IP News

Taranto Is President Obama's Choice for Federal Circuit

President Obama has nominated appellate litigator Richard G. Taranto of the Washington, DC, firm Farr & Taranto to fill the final vacant seat on the Federal Circuit. Taranto graduated from Pomona College in 1977 and Yale Law School in 1981. After law school, he clerked for Judge Abraham D. Sofaer of the Southern District of New York, Judge Robert H. Bork of the Court of Appeals for the DC Circuit, and Supreme Court Justice Sandra Day O'Connor.

President Obama's previous nominee, Edward DuMont of the Washington, DC, law firm WilmerHale requested that his early 2010 nomination be withdrawn after the Senate Judiciary Committee failed to hold a hearing on it in more than 18 months.

On Nov. 8, 2011, the Senate confirmed Judge Evan Wallach of the U.S. Court of International Trade to fill a prior opening on the Federal Circuit bench. Judge Wallach graduated from the University of Arizona in 1973 and received his J.D. from UC-Berkeley in 1976. Judge Wallach is a Vietnam veteran who has served in the U.S. Army's Judge Advocate General's Corps.

Nintendo Beats Infringement Case in ITC

Nintendo scored a preliminary win in the International Trade Commission (“ITC”) against Motiva, LLC (“Motiva”). In In the Matter of Certain Video Game Systems and Controllers, Inv. Nos. 337-TA-743, administrative law judge Robert K. Rogers, Jr. held that there was no domestic industry to support Motiva's asserted patents, which allegedly covered wireless video game controllers. While Judge Rogers held that Motiva's patents are valid, Nintendo escaped an infringement ruling.

Motiva's complaint was originally filed in the ITC in October 2010, and the ITC opened a ' 337 investigation in November 2010. Judge Rogers found that Motiva's only domestic activity in the three years leading up to the ITC complaint concerned district court litigation against Nintendo as well as some patent prosecution activities. Per Judge Rogers' initial determination, these activities do not show that a domestic industry existed. The initial determination is still reviewable.

U.S. Marshals Ordered to Seize Righthaven's Assets

Litigious copyright plaintiff Righthaven LLC has had its personal property and assets seized to satisfy a $63,000 judgment against it from a copyright suit that was dismissed. The defendant in that case (Righthaven LLC v. Hoehn, Case No. 11-0050, D.I. 59 (D. Nev. Nov. 1, 2011)), Wayne Holden, won $63,000 in fees and costs after U.S. District Judge Philip Pro granted his motion to dismiss in June 2011. Righthaven has since failed to satisfy that judgment.

Coca-Cola Wins Copyright Infringement Appeal at Eleventh Circuit

On Nov. 3, 2011, Coca-Cola won an affirmance at the Eleventh Circuit of a Florida District Court's order granting its summary judgment of non-infringement of plaintiff Rafael Vergara Hermosilla's copyright in a “Celebration Mix” that was used as part of the promotional campaign for the 2010 FIFA World Cup Soccer tournament. Rafael Vergara Hermosilla v. The Coca-Cola Company, CA. No. 11-11317 (11th Cir.) (per curiam). The Eleventh Circuit found that Vergara's rights to the Spanish adaptation of the song had been transferred to Universal for one dollar in exchange for credit for his contributions to the work. Universal later properly assigned the copyright to Coca-Cola.

Federal Circuit Reopens Computer Graphics Case Citing Bilski

On Nov. 4, 2011, the Federal Circuit issued its opinion in Fuzzysharp Technologies Inc. v. 3DLABS, Inc., LTD., Case No. 2010-1160 (per curiam), holding that the Supreme Court's decision in Bilski v. Kappos, 130 S. Ct. 3218 (2010) on what constituted patentable subject matter caused “the basis for the district court's decision” to be “no longer sound.” Slip Op. at 9. The asserted claims are directed toward rendering 3-D computer graphics, which the defendants argued did not satisfy the “machine or transformation” test for patentable subject matter. The Federal Circuit held that in light of Bilski, “failure to comply with the machine-or-transformation test no longer ensures that the subject matter of the claim will be deemed unpatentable.” Id. at 6. The Federal Circuit vacated the district court's summary judgment order, and remanded the proceedings with an instruction that the district court also consider claim construction issues in light of the new precedent.

UK High Court Approves Gene Sequence Patent

In Human Genome Sciences, Inc. v. Eli Lilly and Company, (2011) UKSC 51, the UK Supreme Court held that Human Genome Sciences' patent covering Neutrokine-alpha, a particular sequence of the human genome, is valid. An appellate court had found the patent invalid for lack of industrial application, but the Supreme Court reversed, holding that the patent's disclosure of the gene and its known therapeutic functions was enough to satisfy the industrial application requirement. The UK high court also looked to recent U.S. appellate decisions including Fisher v. Lalgudi, 421 F.3d 1365 (2005), noting that “the analyses in the U.S. cases deserve great respect.” However, when interpreting the British requirement of industrial application, the court determined that the gene sequence patent was valid.

Jeffrey S. Ginsberg is a partner and Joseph Mercadante is an associate in the New York office of Kenyon & Kenyon LLP.

Taranto Is President Obama's Choice for Federal Circuit

President Obama has nominated appellate litigator Richard G. Taranto of the Washington, DC, firm Farr & Taranto to fill the final vacant seat on the Federal Circuit. Taranto graduated from Pomona College in 1977 and Yale Law School in 1981. After law school, he clerked for Judge Abraham D. Sofaer of the Southern District of New York, Judge Robert H. Bork of the Court of Appeals for the DC Circuit, and Supreme Court Justice Sandra Day O'Connor.

President Obama's previous nominee, Edward DuMont of the Washington, DC, law firm WilmerHale requested that his early 2010 nomination be withdrawn after the Senate Judiciary Committee failed to hold a hearing on it in more than 18 months.

On Nov. 8, 2011, the Senate confirmed Judge Evan Wallach of the U.S. Court of International Trade to fill a prior opening on the Federal Circuit bench. Judge Wallach graduated from the University of Arizona in 1973 and received his J.D. from UC-Berkeley in 1976. Judge Wallach is a Vietnam veteran who has served in the U.S. Army's Judge Advocate General's Corps.

Nintendo Beats Infringement Case in ITC

Nintendo scored a preliminary win in the International Trade Commission (“ITC”) against Motiva, LLC (“Motiva”). In In the Matter of Certain Video Game Systems and Controllers, Inv. Nos. 337-TA-743, administrative law judge Robert K. Rogers, Jr. held that there was no domestic industry to support Motiva's asserted patents, which allegedly covered wireless video game controllers. While Judge Rogers held that Motiva's patents are valid, Nintendo escaped an infringement ruling.

Motiva's complaint was originally filed in the ITC in October 2010, and the ITC opened a ' 337 investigation in November 2010. Judge Rogers found that Motiva's only domestic activity in the three years leading up to the ITC complaint concerned district court litigation against Nintendo as well as some patent prosecution activities. Per Judge Rogers' initial determination, these activities do not show that a domestic industry existed. The initial determination is still reviewable.

U.S. Marshals Ordered to Seize Righthaven's Assets

Litigious copyright plaintiff Righthaven LLC has had its personal property and assets seized to satisfy a $63,000 judgment against it from a copyright suit that was dismissed. The defendant in that case (Righthaven LLC v. Hoehn, Case No. 11-0050, D.I. 59 (D. Nev. Nov. 1, 2011)), Wayne Holden, won $63,000 in fees and costs after U.S. District Judge Philip Pro granted his motion to dismiss in June 2011. Righthaven has since failed to satisfy that judgment.

Coca-Cola Wins Copyright Infringement Appeal at Eleventh Circuit

On Nov. 3, 2011, Coca-Cola won an affirmance at the Eleventh Circuit of a Florida District Court's order granting its summary judgment of non-infringement of plaintiff Rafael Vergara Hermosilla's copyright in a “Celebration Mix” that was used as part of the promotional campaign for the 2010 FIFA World Cup Soccer tournament. Rafael Vergara Hermosilla v. The Coca-Cola Company, CA. No. 11-11317 (11th Cir.) (per curiam). The Eleventh Circuit found that Vergara's rights to the Spanish adaptation of the song had been transferred to Universal for one dollar in exchange for credit for his contributions to the work. Universal later properly assigned the copyright to Coca-Cola.

Federal Circuit Reopens Computer Graphics Case Citing Bilski

On Nov. 4, 2011, the Federal Circuit issued its opinion in Fuzzysharp Technologies Inc. v. 3DLABS, Inc. , LTD., Case No. 2010-1160 (per curiam), holding that the Supreme Court's decision in Bilski v. Kappos , 130 S. Ct. 3218 (2010) on what constituted patentable subject matter caused “the basis for the district court's decision” to be “no longer sound.” Slip Op. at 9. The asserted claims are directed toward rendering 3-D computer graphics, which the defendants argued did not satisfy the “machine or transformation” test for patentable subject matter. The Federal Circuit held that in light of Bilski, “failure to comply with the machine-or-transformation test no longer ensures that the subject matter of the claim will be deemed unpatentable.” Id. at 6. The Federal Circuit vacated the district court's summary judgment order, and remanded the proceedings with an instruction that the district court also consider claim construction issues in light of the new precedent.

UK High Court Approves Gene Sequence Patent

In Human Genome Sciences, Inc. v. Eli Lilly and Company, (2011) UKSC 51, the UK Supreme Court held that Human Genome Sciences' patent covering Neutrokine-alpha, a particular sequence of the human genome, is valid. An appellate court had found the patent invalid for lack of industrial application, but the Supreme Court reversed, holding that the patent's disclosure of the gene and its known therapeutic functions was enough to satisfy the industrial application requirement. The UK high court also looked to recent U.S. appellate decisions including Fisher v. Lalgudi , 421 F.3d 1365 (2005), noting that “the analyses in the U.S. cases deserve great respect.” However, when interpreting the British requirement of industrial application, the court determined that the gene sequence patent was valid.

Jeffrey S. Ginsberg is a partner and Joseph Mercadante is an associate in the New York office of Kenyon & Kenyon LLP.