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Aug. Newsletter

August 2012
Colorado Bar Association
Intellectual Property Section
In this issue...
Upcoming IP Section Events—Register Now!

Social Event—Take the IP Section Out to the Ballgame!

Date: Wednesday, Sept. 12
Time: Dinner and Drinks—5:30 p.m., Game—6:40 p.m.
Location: Platte River Picnic Area, Coors Field

No speakers. No talking shop. Just baseball, beer, and fun.
Come watch the Colorado Rockies defeat the San Francisco Giants. Game time is 6:40 p.m., and we will have dinner and beverages at the Platte River Picnic Area prior to the game starting at 5:30 p.m. Seats are limited so sign up today! Tickets for the game and for dinner are $35 each, free to students. To sign up, please email melissan@cobar.org.

Save the Date—USPTO Fall Roadshow

Date and Time: Monday, Sept. 17; 10:30 a.m.–10 p.m.
Location: B2 Conference Center, Denver Public Library

The USPTO is initiating a series of public sessions to share information and gather public comment regarding the implementation of the America Invents Act, as it will affect individual inventors, businesses and entrepreneurs. The program is free and open to the public, with no advanced registration required (available seating is first–come-first-serve). For more information, visit the AIA Roadshow page or call 720-865-1363.
The preliminary agenda can be found here.

October Federal Circuit Visit

Date and Time:Oct. 2–4, Various times
Location: Various Locations

During the first week of October, the Court of Appeals for the Federal Circuit will be in Colorado. This is an exciting and unique opportunity to attend oral arguments and a variety of other events around the Court’s first visit to Colorado to hear cases. The Federal Circuit will have oral arguments at the Arraj and Rogers Courthouses, the University of Colorado, and the University of Denver. The judges will also attend public events, including a formal dinner at the Colorado History Museum that is open to members of the IP community, and other educational and social events for local attorneys and judges. For more details on the visit, please visit the blog site.

Winter IP Boot Camp

Date and Time: Thursday, Jan. 17—All Day
Location: CBA Offices, 1900 Grant Street, Denver CO 80203

This day provides foundational basics in the practice of intellectual property law to newly minted attorneys or those wishing to transition to intellectual property. There will be an exciting line-up of expert speakers, including Magistrate Judge Mix on how to interact with the court, and Judge Carparelli on professionalism in the workplace. An in-house panel will discuss how to interact with clients, and speakers will present on the current state of the job market, and the nuts and bolts of practicing intellectual property law.

Past IP Section Events

A Conversation about IP Legislation with Aaron Cooper and Bernard Chao

Aaron Cooper, Chief Counsel for Intellectual Property and Antitrust to Senator Leahy on the Senate Judiciary Committee, and Bernard Chao, Professor of Intellectual Property at Sturm College of Law, gave a discussion on recent IP Legislation. As lead intellectual property counsel, Mr. Cooper had primary responsibility for many important IP-related bills enacted over the past two Congresses, including the Leahy-Smith America Invents Act. Mr. Cooper shared his behind-the-scenes view into the shaping and reshaping (and reshaping again) of IP legislation. Mr. Cooper discussed the goals, objectives, and challenges of those crafting the America Invents Act. He also discussed damages and other items omitted from the Act despite the pleas of industries such as the Silicon Valley high techs. Professor Chao provided additional insights about the America Invents Act.

Other News

Exciting Developments with Denver’s USPTO Satellite Office

A couple months ago, the USPTO announced plans to open a regional satellite office in Denver to function as a hub of innovation and creativity. In addition to raising the profile of the Colorado IP bar, the Denver patent office is expected to bring hundreds of jobs, hundreds of millions of dollars in revenue, and other exciting benefits to the state.

Since the announcement, plans for the Denver patent office continue to move full steam ahead with the announcement of several job postings and the site selection. The new office plans to occupy around 25,000 sq. ft. of the newly renovated Byron G. Rogers Federal Building in downtown Denver. The site will be designed as a place for small businesses and entrepreneurs to learn how to navigate the patent process, meet with examiners, and access USPTO’s comprehensive search databases. The regional office will bring hundreds of jobs, including a regional director, more than ten patent appeals judges for the new Patent Trial and Appeals Board, more than 100 examiners, plus support staff. Many of these jobs are already being posted. Watch your emails for updates.

IP Section Website

Don’t forget to check out the CBA IP Section website. Please refer to it often for updates on news and events.
The CBA has posted online member directories for each practice section. Click here to see our directory.
Our contact at the CBA is Melissa Nicoletti, Director of Sections and Committees. She can be reached at 303-824-5321, or melissan@cobar.org.

IP Section Blog

The IP Section blog is at ipsectioncolorado.org. You can find news from and links to other Colorado and national IP resources, connect with other IP Section members, provide input to Section Officers, and get up-to-date information about IP Section activities. Be sure to register to get the full benefit of the blog.

Classified Advertising

Patent Searches by Noted Expert

Recommended by Jim Poole (CBA member) and other patent attorneys at InvestigatePatents.com. Please contact Stan Schwartz at Schwartz@InvestigatePatents.com or 301-806-0600 about your search needs and/or for an estimate.

Furniture Row Legal Position

Privately held, financially strong Denver-based group of companies with diverse interests including retail, manufacturing, real estate, and transportation, seeks an organized, personable lawyer with exceptional communication, writing, and legal skills for a new Associate General Counsel position in a nine person fast-paced legal department. The successful applicant will have ten to twenty years of experience in patent and trademark prosecution, copyrights, and licensing, and a willingness to assist in other legal areas as needed. Salary commensurate with experience. Resumes may be sent by email only to the attention of General Counsel, Furniture Row Legal Department at janine.wood@furniturerow.com.

Subject to editorial review, classified advertisements are printed by the IP Section free of charge and will run for three months, unless we receive a request to drop or continue running the ad. Submit or resubmit your ad by e-mailing the proposed text to Danny Sherwinter at dsherwinter@mfblaw.com.

Taped IP Section Luncheon Meetings

CBA-CLE tapes the IP Section Luncheons for later access and CLE credit. The following IP Section meetings are now available online:

After All the Waiting, What Exactly Did Bilski Do?… and Other Patent—Segment 1 of Half-Day, Half-Year IP Fall Update 2010

Do “Nooks and Crannies” Matter? Trade Secret Issues in the News—Segment 3 of Half-Day, Half-Year IP Fall Update 2010

Emerging Trends and Strategies in Reexamination

Call for Suggestions, Ideas, and Articles

Luncheon Program Topics and Speakers

The IP Section Officers are also soliciting your suggestions and ideas for topics and speakers for our Luncheon programs for 2013. Please forward any comments you may have to Danny Sherwinter or our Programs Committee Chairperson, John Kennedy.

Articles for The Colorado Lawyer

The IP Section is in the process of compiling and evaluating articles to publish in The Colorado Lawyer this coming year. If you have an interest in submitting an IP-related article for TCL, please contact Danny Sherwinter. We encourage individuals who may be on their own but nonetheless would like to team up with a senior or junior practitioner to contact us so we can help facilitate that relationship.

IP Section Newsletter

Subject to editorial discretion and review, the IP Section Newsletter is open to the submission of short articles and columns on IP topics of interest. If you are interested in contributing, please contact Danny Sherwinter.

Recently Filed U.S.D.C. Colorado Cases
Caption Type Date Filed Case Number Judge Filing Attorneys
Malibu Media, LLC v. Xu Copyright 7/18/12 1:2012-cv-01866 Judge Krieger, referred to Magistrate Judge Hegarty Jason Aaron Kotzker Kotzker Law Group
Malibu Media, LLC v. Allison Copyright 7/18/12 1:2012-cv-01867 Judge Krieger, referred to Magistrate Judge Hegarty Jason Aaron Kotzker Kotzker Law Group
Malibu Media, LLC v. Ramsey Copyright 7/18/12 1:2012-cv-01868 Judge Martinez, referred to Magistrate Judge Hegarty Jason Aaron Kotzker Kotzker Law Group
Malibu Media, LLC v. Tipton Copyright 7/18/12 1:2012-cv-01869 Judge Brimmer, referred to Magistrate Judge Hegarty Jason Aaron Kotzker, Kotzker Law Group
Malibu Media, LLC v. Kahrs Copyright 7/18/12 1:2012-cv-01870 Judge Krieger, referred to Magistrate Judge Hegarty Jason Aaron Kotzker, Kotzker Law Group
Malibu Media, LLC v. Domindo Copyright 7/18/12 1:2012-cv-01871 Judge Blackburn, referred to Magistrate Judge Hegarty Jason Aaron Kotzker, Kotzker Law Group
Malibu Media, LLC v. Peng Copyright 7/18/12 1:2012-cv-01872 Judge Jackson, referred to Magistrate Judge Hegarty Jason Aaron Kotzker Kotzker Law Group
Malibu Media, LLC v. Maness Copyright 7/18/12 1:2012-cv-01873 Judge Jackson, referred to Magistrate Judge Hegarty Jason Aaron Kotzker Kotzker Law Group
Malibu Media, LLC v. Nelson Copyright 7/18/12 1:2012-cv-01875 Judge Blackburn, referred to Magistrate Judge Hegarty Jason Aaron Kotzker Kotzker Law Group
Malibu Media, LLC v. Geary Copyright 7/118/12 1:2012-cv-01876 Judge Blackburn, referred to Magistrate Judge Hegarty Jason Aaron Kotzker Kotzker Law Group
Malibu Media v. John Does 1–42 Copyright 7/27/12 1:2012-cv-01953 Chief Judge Daniel, referred to Magistrate Judge Hegarty Jason Aaron Kotzker Kotzker Law Group
Third Degree Films, Inc. v. John Does 1–7 Copyright 7/27/12 1:2012-cv-01954 Judge Arguello, referred to Magistrate Judge Hegarty Jason Aaron Kotzker Kotzker Law Group
Patrick Collins, Inc. v. John Does 1–27 Copyright 7/27/12 1:2012-cv-01955 Judge Jackson, referred to Magistrate Judge Hegarty Jason Aaron Kotzker Kotzker Law Group
Patrick Collins, Inc. v. John Does 1–12 Copyright 7/27/12 1:2012-cv-01956 Judge Blackburn, referred to Magistrate Judge Hegarty Jason Aaron Kotzker Kotzker Law Group
Combat Zone Corp. v. John/Jane Does 1–4 Copyright 7/27/12 1:2012-cv-01963 Judge Krieger, referred to Magistrate Judge Shaffer Thomas Gerald Jacks Chalker Flores, LLP
Malibu Media, LLC v. John Does 1–31 Copyright 8/6/12 1:2012-cv-02069 Chief Judge Daniel, referred to Magistrate Judge Hegarty Jason Aaron Kotzker Kotzker Law Group
Malibu Media, LLC v. John Does 1 Copyright 8/6/12 1:2012-cv-02070 Judge Martinez, referred to Magistrate Judge Hegarty Jason Aaron Kotzker Kotzker Law Group
Malibu Media, LLC v. John Does 1 Copyright 8/6/12 1:2012-cv-02071 Judge Martinez, referred to Magistrate Judge Hegarty Jason Aaron Kotzker Kotzker Law Group
Broadcast Music, Inc. et al v. Carey-On Saloon, LLC et al Copyright 8/10/12 1:2012-cv-02109 Judge Arguello, referred to Magistrate Judge Watanabe Ian L. Saffer Kilpatrick Townsend & Stockton, LLP
Perko v. Kaufmann et al Copyright 8/21/12 1:2012-cv-02228 Judge Brimmer Harold R. Bruno , III Robinson, Waters & O'Dorisio, P.C.
Viesti Associates, Inc. v. Pearson Education, Inc. Copyright 8/23/12 1:12-cv-02240 Judge Blackburn, referred to Magistrate Judge Boland Christopher Seidman Harmon & Seidman LLC
Fiber, LLC v. Ciena Corporation et al Patent 7/23/12 1:2012-cv-01914 Judge Krieger, referred to Magistrate Judge Hegarty Aaron P. Bradford Lathrop & Gage, LLP
Checkers Industrial Products, LLC v. Rage Powersports, LLC Patent 7/26/12 1:2012-cv-01947 Judge Jackson Nadya Claire Bosch Holland & Hart, LLP
Otter Products, LLC v. Mophie, Inc Patent 7/27/12 1:2012-cv-01969 Judge Krieger, referred to Magistrate Judge Watanabe Rachael Dauphine Lamkin Turner Boyd LLP
Wine Master Cellars, LLLP v. Apex Wine Cellars and Saunas, Inc. et al Patent 7/30/12 1:2012-cv-01992 Judge Arguello, referred to Magistrate Judge Tafoya John R. Posthumus Sheridan Ross, P.C.
Otter Products, LLC v. Aimo Wireless, Inc. Patent 8/3/12 1:2012-cv-02041 Judge Arguello, referred to Magistrate Judge Shaffer Anna W. Lam Turner Boyd LLP
Otter Products, LLC v. Beyond Electronics, Inc. Patent 8/3/12 1:2012-cv-02043 Judge Jackson Anna W. Lam Turner Boyd LLP
Otter Products, LLC v. Eaglecell, Inc Patent 8/3/12 1:2012-cv-02044 Chief Judge Daniel, referred to Magistrate Judge Tafoya Anna W. Lam Turner Boyd LLP
Otter Products, LLC v. Emax Wireless, Inc. Patent 8/3/12 1:2012-cv-02046 Judge Arguello, referred to Magistrate Judge Mix Anna W. Lam Turner Boyd LLP
Otter Products, LLC v. Reiko Wireless, Inc. Patent 8/3/12 1:2012-cv-02049 Judge Martinez, referred to Magistrate Judge Boland Anna W. Lam Turner Boyd LLP
Otter Products, LLC v. Sun Wireless, Inc. Patent 8/3/12 1:2012-cv-02050 Chief Judge Daniel, referred to Magistrate Judge Mix Anna W. Lam Turner Boyd LLP
Otter Products, LLC v. Wireless Complete.com, Corp. Patent 8/3/12 1:2012-cv-02051 Judge Brimmer, referred to Magistrate Judge Mix Anna W. Lam Turner Boyd LLP
Design Pallets, Inc. v. Shandon Valley Transport Solutions USA, LLC et al Patent 8/8/12 1:2012-cv-02094 Judge Blackburn Lisa F. Mickley Hall & Evans, LLC
Crocs, Inc. v. CVS Caremark Corp. Patent 8/8/12 1:2012-cv-02096 Judge Blackburn George Robert Green Arnold & Porter LLP
Bison Designs, LLC v. Brighton Collectibles, Inc. et al Patent 8/17/12 1:2012-cv-02180 Judge Martinez, referred to Magistrate Judge Boland Scott Thomas Kannady Brown & Kannady, LLC
Asher v. Colgate-Palmolive Company Patent 8/20/12 1:2012-cv-02211 Judge Martinez, referred to Magistrate Judge Boland William W. Cochran Cochran, Freund & Young, LLC
EdiSync Systems, LLC v. Adobe Systems, Inc. Patent 8/21/12 1:2012-cv-02231 Judge Krieger Tucker K. Trautman Dorsey & Whitney, LLP
Online Tools For Parents, LLC v. Vilsack et al Trademark 7/19/12 1:2012-cv-01883 Judge Krieger, referred to Magistrate Judge Shaffer Theodore E. Laszlo , Jr. Laszlo & Associates, LLC
Tangerine Temple LLC v. Chictronics, LLC Trademark 7/30/12 1:2012-cv-01991 Chief Judge Daniel, referred to Magistrate Judge Boland John R. Posthumus Sheridan Ross, P.C.
Scales 'N Tails Franchising, LLC v. Beall et al Trademark 7/31/12 1:2012-cv-02001 Judge Martinez, referred to Magistrate Judge Watanabe Harold R. Bruno , III Robinson, Waters & O'Dorisio, P.C.
Live Nation Merchandise, Inc. v. Does 1–100 et al Trademark 8/1/12 1:2012-cv-02008 Judge Blackburn Cara R. Burns Hicks, Mims, Kaplan & Burns
Swoozie’s 2 LLC v. Norwood Promotional Products, LLC et al Trademark 8/23/12 1:12-cv-02246 Judge Brimmer Gary Robin Maze Berenbaum Weinshienk, PC

Please email Danny Sherwinter at dsherwinter@mfblaw.com with any interesting Colorado District Court IP decisions or IP news involving Colorado Companies.

IP Law Developments from BNA

Copyrights/Infringement

2d Cir.: Lack of Detail No Reason to Deny

Copyright Protection to Architectural Works

BNA Snapshot
Scholz Design v. Sard Custom Homes LLC, 2d Cir., No. 11-3298, 8/15/12

Holding: The Second Circuit reinstates copyright infringement claims based on the unauthorized use of three architectural sketches that the district court had determined lacked sufficient detail to warrant copyright protection.

Takeaway: Architectural sketches do not need to be especially detailed in order to be protected as ‘pictorial' works under Section 102(a)(5) of the Copyright Act.

By Tamlin H. Bason

There is no requirement that architectural drawings contain sufficient detail to support actual construction in order to warrant copyright protection under Section 102(a)(5) of the Copyright Act, the U.S. Court of Appeals for the Second Circuit held Aug. 15 (Scholz Design v. Sard Custom Homes LLC, 2d Cir., No. 11-3298, 8/15/12).

Accordingly, the appeals court reinstated copyright infringement claims that a district court had dismissed after determining that architectural drawings must contain a requisite amount of detail and specificity in order to command copyright protection under the Architectural Works Copyright Protection Act, Pub. L. No. 101-650.

Rather than looking to the AWCPA, the district court instead should have confined its determination to whether the drawings were sufficiently creative to warrant copyright protection as a “pictorial” work under Section 102(a)(5) of the Copyright Act, the appeals court said. Under such analysis, “[W]e think this to be a straightforward case of infringement,” the court said, reversing the lower court's dismissal of the plaintiff's copyright infringement, breach of contract, and Digital Millennium Copyright Act claims.

Former Associate’s Drawings Used Without Permission

Scholz Design Co. holds a copyright for architectural drawings and designs of homes known as “Springvalley A,” “Wethersfield B,” and “Breckinridge A.”

Sard Custom Homes was a former Scholz registered builder and had access to these designs. It posted thumbnail images of the drawings without the original credit line on Prudential Connecticut Realty and Coldwell Banker Residential Real Estate Inc. websites and also advertised on those sites the ability to build homes on the advertised lots. Scholz sued Sard, Prudential, and Coldwell Banker for copyright infringement.

Sard moved to dismiss the claims, arguing that Scholz does not hold valid copyrights in the images depicted. Sard said the thumbnail depictions of drawings are not architectural or technical plans and thus are not protectable by copyright.

Judge Janet Bond Arterton agreed, ruling that in order to command copyright protection a drawing must contain sufficient detail to enable construction. The court's ruling relied heavily on Attia v. Society of the New York Hospital, 201 F.3d 50, 53 USPQ2d 1253 (2d Cir. 1999) (59 PTCJ 462, 1/14/00), which it said stood for the proposition that conceptual drawings do not constitute protected expressions.

Scholz appealed.

Only Issue Is Whether Drawings Protected By Copyright

The district court below assumed that the thumbnails that appeared on the defendants’ website were copies of the Scholz drawings, and thus Judge Robert D. Sack said that the only issue on appeal was whether those drawings were entitled to copyright protection.

“Copyright protection of a pictorial work, whether depicting a house, or a flower, or a donkey, or an abstract design, does not depend on any degree of detail.”

Judge Robert D. Sack, U.S. Court of Appeals for the Second Circuit

While a certificate of copyright registration is prima facie evidence of a valid copyright, that presumption may be rebutted, the court said. In fact, that presumption was rebutted by Sard below because although the drawings were registered, the district court concluded that the works lacked sufficient detail to qualify for copyright protection. That conclusion was in error, the appeals court said.

“Copyright protection of a pictorial work, whether depicting a house, or a flower, or a donkey, or an abstract design, does not depend on any degree of detail,” the court said. “The rights Scholz claims in this suit derive from the general copyright law and not from the AWCPA, which has no relevance to the suit.”

AWCPA not Relevant

Even before the AWCPA was enacted in 1990, architectural plans were protectable as a “pictorial, graphic, and sculptural work” under Section 102(a)(5), the court noted. The court further noted that the AWCPA’s extension of protection to constructed buildings, under Section 102(8), was done in order to bring the United States into compliance with the Berne Convention. Quoting T-Peg Inc. v. Vermont Timber Works Inc., 459 F.2d 97, 79 USPQ2d 1919 (1st Cir. 2006) (72 PTCJ 490, 9/1/06), the court said:

[After the AWCPA,] the holder of a copyright in an architectural plan … has two forms of protection, one under the provision for an “architectural work” under 17 U.S.C. § 13 102(a)(8), and another under the provision for a “pictorial, graphical, or sculptural work” under 17 U.S.C. § 102(a)(5).

Moreover, quoting the 11th Circuit's opinion in Oravec v. Sunny Isles Luxury Ventures LC, 527 F.3d 1218, 86 USPQ2d 1661 (11th Cir. 2008) (76 PTCJ 119, 5/23/08), the court said, “the scope of copyright protection for architectural plans registered under § 102(a)(5) was unaffected by the AWCPA.”

“Thus, prior to passage of the AWCPA courts had held that use of copyrighted architectural plans to construct a building would not constitute infringement, but then as now, copying those plans would,” the court said.

In fact, the court said the district court accurately described the case law when it said, “The rule which emerges from [the pre-AWCPA] cases is that one may construct a house which is identical to a house depicted in copyrighted architectural plans, but one may not directly copy those plans and then use the infringing copy to construct the house.” What the district court failed to understand, however, was that sketches and drawings, such as the ones Scholz claims were infringed here, were protected prior to the enactment of the AWCPA, though the buildings they depicted were not. The court added:

The district court seems to have misunderstood the import and relevance of this distinction in concluding that under section 102(a)(5), architectural sketches or drawings are required to include a certain level of detail to receive protection. Where the complaint alleges unlawful copying of a pictorial work registered under section 102(a)(5), there is no requirement of any level of detail.

Works Protection Under Section 102(a)(5)

Indeed, the court criticized the district court for requiring a heightened level of creativity simply because the works were related to architecture. “It is black-letter law … that courts accept as protected ‘any work which by the most generous standard may arguably be said to evince creativity,’” the court said, quoting 1-2 Melville B. Nimmer and David Nimmer, Nimmer on Copyright § 2.08 (2012).

It added:

We see no reason why Scholz’s drawings depicting the appearance of houses it had designed should be treated differently from any other pictorial work for copyright purposes. Andrew Wyeth and Edward Hopper were famous for their paintings of houses, and Claude Monet for paintings of the Houses of Parliament and of Rouen Cathedral. None of these depictions of buildings were sufficiently detailed to guide construction of the buildings depicted, but that would surely not justify denying them copyright protection.

Accordingly, the court said pictorial works, such as the ones created by Scholz, can be entitled to copyright protection. The court next turned its attention to the lower court’s reliance on case law.

District Court Misapplied Case Law

The court noted that the district court “principally relied on three other cases” in making its determination. The appeals court analyzed each case, ultimately concluding that all three were misconstrued.

The district court relied on Attia for the proposition that in order to be entitled to copyright protection, drawings must contain sufficient detail to enable construction. But the appeals court said Attia in fact made no such sweeping proclamations.

In that case, Eli Attia was retained by the Society of New York Hospital to devise a plan for the renovation of New York Hospital. Attia developed the concept of a new building to be constructed on a platform over FDR Drive, and presented the concept in a series of booklets containing architectural drawings and sketches.

However, the project ultimately went to defendants Hellmuth Obata & Kassabaum Inc. and another firm, which prepared “schematic design drawings” for a building over FDR Drive. Attia sued the hospital and the architects for copyright infringement and reverse passing off under the Lanham Act's Section 43(a), 15 U.S.C. §1125(a), arguing that the hospital’s schematic drawings were copies of his protected materials.

Affirming a summary judgment of noninfringement, the Second Circuit explained that the similarities in the drawings did not go beyond generalized ideas and concepts in the plaintiff’s drawings pertaining to the placement of elements, traffic flow, and engineering strategies.

In the instant case, the district court determined that Attia’s reference to generalized ideas and concepts meant that non-detailed drawings could not be copyrighted. That is a fallacy, the appeals court said.

In this case, Scholz alleged that the entire sketch was copied and not just that certain elements of the design were misappropriated. “Attia therefore has little relevance to the case before us,” the court said.

Similarly, the court dismissed the lower court’s reliance on both Robert R. Jones Associates Inc. v. Nino Homes, 858 F.2d 274, 8 USPQ2d 1224 (6th Cir. 1988), and Imperial Homes Corp. v. Lamont, 458 F.2d 895, 899, 173 USPQ 519 (5th Cir. 1972).

The district court erroneously read Robert R. Jones to stand for the proposition that there can be no infringement if the alleged copying of architectural drawings does not result in construction. “What the court seems to have meant was that, while the construction of the home based on copyrighted plans is not an infringement (under the pre-AWCPA law), the copying of the plans is an infringement,” the appeals court said of Robert R. Jones.

Likewise, Lamont’s determination that a floor plan was sufficiently detailed to warrant copyright protection is irrelevant to this case, the court said. “That court, however, like the court in Robert R. Jones, did not indicate that a less-detailed plan or drawing would not be entitled to copyright protection.”

Thus, the court said the case law simply did not support the district court’s dismissal of the copyright infringement claims.

Issue of First Impression, but ‘Straightforward Case.’

“Although we have not directly addressed the question with which the district court grappled here, we have twice explained that architectural technical drawings might be subject to copyright protection even if they are not sufficiently detailed to allow for construction,” the court said.

The first such instance was in Attia, where the Second Circuit noted that final copyright protection could extend to unfinished construction drawings. Two years later Sparaco v. Lawler, Matusky, Skelly, Engineers LLP, 303 F. 3d 460, 64 USPQ2d 1363 (2d Cir. 2002) (64 PTCJ 438, 9/20/02), stated “We do not mean to imply that technical drawings cannot achieve protected status unless they are sufficiently complete and detailed to support actual construction.” Given this relevant case law, the court here deemed this “a straightforward case of infringement.” Accordingly, the court reversed the district court’s dismissal of the copyright infringement claims.

Judges Peter W. Hall and Pierre N. Leval joined the opinion.

Scholz was represented by Louis K. Bonham of Osha Liang, Austin, Texas. Sard was represented by John J. Robacynski of Rome, Clifford, Katz & Koerner, Hartford, Conn. Caldwell Banker was represented by Thomas J. Finn of McCarter & English, Hartford, Conn.

Foreign Laws/Trademarks

Australia High Court Lets Stand Law
Abolishing Trademarks on Cigarette Packs

By Murray Griffin

MELBOURNE, Australia—Tobacco companies have failed to get overturned a law that requires them to sell cigarettes in drably-colored packs free of trademarks, with the High Court Aug. 15 finding that the legislation does not breach the Constitution (British American Tobacco Australasia Ltd. v. Commonwealth of Australia, Austl., No. S389/2011, 8/15/12).

The court said it would publish its reasons for the decision at a “later date.”

The ruling means that as of Dec. 1 cigarettes must be sold in plain packs, with brand names and company information printed in a gray color of a specified font and size. Packs must also carry revised graphic images of smoking-related diseases.

The Australian court ruling comes in the wake of an international business group’s claim that a similar tobacco packaging proposal in the United Kingdom would threaten intellectual property rights and competitiveness (84 PTCJ 675, 8/17/12).

Companies including British American Tobacco Australasia Ltd., Philip Morris Ltd., and Imperial Tobacco Australia Ltd. unsuccessfully argued that the Tobacco Plain Packaging Act 2011 breached the Constitution by acquiring statutory intellectual property rights on unjust terms.

In a joint statement, Attorney-General Nicola Roxon and Health Minister Tanya Plibersek described the ruling as “a watershed moment for tobacco control.”

“Australia’s actions are being closely watched by governments around the world, including by Norway, Uruguay, UK, EU, NZ, France, South Africa, and China. Other countries might now consider their next steps,” they said. “The message to the rest of the world is big tobacco can be taken on and beaten. Without brave governments willing to take the fight up to big tobacco, they’d still have us believing that tobacco is neither harmful nor addictive,” according to the statement.

“Today should be a clarion call to every country grappling with the costs and harm of tobacco and hopefully encourage them to take the next tobacco control steps appropriate for them.”

Roxon and Plibersek described the decision as “a victory for all those families who have lost someone to a tobacco-related illness.”

‘Serious Unintended Consequences’ Seen

In a statement issued after the decision, British American Tobacco Australia spokesman Scott McIntyre said the act “was a bad piece of law that would have serious unintended consequences.”

McIntyre said BATA was “extremely disappointed” by the ruling. “We still believe the government had no right to remove a legal company’s intellectual property but BATA will comply with this and every other law.”

McIntyre said the legislation would only benefit “organized crime groups which sell illegal tobacco on our streets.”

Philip Morris spokesman Chris Argent said the company would comply with the legislation given the high court ruling, but would continue with a challenge that alleges the law breaches Australia’s obligations under a bilateral investment treaty with Hong Kong. It expects that challenge, which will be dealt with by an international panel, to be resolved within two or three years.

Patents/Claim Construction

Rambus Loses Claim Construction Battle;

Fed. Cir. Affirms Anticipation Ruling by BPAI

BNA Snapshot
In re Rambus Inc., Fed. Cir., No. 2011-1247, 8/15/12

Case Summary: The Federal Circuit affirms a claim construction ruling by the BPAI that results in invalidating for anticipation a patent claim relating to memory devices.

Key Takeaway: Rambus loses the latest skirmish in a long-running battle with semiconductor chip manufacturers, which have been fighting the patent licensing entity's attempts to assert rights.

By Anandashankar Mazumdar

A technology licensing company that has been engaged in a long-term battle with semiconductor chip makers over memory-related technologies lost the latest skirmish over its assertion of patent claims, as a result of an Aug. 15 ruling by the U.S. Court of Appeals for the Federal Circuit (In re Rambus Inc., Fed. Cir., No. 2011-1247, 8/15/12).

Affirming a finding of invalidity for anticipation, the court found substantial evidence to support the Patent and Trademark Office's claim construction ruling in the reexamination of a patent.

Patent Acquired by Licensing Company

In 1999, Michael Farmwald of Berkeley, Calif., and Mark Horowitz of Palo Alto, Calif., were issued a patent (6,034,918) relating to a method “of operating a memory having a variable data output length and a programmable register.” Later, Rambus Inc. of Sunnyvale, Calif., a technology licensing entity, acquired this patent. The ‘918 patent was based on an application with a priority date of 1990, and thus it and its related patents expired in 2010.

In 2005, Rambus sued several semiconductor chip manufacturers, including Hynix Semiconductor Inc. of South Korea and Micron Technology Inc. of Boise, Idaho, alleging infringement of several patents related to the ‘918 patent.

Rambus’s claims came in the context of its ongoing litigation against Hynix, Micron, and other companies asserting its patents related to standards-setting in the semiconductor industry (82 PTCJ 73, 5/20/11).

The U.S. District Court for the Northern District of California in 2008 analyzed Claim 18 of the ‘918 patent, which describes:

A method of operation of a synchronous memory device, wherein the memory device includes a plurality of memory cells, the method of operation of the memory device comprises:

receiving first block size information from a bus controller, wherein the first block size information defines a first amount of data to be output by the memory device …;

receiving a first request from the bus controller ….

At first, the district court construed the term “memory device” as used in this claim to broadly mean “a device in which information can be stored and retrieved electronically.”

Later, the court said that a “memory device” need not be a single chip but would be limited “in scale to being a component in a memory subsystem.” The court distinguished between a “memory device” and a “processing device” and said:

[a] “memory device” does not include a microprocessor like a CPU or memory controller. It connects to a bus as a component in a larger system. While its size is not explicitly defined, it is on the order of a single chip, and smaller than a “memory board.”

Reexamination Results in Invalidity

In 2009, the district court found that Hynix had infringed two of the claims of the ’918 patent. Hynix subsequently initiated an ex parte reexamination proceeding before the PTO of three claims, including Claim 18.

During this administrative proceeding, the PTO construed the term “memory device” to mean a “device [that] allows for the electronic storage and retrieval of information.” Under this construction, Claim 18 was found anticipated by prior art, namely, Intel Corp.’s iAPX 432 Interconnect Architecture Reference Manual (1982), which disclosed a “memory module.” Ex parte Rambus Inc., Reexamination No. 90/010,420 (Bd. Pat. App. & Int. Jan. 12, 2011).

Rambus appealed to the BPAI, arguing that the question was “whether the memory ‘device’ recited in claim 18 reads on the memory ‘module’ disclosed in the iAPX Manual.”

The board, however, stated that the question was “whether the claimed term ‘device’ is limited to a single ‘chip’ embodiment or also embraces a ‘memory stick’ [or transceiver device] embodiment as disclosed in the ‘918 patent” and noted that whenever “memory device” was used, it could be replaced by a transceiver device or multiple memory devices.

The BPAI concluded that the “memory device” recited in Claim 18 was not limited to a chip device and applied the broader definition, which may include multiple chips. Furthermore, the “memory module” in the prior art was not a microprocessor or CPU and thus was also a memory device as used by Claim 18, thus anticipating the claim.

Rambus appealed.

Not Limited to Single Chip

Judge Richard Linn first rejected Rambus’s argument that a “memory device” as used in Claim 18 was limited to a single chip device.

Turning first to the specification of the ’918 patent, the court noted that the embodiments describe single chip devices, but there was nothing that excluded or clearly disavowed multichip devices.

“The specification language Rambus cites shows only that the invention can be carried out with a single chip memory device,” the court said. “[I]t does not require the invention to be so performed.”

Expert testimony cited by Rambus to support its single chip theory was “conflicting and unpersuasive” the court said. The court also agreed with the PTO that there was no evidence in the prosecution history nor in the related patents to limit the scope of the term to a single chip.

The court summed up:

“[M]emory device” is a broad term which has been used consistently in the ‘918 patent and in the family of patents related to it to encompass a device having one or more chips.

Furthermore, there was no evidence to conclude that this broad use had been disavowed or redefined for the purpose of these patents to mean a single chip device, the court said.

Control Functions Not Excluded

Then, the court rejected Rambus's argument that “memory device” did not encompass devices capable of performing control functions.

According to the court, Rambus’s proposed construction failed on the basis that Claim 18 did not rule out any control function. Indeed, the court pointed out that it expressly required some degree of control functionality.

Furthermore, the court noted that Rambus had conceded that some control logic was necessary in order for the claim to function, but was distinguishing “simple controllers” from “complex controllers,” the latter of which it was seeking to exclude from the scope of the claim.

Finally, the court noted Rambus’s own admission that the ‘918 patent encompassed a device that incorporated “‘all the functionality’ of prior art memory boards,” which meant that Claim 18 was not describing a “functionless storage chip” but rather a memory device with data receiving and outputting functions.

Thus, the court concluded:

[W]e construe a “memory device” as a component of a memory subsystem, not limited to a single chip, where the device may have a controller that, at least, provides the logic necessary to receive and output specific data, but does not perform the control function of a CPU or bus controller.

The court thus found this claim anticipated by the iAPX Manual and affirmed the boards rejection for anticipation.

The court’s opinion was joined by Chief Judge Randall R. Rader and Judge Timothy B. Dyk.

Rambus was represented by J. Michael Jakes of Finnegan, Henderson, Farabow, Garrett & Dunner, Washington, D.C. The PTO was represented by Thomas W. Krause of the Office of the Solicitor, Alexandria, Va.

A special thanks goes to BNA for allowing the IP Section to print its stories. If you are interested in receiving a free 15 day trial from BNA, please contact George Tanguay at 1-800-542-1113 or at gtanguay@bna.com.

IP Section Officer Contact Information

Chair

Michael P. Dulin
Polsinelli Shugart, P.C.
1515 Wynkoop Street #600
Denver, CO 80202
303-572-9300
mdulin@polsinelli.com

Vice Chair

Mollybeth (Molly) Kocialski
Oracle America, Inc.
500 Eldorado Blvd., M/S UBRM 01-200
Broomfield, CO 80021
303-272-9945
Mollybeth.kocialski@oracle.com

Secretary/Treasurer

Danny Sherwinter
Marsh Fischmann & Breyfogle LLP
1881 9th Street, Suite 335
Boulder, CO 80301
720-562-5500
dsherwinter@mfblaw.com

 

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