Today the Supreme Court decided Reed Elsevier, Inc. v. Muchnick, a case regarding whether the registration requirement of 17 U.S.C. § 411(a) is jurisdictional or a claim processing rule. The Court held the requirement to be nonjurisdictional.

The case involves a class action for copyright infringement by freelance journalists based on republication of works in electronic databases that originally appeared in, for example, newspapers.  Some members of the class had copyright registrations, some did not.  Nevertheless, the district court certified the class and approved the proposed settlement agreement.  The Second Circuit sua sponte raised the issue of jurisdiction, and eventually held the district court lacked jurisdiction to enter an order regarding the unregistered copyrights by virtue of § 411(a).

The Supreme Court disagreed, and held the registration requirement of § 411(a) did not prevent a court from entering an order affecting unregistered copyrights.  Specifically, the Court held there was nothing in the statute that indicated Congress intended the requirement to be jurisdictional.  Notably, the Court observed § 411(a) did not "clearly state[]" that its requirement was jurisdictional, and also explicitly permits claims involving unregistered works in certain circumstances.  This was inconsistent with a jurisdictional requirement, and therefore the district court had jurisdiction to approve the settlement agreement even though it adjudicated claims for unregistered copyrights.

The Court left the question as to whether district courts should sua sponte dismiss copyright cases where the Plaintiff is asserting an unregistered copyright for another day.

More detail of Reed Elsevier, Inc. v. Muchnick after the jump.

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According to the Federal Circuit, the answer to this question appears to be "yes."  The court reversed a district court's dismissal of a declaratory judgment action against a patent holding company (or non-practicing entity (NPE), sometimes pejoratively referred to as a patent troll).  The DJ action was predicated on three letters, the first from the NPE to the DJ plaintiff, the second in reply, and the third from the NPE in reply to the second.  The court held there was a sufficient "implied assertion of its rights" under the patent to support DJ jurisdiction.

Of particular note are some statements the court made regarding different rules when NPEs contact potential licensees for their patents.  These include:

[T]he receipt of such correspondence from a non-competitor patent holding company . . . may invoke a different reaction than would a meet-and-discuss inquiry by a competitor, presumably with intellectual property of its own to place on the bargaining table. Under the totality of the circumstances, therefore, it was not unreasonable for [the DJ plaintiff] to interpret [the NPE's] letters as implicitly asserting its rights under the patent.

. . .

[The NPE] is solely a licensing entity, and without enforcement it receives no benefits from its patents. This adds significance to the fact that [the NPE] refused [the DJ plaintiff's] request for a mutual standstill . . . .

Even the court observed it was changing the rules, noting "our decision in this case undoubtedly marks a shift from past declaratory judgment cases."  Based on this decision, it appears very difficult for a NPE to even contact a potential licensee without exposing itself to the potential for a declaratory judgment action.

More detail of Hewlett-Packard Co. v. Acceleron LLC after the jump.

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In a recent decision, the Seventh Circuit affirmed a district court's grant of summary judgment that a plaintiff could not prevail in her copyright claim.  The court first addressed whether the plaintiff complied with the necessary procedural requirements to have her claim heard.  The plaintiff had filed for a copyright registration and had been rejected (thereby satisfying part of the requirements of § 411).  However, when filing suit, she did not notify the Copyright Office she was doing so, and thus did not meet this second requirement applicable to those who bring suit after being refused registration.

This fact notwithstanding, the Seventh Circuit concluded it could hear the case, given the plaintiff had her registration refused.  The court characterized the notification requirement as a case processing rule, and observed the copyright office had granted a registration in the interim, and thus the purpose of the notification requirement (to permit the Copyright Office to address the issue of registrability) was satisfied.

On the merits, the court noted the plaintiff's claim failed because she did not allege copying of any of the actual materials protected by copyright, but rather her ideas for better educating students.  The court affirmed the long standing rule that copyright protection does not extend to ideas, but rather the original expression of an idea.

More detail of Brooks-Ngwenya v. Indianapolis Pub. Sch. after the jump.

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In a recent decision, the Ninth Circuit reversed a district court's grant of a motion to stay federal trademark claims against Indian tribal defendants pending a determination of jurisdiction by a tribal court.  The trademark claims were for alleged passing off of cigarettes on the Internet, on the reservation of another tribe, and elsewhere.  The district court ruled that there was at least a colorable claim to tribal jurisdiction under Supreme Court precedent and granted a stay of federal proceedings pending a determination of jurisdiction by the tribal court.

The Ninth Circuit reversed, holding there was not a colorable claim of jurisdiction in tribal court insofar as it implicated the plaintiff's federal trademark claim against the tribal defendants and its principals, members of the Yakama Tribe.  Accordingly, allowing exhaustion of tribal remedies would serve no purpose other than delay.  As a result, the court reversed the district court's decision and remanded for the case to proceed.

More on Philip Morris USA, Inc. v. King Mountain Tobacco Co. after the jump.

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In a decision Tuesday, the Federal Circuit reversed grants of summary judgment in favor of both parties.  The defendant was granted summary judgment of noninfringement, and the plaintiff (and counterclaim defendant) was granted summary judgment on the grounds of no marking under 35 U.S.C. § 287.  Both parties appealed.

The Federal Circuit determined there was a genuine issue of fact regarding infringement under the doctrine of equivalents of the plaintiff's patent.  Only one element of the claim was disputed, and the plaintiff's expert provided a detailed analysis under the function-way-result test.  In response, the defendant's expert testified there were two additional functions of the element in the accused device.  In reply, the plaintiff's expert referred to his previous analysis without explicitly rebutting the defendant's expert's claims.  The Federal Circuit stated the plaintiff's "decision to refer to the evidence already before the court should not be fatal," and held there was sufficient evidence to generate a question of fact on the issue of infringement.  Accordingly, the court reversed the district court's grant of summary judgment on this issue.

Regarding the marking issue, the Federal Circuit noted the defendant only asserted infringement of method claims in its counterclaim.  As such, the Federal Circuit held it was bound by its decision in Hanson v. Alpine Valley Ski Area, Inc., which held that marking is not required when only method claims are asserted in a case.  As such, any failure to mark was irrelevant to the defendant's counterclaims of infringement, and the district court's summary judgment on this issue was reversed as well.

More detail of Crown Packaging Tech., Inc. v. Rexam Beverage Can Co. after the jump.

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In a recent decision, the Federal Circuit reversed a district court's dismissal for lack of declaratory judgment jurisdiction over a defendant's counterclaims for non-infringement, invalidity, and unenforceability of a patent.  The plaintiff brought suit against the defendant for infringement in 2003, and on the eve of trial on the issues of invalidity and unenforceability, offered a covenant not to sue for past infringement and filed a motion to dismiss.  The district court granted the motion, holding there was no longer a case or controversy.  The defendant appealed.

The Federal Circuit reversed, noting that the covenant not to sue did not cover future infringement, and the defendant had a large amount of stock of the accused products ready to sell pending the outcome of the case.  The patentee asserted that if the defendant resumed sales, it would once again bring suit for infringement.  Under these facts, the Federal Circuit agreed with the defendant and held that the plaintiff, by retaining its right to sue for future infringement, had preserved the controversy at a level of sufficient immediacy and reality to allow for declaratory judgment jurisdiction.

More detail of Revolution Eyewear, Inc. v. Aspex Eyewear, Inc. after the jump.

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In a recent decision, the Federal Circuit held the Court of Federal Claims correctly dismissed a copyright infringement suit against the United States for lack of subject matter jurisdiction.  The plaintiff is a federal prisoner who created various coyprightable works while in federal prison.  He brought suit alleging copyright infringement after his works were distributed by Federal Prison Industries.

The Court of Federal Claims dismissed the case for lack of subject matter jurisdiciton, holding the government had not waived its sovereign immunity from suit in this context.  The Federal Circuit affirmed, holding that because the calendars were created using government-furnished computers while the prisoner was in the "service" of the United States, sovereign immunity had not been waived under 28 U.S.C. § 1498(b).  As a result, the Court of Federal Claims correctly held it lacked jurisdiction to hear the case.

More detail of Walton v. United States after the jump.

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In a decision Thursday, the Federal Circuit affirmed a district court's denial of a preliminary injunction, and held it did not have jurisdiction over the remainder of the appeal because there was no final judgment.  It was undisputed there was no infringement under the district court's claim construction of the single element at issue.  After denying the requested preliminary injunction and granting the defendant's motion for summary judgment of noninfringement, the district court entered an order that stated, among other things, that the "action" was "dismissed with prejudice," and that it was "final and appealable."  However, the defendant had asserted counterclaims that were not mentioned in any of the briefing.  

The Federal Circuit agreed with the district court's claim construction, and affirmed the denial of the preliminary injunction.  However, the court held it did not have jurisdiction over the remainder of the appeal, because the defendant's counterclaims were still pending, making the judgment nonfinal.  The court did have some advice for the plaintiff and the district court on remand in two footnotes, stating:

While we do not address the district court's grant of summary judgment of noninfringement, we note that the claim construction we affirm herein was the basis for that decision, there being no dispute over infringement of claim 26 under that claim construction.

Because we exercise jurisdiction only over the matters discussed above, we do not address the district court's sua sponte dismissal of [the plaintiff's] remaining claims in this appeal. Nevertheless, we suggest that the district court may wish to reconsider that determination in light of the Sixth Circuit's prohibition against sua sponte dismissals except in limited circumstances.

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In a decision last week, the Federal Circuit affirmed a district court's decision dismissing a case for lack of subject matter jurisdiction.  The plaintiff brought suit when it believed the patent holder had fraudulently concealed a second licensee of the same patents.  The plaintiff was a licensee of the defendant patent holder and therefore could not seek a declaration of noninfringement, so instead brought suit alleging the patent holder had violated the "Patent Exhaustion/First Sale doctrine" by collecting royalties on the same product twice.  The district court held patent exhaustion was not an independent cause of action but instead a defense to an infringement claim, and dismissed the case for lack of subject matter jurisdiction so any state law claims could be pursued in state court.

The Federal Circuit affirmed, observing the case met neither of the criteria for § 1338(a) jurisdiction under the Supreme Court's decision in Christianson v. Colt Industries Operating Corp.  The complaint neither alleged claims created by federal patent law, nor was the plaintiff's right to relief dependent upon resolution of a substantial question of federal patent law.  Accordingly, the court affirmed the district court's dismissal.

More detail of ExcelStor Tech., Inc. v. Papst Licensing GmbH & Co. after the jump.

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In a recent decision, the Eleventh Circuit vacated a district court's grant of summary judgment in a copyright infringement declaratory judgment action.  The court determined that the district court was without subject matter jurisdiction to entertain the alleged infringer's declaratory judgment action.  This was because the district court would have lacked jurisdiction to hear the "reverse" claim, namely the copyright owner's claim for copyright infringement, because the copyright holder had not applied for a copyright registration on the computer programs at issue.  Because there would be no jurisdiction over the infringement claim if brought, there was likewise no jurisdiction over the declaratory judgment claim seeking a declaration of no infringement.

More concerning Stuart Weitzman, LLC v. Microcomputer Res., Inc. after the jump.

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