May 2012

Copying the Look and Feel of Tetris Is Software Copyright Infringement

Xio Interactive did not dispute that it blatantly copied the look and feel of the Tetris video game, even if not its source code.  After Xio’s Mino game was posted on Apple’s iTunes store, Tetris Holding, LLC, sued Xio for copyright infringement and trade dress infringement.  The court granted summary judgment to Tetris on both claims, finding, with respect to the copyright infringement claim, that the look and feel of Tetris is copyrightable expression distinguishable from the ideas of the game.  Tetris Holding, LLC v. Xio Interactive, Inc., No. 09-6115 (D. N.J. May 30, 2012). Tetris identified 14 copyrightable elements of the game that Mino had admittedly copied, and that Tetris argued constituted protectable expression.  These elements included the number and configuration of playing pieces, the size of the playing field, the way pieces moved in the playing field, the behavior of the game when a horizontal line was filled, and the behavior of the game when over, just to name some. Xio’s copying did not arouse sympathy, to say the least.  Xio admitted that it had been founded for the purpose of making a game similar to Tetris for the iPhone, and that it had “downloaded Tetris’s iPhone application… Read More »Copying the Look and Feel of Tetris Is Software Copyright Infringement

Third Party Protected From Producing Source Code in Patent Case

Can a third party be compelled to produce source code in a patent infringement lawsuit?  Not when its concerns about the security of its source code are well-founded, and when the deposition of a knowledgeable engineer will suffice to answer questions about how the software works, according to a magistrate judge in California.  Realtime Data, LLC v. MetroPCS Texas, LLC, No. 12cv1048-BTM (MDD) (S.D. Cal. May 25, 2012). The plaintiff had sued Sprint Nextel Corporation and other defendants in the Eastern District of Texas, and then served a subpoena on Ortiva Wireless in the Southern District of California under Federal Rule of Civil Procedure 45.  In the underlying lawsuit, the plaintiff alleged that Sprint infringed its “patents by using certain data compression and data acceleration technology in their communication networks,” and that Sprint obtained certain technologies from Ortiva.  Therefore, the plaintiff contended that Ortiva possessed documents, including source code, relevant to the issue of infringement. Ortiva objected to the production of its source code on the grounds that it was a “highly confidential trade secret and one of the most valuable assets of Ortiva.”  Ortiva further argued that, to the extent the plaintiff required an explanation of its source code,… Read More »Third Party Protected From Producing Source Code in Patent Case

Expert Failing to Explain Source Code Analysis Is Precluded From Testifying

In a decision that will strike a chill into accused patent infringers everywhere, a defense expert has been precluded from testifying at trial about his analysis of source code that was purportedly central to the defendant’s non-infringement defense.  Fleming v. Escort Inc., No. 1:CV 09-105 (D. Id. May 23, 2012). The expert’s report identified lines of source code that allegedly differed from elements of asserted patent claims, but failed to explain how those lines of source code operated, much less how the source code differed from the patent claims.  Finding that the plaintiff, Fleming, would not have adequate opportunity to analyze the expert’s position, the court granted Fleming’s Daubert motion. The defendant, Escort, contended that its “devices lock out false signals by using a process different from that described in Fleming’s patents.”  However, the expert “never explained how the Escort products lock out false signals.”  Instead, the expert’s supplemental report incorporated interrogatory answers that simply “identified the lines of source code that perform the function of locking out false signals on Escort devices.”  Escort contended that identifying these lines of code was enough to explain how the source code performed the lock-out function. The court disagreed with Escort.  The expert… Read More »Expert Failing to Explain Source Code Analysis Is Precluded From Testifying

§ 102(b) On-Sale Bar Combined with § 103 Prior Art Invalidates Software Patent Claims as Obvious

Software claims directed to a client-server system were held invalid as obvious under 35 U.S.C. § 103(a) based on the combination of a reference that qualified as prior art by having been on sale under 35 U.S.C. § 102(b), and references that qualified as prior art under Section 103.  eBay Inc. v. PartsRiver, Inc., Nos. C 10-4947, C 11-1398, and C 11-1548 (N.D. Cal. May 21, 2012). Kelora, the plaintiff  and successor to PartsRiver, Inc., had asserted against the defendants independent claims 1 and 9, as well as claims 2-4 depending from claim 1, of U.S. Patent No. 6,275,821.  The ’821 patent had undergone a re-examination, in which claim 1 (and necessarily, therefore, claim 2) was amended to overcome prior art.  Claim 9 was added.  Asserted dependent claims 3 and 4 were not re-examined.  Before the re-examination, independent claim 1 and dependent claim 2 had been held invalid based on the on-sale bar of 35 U.S.C. § 102(b).  After the re-examination, the Federal Circuit ordered dismissal of the earlier judgment of invalidity. After construing certain claim terms, the court turned to the law governing the defendants’ motion for summary judgment of obviousness under 35 U.S.C. § 103(a), citing, of course,… Read More »§ 102(b) On-Sale Bar Combined with § 103 Prior Art Invalidates Software Patent Claims as Obvious

No Software Copyright Infringement Without Allegedly Copied Work

A California court has dismissed a plaintiff’s claim for copyright infringement because the plaintiff failed to allege that the defendant had actually copied the allegedly infringed software.  Operational Risk Management LLC v. Union Bank, N.A., No. C 12-0584 (N.D. Cal. May 15, 2012).  This may seem like an obvious conclusion.  Nonetheless, the facts of this case, and the plaintiff’s (unsuccessful) arguments, are interesting. The plaintiff, ORM, had licensed its risk-management software to the defendant, Union Bank.  The defendant subsequently gave notice that it intended to terminate the license.  The plaintiff then alleged that the defendant was attempting to create its own risk-management software using the plaintiff’s intellectual property, including the licensed software and related documentation.  According to the plaintiff, “any replacement software that [the defendant’s contractor] develops which uses ‘the proprietary structure, sequence and organization of the Software . . . without authorization would be a derivative work infringing [the plaintiff’s] copyrighted work.’”  The plaintiff further asserted that even if the defendant had not yet infringed its copyrighted work, any future software developed by the defendant’s contractor would infringe. The plaintiff’s allegations were insufficient to survive a motion to dismiss under Federal Rule of Civil Procedure 12(b)(6).  Pleading copyright infringement… Read More »No Software Copyright Infringement Without Allegedly Copied Work

A Lesson in Compliance With DMCA Takedown Notice Requirements

A defendant, seeking dismissal of the plaintiff’s complaint, was unable to rely on the safe harbor provisions of the Digital Millennium Copyright Act (DMCA), 17 U.S.C. § 512(c), on the ground that the plaintiff had failed to comply with the DMCA’s notice provisions where the complaint did not make clear whether the defendant had complied with its obligations, and where the defendant had made no attempt to explain its compliance.  Scott v. WorldStarHipHop Inc., No. 10 Civ. 9538 (S.D.N.Y. May 3, 2012). The plaintiff had sent the defendant a DMCA takedown notice concerning a video, posted on the defendant’s website, featuring the plaintiff in a classroom brawl.  The plaintiff had obtained an assignment of the copyright in the video from the person who recorded it, and on the next day registered the copyright and demanded that the defendant remove the video from its website. The court noted that the plaintiff “plausibly alleged” a claim for copyright infringement by alleging that he owned the video and that the defendant “maintained a copy of the video on its website without his authorization after” the plaintiff became the owner of the video.  Turning to the defendant’s affirmative defenses, the court first dismissed the… Read More »A Lesson in Compliance With DMCA Takedown Notice Requirements

E.D. Va. Asserts Personal Jurisdiction Over Foreign Web Site Providers

Courts sometimes assert personal jurisdiction over foreign defendants who did not specifically target the jurisdiction when establishing a website accessible from within it, and who may have conducted only a relatively miniscule amount of business in the jurisdiction.  In a recent example, a Virginia court held that it had personal jurisdiction over two European corporations and a Swiss citizen operating an adult entertainment website having 16 registered users in Virginia out of a total of 1.8 million.  Bright Imperial Ltd. v. RT Mediasolutions s.r.o., No. 1:11-cv-935 (E.D. Va. May 18, 2012). The plaintiff brought anti-cybersquatting, trademark infringement, and other federal causes of action, as well as state law claims, against the defendants.  After initially denying the defendants’ motion to dismiss for lack of personal jurisdiction, the court reconsidered the motion following jurisdictional discovery. Virginia’s long-arm statute was “intended to permit jurisdiction whenever the Constitution would do so.”  Therefore, the court turned to the “minimum contacts” analysis under which defendants who had “purposefully availed” themselves of a forum could be subject to personal jurisdiction.  For the Internet context, the Fourth Circuit has adopted the “sliding scale” test of Zippo Mfg. Co. v. Zippo Dot Com, Inc., 952 F.Supp. 1119 (W.D. Pa.… Read More »E.D. Va. Asserts Personal Jurisdiction Over Foreign Web Site Providers

Supreme Court to Federal Circuit: Reconsider the Patent-Eligibility of Ultramercial’s Patent Claims

Last fall, in Ultramercial, LLC v. Hulu, LLC, the Federal Circuit Court of Appeals surprised many people by upholding patent claims directed to a “method for distribution of products over the Internet via a facilitator.”  As already reported on the PatentlyO blog and elsewhere, the U.S. Supreme Court has now granted defendant Wild Tangent’s petition for certoriari, challenging the patent-eligibility of claims of Ultramercial’s U.S. Patent No. 7,346,545.  The cert. petition was filed before the Supreme Court’s decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc.; the Court has now vacated the Federal Circuit’s decision and remanded the case to the Federal Circuit with instructions to reconsider its earlier decision (holding that the claims recited patentable subject matter under 35 U.S.C. § 101) in light of Prometheus. Although at least one district court used Ultramercial to justify upholding the patentability of a claim, many people have felt that the Federal Circuit’s Ultramercial decision was an outlier.  This action by the Supreme Court certainly reinforces that view.  While the uncertainty surrounding software and business methods patents that has persisted since the Supreme Court’s decision in Bilski v. Kappos is far from over, the Federal Circuit’s decision on remand will be closely watched… Read More »Supreme Court to Federal Circuit: Reconsider the Patent-Eligibility of Ultramercial’s Patent Claims

Section 102 On-Sale Bar Invalidates Software Patent Claims

The Federal Circuit has upheld a jury verdict invalidating patent claims covering a software product that the plaintiff had demonstrated and sold prior to filing a patent application.  Leader Technologies, Inc. v. Facebook, Inc., No. 2011-1366 (May 8, 2012). The claimed invention was conceived in August 1999.  Development of software based on the invention began “immediately” thereafter, and completed sometime in (or maybe a little before) 2002. The moral to this story is to not wait over three years to file a patent application; only on December 11, 2002, did Leader file a provisional patent application.  Subsequently, on December 10, 2003, Leader filed a utility application that issued as U.S. Patent 7,139,761.  The patent claims were drawn to a “data management system” that “allows users on a network to communicate and collaborate on a large scale.” Around the time that the software product was completed, Leader began offering it for sale.  A white paper published in January 2002 offered licenses for sale, and represented that Leader was “already commercializing” the product.  The white paper also detailed the product’s functionality and advantages over prior systems.  One of the inventors, McKibben, gave a product demonstration to Boston Scientific in November 2002, and… Read More »Section 102 On-Sale Bar Invalidates Software Patent Claims

Narrow views of “Authorization,” “Loss,” and “Damages” Under the CFAA

As previously reported, in setting standards for civil rights of action under the Computer Fraud and Abuse  Act (CFAA), 18 U.S.C. § 1030, courts have taken varying approaches.  However, a number of recent cases have elected a narrower view of facts creating a cause of action under the CFAA, limiting plaintiffs’ ability to bring CFAA claims.  Two recent cases further suggest that the trend may be toward narrowing the scope of civil actions under the CFAA. In Ajuba International, L.L.C. v. Saharia, No. 11-12936 (E.D. Mich, May 14, 2012), the defendants argued that a CFAA claim based on accessing a “protected computer ‘without authorization’ or in a manner that ‘exceeds authorized access’” was negated by “complete, unrestricted access to [plaintiffs’] computer systems due to the nature of [one defendant’s] employment.”  The plaintiffs argued that the defendant “lost any authorization he had to access Plaintiffs’ computers, or, at least, exceeded his authorization when he accessed the computers in violation of confidentiality and use limitations.”  After noting the split in authority concerning the scope of these provisions, the Ajuba court noted that other courts in the Sixth Circuit had taken a narrower view.  Further, the court was reluctant to embrace “an interpretation… Read More »Narrow views of “Authorization,” “Loss,” and “Damages” Under the CFAA