IP Litigation Update

A copy of IP Litigation Update can be found HERE.

 

IP Litigation Update

 

On behalf of FisherBroyles’ Intellectual Property litigation partners, I introduce our new IP Litigation Update. We plan to release Updates several times each year containing substantive legal developments we hope you will find beneficial to your business. You may learn more about our IP Litigation group here:  https://fisherbroyles.com/areas-of-practice/intellectual- property-litigation.  If you have questions, please contact your relationship partner or me.

Thank you. Alastair Warr, Chair, Intellectual Property Litigation.

 

The Give and Take of Patents: Strategies for Success in the Federal Circuit

 

Patents are a negotiation. In exchange for teaching the public how to make an invention, the U.S. government grants inventors a limited monopoly. This negotiation is captured in the intrinsic record. The “written description,” also called the “specification,” is where the inventor teaches the public how to make the invention. The “claims” come at the end of the spec, defining the boundaries of the limited monopoly. The “file history,” or the “file wrapper,” is the back-and-forth negotiation between the inventor and the government.

In 2022, FisherBroyles partners successfully reversed three district court decisions at the Federal Circuit by focusing on this give-and-take dynamic: Nature Simulation Systems Inc. v. Autodesk Inc., VDPP LLC v. VIZIO Inc., and Cooperative Entertainment Inc. v. Kollective. These cases highlight the importance of claim language, supported by the specification and the file history, in defining the scope and validity of a patent.

Claim Language: The Centerpiece of Patent Law 

As Judge Giles Rich famously said, “The name of the game is the claim.” Clear, precise claim language is the cornerstone of any successful patent strategy. In all three cases, we prioritized the claim language to clearly delineate the invention’s scope, ensuring that our client’s position prevailed.

For example, in VDPP v. VIZIO, we demonstrated that terms like “processor” and “storage” connoted structure to skilled artisans based on their common understanding and the context provided by the specification. The Federal Circuit agreed, emphasizing the importance of intrinsic evidence in resolving disputes over claim meaning.

File History: The Negotiation in Action

The file history—the dialogue between the inventor and the Patent Office—plays a crucial role in interpreting claims and addressing challenges. In Nature Simulation, we used the examiner’s amendments during prosecution to show how the claims evolved to resolve issues of indefiniteness. This bolstered the Federal Circuit’s deference to the patent.

Similarly, in Cooperative Entertainment, we highlighted how the file history and specification explained the technical innovations underpinning the claims. This evidence convinced the Court of Appeals that the claims recited an inventive concept, securing a victory under Section 101.

Lessons

These cases show that the claims are the star of the show. The supporting cast—the written description and the file history—must be aligned and, at times, can also be compelling. By embracing the give-and- take of patents, we can navigate challenges under Sections 101 and 112 and secure lasting protections for innovation.

Matthew Wawrzyn (Chicago)

[email protected]

D: +1.224.777.1787 M: +1.847.274.9844

 

No Blurred Lines in Second Circuit’s Treatment of Copyright Selection and Arrangement Claims

 

On November 1, 2024, in Structured Asset Sales, LLC v. Sheeran, 120 F.4th 1066, 2024 U.S. App. LEXIS 27752 (2d Cir. 2024), the Second Circuit affirmed the grant of summary judgment that Ed Sheeran’s 2014 sound recording Thinking Out Loud did not copy any protectable elements of Marvin Gaye’s 1973 musical composition Let’s Get It On. The decision is of interest both for the substance of the court’s holding and the contrast it presents to the approach taken by the Ninth Circuit court in Williams v. Gaye, 895 F.3d 1106 (9th Cir. 2018)—what has become known as the Blurred Lines case, referencing the title of the accused work in that action—which raised similar issues concerning claims of copyright infringement premised on “selection and arrangement” of unprotectable elements in a musical composition. In Sheeran, plaintiff Structured Asset Sales (SAS), which owned a fractional interest in the musical composition copyright, appealed the district court’s grant of summary judgment. First, SAS argued that the district court erred by excluding expert testimony about anything beyond the four corners of the sheet music representing the Let’s Get It On musical composition deposited with the U.S. Copyright Office in 1973 (the “deposit copy”). The asserted work was composed before the Copyright Act of 1975 and was governed by the Copyright Act of 1909, which limited protection only to elements explicitly expressed in the deposit copy. The Second Circuit found that the district court did not err in excluding expert testimony about inferred musical elements, such as an “implied bass line,” not notated in the deposit copy. This approach differed from the Ninth Circuit’s Blurred Lines case, where the court affirmed the district court’s admission of expert testimony about musical elements not written, but purportedly implied, in the deposited sheet music, stating that “interpretation of the deposit copy . . . was a question properly left for the jury to resolve.”

SAS also challenged the district court’s grant of summary judgment of non-infringement, finding no genuine dispute that Sheeran’s song did not copy any protectable elements of Let’s Get It On. SAS argued that the selection and arrangement of two musical elements that were unprotectable individually— Let’s Get It On’s chord progression and syncopated harmonic rhythm—were original enough to warrant copyright protection. The Second Circuit affirmed that the “selection-and-arrangement claim also fails because it risks granting a monopoly over a combination of two fundamental musical building blocks.” The court reasoned that the chord progression and harmonic rhythm—whose combination undisputedly is present in other musical works predating Let’s Get It On—were “too well-explored to meet the originality threshold that copyright law demands.”

The court also examined “whether the ‘total concept and overall feel’ of the two songs is substantially similar.” Reasoning, that “[o]nly substantial similarity—not any similarity—suffices, and that similarity depends on context[,]” the court found that “while a similar chord progression and harmonic rhythm may create a similar sound and feel, that is not enough to show substantial similarity” when the works are taken as a whole, in part because of the differences that exist between them. In Williams, the court rejected appellants’ challenge to the trial court’s instruction for failing to limit the test to protectable elements of the asserted work. Thus, while the Second Circuit and Ninth Circuit both use a “total concept and feel” test, the Sheeran and Williams courts reached disparate results on the selection and arrangement claims presented.

Lastly, the district court in Sheeran relied in part on “numerosity requirement” for selection and arrangement claims. The Second Circuit did not adopt a “numerosity” requirement for selection and arrangement claims. The court reasoned that “[a]lthough the number of elements in combination is an aspect of the distinctiveness of music, originality is not a concept that is easily reducible to a simple test like numerosity.” Here, too, the Second Circuit’s approach contrasts with that of the Ninth Circuit, which has stated: “We have extended copyright protection to a combination of unprotectable elements only if those elements are numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship.”

Tom Lundin (Atlanta)

[email protected]

+1.678.778.8857