Weekly IP Takeaways

In IP Blog

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

1. This takeaway follows up on a recent Takeaway (Takeaway No. 1) addressing Sinclair v. Ziff-Davis regarding whether publicly posting a photograph on Instagram triggers a sublicense provision wherein content posted to a public Instagram account results in a non-exclusive, transferable license being granted to Instagram that allows other Instagram users to access the content and direct a web browser to retrieve the content for incorporation into, for example, an article the web, via a sublicense from Instagram. Several weeks ago, another judge in the Southern District of New York considered the same issue (a photograph publicly posted on Instagram and then re-used via Instagram’s embedded API), but ruled differently than Judge Wood in the Sinclair case, as shown here. The distinction appears to be whether the sublicense was actually granted or implied; whereas, in the Sinclair case, a sublicense appears to have been assumed. Here, the Court could not grant a motion to dismiss because it had to consider the allegations in the complaint in a light most favorable to the plaintiff-photographer, and therefore, could not assume a sublicense had actually been granted or implied by Instagram to Newsweek. This newer ruling appears to limit the impact of Sinclair. Also, Instagram appears to have clarified or modified its rules on this issue, as well.

2. In an interesting decision on a motion from the Federal Circuit, the Court denied a request for attorneys’ fees under 35 U.S.C. 285 in connection with a failed inter partes review (IPR) asserting that it is not statutorily authorized to do so. The Federal Circuit noted that the statutory authorization permits fee awards for fees “incurred during, in close relation to, or as a direct result of, judicial proceedings.” The takeaway here is – do not expect a court to award fees in connection with an IPR.

3. The Federal Circuit affirmed the dismissal under Fed.R.Civ.P 12(b)(6) of infringement claims pursuant to four (4) patents that were determined to claim ineligible subject matter under Section 101/Alice. The opinion is here. Justice Bryson, sitting by designation in the District of Delaware, found the four (4) patents, which were directed to “providing lists of location-specific information sources to users based on their location,” to be ineligible for patenting. Justice Bryson, and the Federal Circuit, said the patents were ineligible because they were directed to an abstract idea, and did not impart any improvement to the functioning of a computer. Only one of the four patents, which was illustrative of the four, was subject of the appeal. Notably, the entire patent, containing 44 claims, was found to be invalid based on an analysis of claim 1 only. The takeaway here is that Alice is alive and well, and even patents with filing dates in the late 1990s are generally not going to be found eligible unless they improve the functioning of a computer.