was that the claims were directed to a natural law of force, and simply limited the natural law to a particular environment. The Court denied the motion under Step 1 of the Alice/Mayo analysis, noting that “[t]he claims thus involve force, but are not directed to force itself.” In other words, while the invention may employ principles that a high school physics student might learn, the claims are not directed to claiming merely those principles of physics, but an article of manufacture that had other elements.
3. In a copyright case out of the Seventh Circuit, the Court of Appeals addressed the issue of whether a compilation registration entitles the registrant to an award of statutory damages for each work in the compilation, or whether it is entitled to only one statutory damages award per registration. The opinion is here. With works such as photographs, albums or CDs with multiple songs, etc., it is common for them to registered as compilations such that one copyright registration is said to cover all of the compiled items. When a litigant seeks statutory damages in copyright litigation under 17 U.S.C. 504(c), the question is how many statutory damages award may a litigant receive for a compilation registration where there are multiple “works” of the compilation that are infringed. The Seventh Circuit noted that the analysis should be flexible, not formal, and should focus on whether the individual works in the compilation have independent economic value standing on their own, or whether the value is in their being compiled together. The Court ultimately remanded the case because the factual record was not sufficiently developed or analyzed on the question of standalone economic value of a series of illustrations (registered under two copyrights) used in video advertising. The takeaway here is that registering copyrights in groups or compilations is efficient, but may result in limiting the number of statutory damages awards available relative to registering works individually or in smaller groups.
