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Famous Cases

Electric Storage Battery v. Shimadzu

Electric Storage Battery v. Shimadzu

In the
Electric Storage Battery v. Shimadzu case from 1934, the plaintiff Shimadzu was
granted patent protection after the Circuit Court had taken protection away.
The decision to remand back to the District Court’s decision was made because
prior public use could not be proven by the defense. The plaintiff was granted
protection based on the patent obtained before commercial use of his product
began by the defendant.

Case Description

The plaintiff had developed a battery that
featured never before used chemicals and other substances. The battery was
built to last longer and was more powerful than others on the market. The
plaintiff had developed the battery in his country of residence, Japan. The
plaintiff did not patent his product in Japan nor expose it to anyone in the
United States.

A former
employee, the defendant, had worked in the factory that made the new batteries.
He began manufacturing his own batteries that used some of the same new
chemicals as the plaintiffs. The plaintiff successfully filed for his patent in
the United States but the defendant claimed his battery was already being used
by the public prior to the plaintiff obtaining a patent.


Ruling

The original ruling by the District Court was
upheld and the plaintiff’s patent was ruled valid. The public use claim by the
defendant had two problems: the public use had to occur for a full two years
before the plaintiff’s patent was granted. Also, the defendant’s battery was
ruled to be in its experimental stage. An item in its experimental stage does
not qualify as being a part of public use. The plaintiff was ruled the original
patent holder of the battery and his patent claim was deemed valid. The
defendant was guilty of patent infringement due to the failure of his public
use defense.

Rogers v. Koons

Rogers v.
Koons (960 F.2d 301) was a United States court case which focused on the
copyright infringement of a black and white photograph used in
greeting cards and other types of merchandise. The decision was important
because it focused on parody as a means of fair use. The United States Court of
Appeals for the Second Circuit found that copying a photograph without any
“clear need” to imitate the photograph can hold the infringer liable
for damages. The court decided that the photograph itself was not the specific
target of the parody because it was created as a 3D sculpture of the
photograph.

Background of the Case

Art Rogers, a professional photographer, took a
black and white photograph of a man and a woman with puppies in their arms to
be used in greeting cards and other various types of merchandise. The
photograph was entitled “Puppies”. When Jeff Koons, a famous artist,
saw the photograph, he decided to create a sculpture which would be based on
the photograph to be readied for an art show. Koons then removed the copyright
notice from the picture and gave it to his assistants to begin modeling the
picture for a sculpture.

According to
court reports, Koons asked his assists to copy as much detail as possible from
the photographs. The only changes that were made during the transition were
larger noses on the puppies, their fur was made blue, and the man and woman
were given flowers in their hair. The sculpture was named “String of
Puppies” and became a success for Jeff Koons, who was able to sell three
of the statues for $367,000.

Rogers, upon discovering that his work had been
reproduced into a sculpture, immediately took legal action against Koons and
the Sonnabend Gallery for copyright infringement. Although Koons had admitted
that he copied the work of Rogers, he used a fair use defense, claiming that
his sculpture was a parody of the original work.

A parody is a work created to mock or poke fun at
a work of original authorship and is legal under U.S. copyright law. The court,
however, disagreed with Koons, and ruled in favor of Rogers. They noted the
similarities between both works to be recognizable to the average eye,
concluding that the work was a copy of Rogers’ photograph. The court rejected
Koons’ claim of parody because it did not believe that Koons’ was commenting on
the photograph specifically and used the reproduction in another general art
form.

UMG v. MP3.com

UMG v. MP3.com

Copyright
infringement cases were a highly noted result of music copyright law in the
early 2000s.  One of the copyright infringement cases that marked a
pivotal moment in music copyright policy was the UMG v. MP3.com music copyright
suit. 

The UMG
Recordings, Inc. v. MP3.com music copyright case was filed by UMG Recordings,
Inc. in the year 2000 with the United States District Court for the Southern
District of New York.  UMG alleged that MP3.com was allowing the public to
share digital files of full length CDs, which was believed by UMG to serve as a
direct violation of music copyright law. 

This was one
of the many copyright infringement cases of the early 2000s which stated that
this was yet another invalid use of the music copyright fair use policy. 
Copyright infringement cases such as this further substantiated their claims,
by pointing to the fact that there was a stream of revenue that was being
earned on the basis of these file sharing websites.  UMG argued that even
though the revenue was not earned directly from the sale of music copyright
material, income was being earned as a result, in the form of advertising
placement.

In copyright infringement cases, there is a rather
large burden of proof that placed on the plaintiff, especially in the copyright
infringement cases that present new concepts and new arguments. 
Nevertheless, due to the nature of the allegations by UMG Recordings, Inc.
against MP3.com, the defendant would have to devise a good argument to refute
the claims listed in the music copyright suit. 

Following
the model of other copyright infringement cases being argued around this time,
MP3.com pointed to a previous policy in an attempt to justify their
actions.  MP3.com’s major defense in the music copyright suit was that the
act of file sharing on the site was protected under the consumer protection
laws. 

The consumer
protection laws were devised in order to encourage fair competition by not
allowing companies to gain unfair advantages over others in a number of
capacities.  MP3.com stated that these laws permitted the right for the
company to facilitate the unauthorized use of the copyrighted material. 

The final verdict of UMG Recordings, Inc. v.
MP3.com was one of the copyright infringement cases that is highly regarded in
terms of the influence that it had. There was sufficient evidence as to why the
company felt authorized to use music copyright material, to which they did not
have the rights to, which would result in financial gain.  Just as in
other copyright infringement cases, there were future court decisions. 
The final ruling was issued in favor of the plaintiff. 

The final
decision in the UMG Recordings, Inc. v. MP3.com music copyright case was
reached on the basis of the defendant not being able to offer the company a
large financial payout associated with the win.  As part of the final
judgment, MP3.com was ordered to pay UMG Recordings, Inc. a reported $53
million.

Universal City Studios, Inc. v. Reimerdes

Universal City Studios, Inc. v. Reimerdes

The
Universal City Studios, Inc. v. Reimerdes copyright case was filed on the basis
of a device, technology, or service being re-created in a fashion that does not
coexist with a company’s original or future intention for the product. 
Universal City Studios, Inc. asked the court to ban the computer program,
 DeCSS, created by 2600: The Hacker Quarterly (which included Shawn
Reimerdes) on the grounds of producing a product that manipulated their CSS
program coding, in an effort to allow consumers to make unofficial copies by
decrypting DVD coding. 

The DeCSS greatly affected the movie
copyright industry because this new software gave consumers such capability in
a way in which they would not be subject to licensing fees.  Although not
the basis of the movie copyright case, the
 DeCSS was also responsible for
providing the means of compatibility for DVDs to be played on computers that
use the operating system, Linux.

The Motion Picture Association of America first
made the discovery that Reimerdes was potentially in direct violation of the
movie copyright provisions in its distribution of
 DeCSS on the Internet.  Major players who belong to this
trade association issued its first response in the form of letters to the
websites featuring this program, asking for its swift removal.  

Some
cooperatively obliged, while others did not.  The follow-up response was
in the form of a copyright case initiated by the DVD Copy Control Association,
an organization that aims its focus on DVD and currently Blu-ray movie copyright
protection. 

The DVD Copy
Control Association had officially opened the copyright case with a request for
a temporary restraining order to be issued by the Superior Court of California
in the County of Santa Clara.  The initial stages of the copyright case
did not go in the favor of the DVD Copy Control Association, as the court had
denied the request.  Just two months later, the copyright case made a
pivotal turn when the Superior Court of California, County of Santa Clara,
declared a temporary suspension of the Reimerdes’ program,
 DeCSS, until the movie copyright
case had reached a final verdict.  

In the meantime, the movie copyright
hearing did not prohibit
 DeCSS from being distributed in route of websites that linked to the
software download.  This decision in the copyright case was made on the
basis of the court, due to the fact that this provision was not requested by
the DVD Copy Control Association in the original court petition.

On the date of August 17, 2000, a verdict in the
copyright case had been issued just three days after deliberation had gone
under way.  In the Universal City Studios, Inc. v. Reimerdes copyright
case, the verdict was issued in favor of the DVD Copy Control
Association.  Reimerdes, not satisfied with the verdict in the copyright
case, decided to issue an appeal to the U.S. Court of Appeals for the Second
Circuit. 

Before the
end of 2001, the movie copyright suit of Universal City Studios, Inc. v.
Reimerdes had come to an end, when Reirmerdes had lost their attempt at a winning
verdict in the copyright case once again.  Reimerdes did not appeal to the
Supreme Court. 

Although
these series of proceedings marked the end of this particular copyright case,
this was the very first movie copyright suit to apply the principles of the
newly formed copyright protection law, the Digital Millennium Copyright Act, in
its final court decision.  Due to its large influence on the final verdict
of the copyright case, this is an aspect of copyright law that is often taken
into account in copyright court decisions to date.

State Street Bank v. Signature Financial

State Street Bank v. Signature Financial

State Street
Bank v. Signature Financial was an intensely argued case that determined if
business methods and the process used to find tangible results could in any way
be patent-eligible. The plaintiff was originally granted summary judgment
because they showed Signature Financial’s patented arithmetic and business
methods could not be patented just because they were completed through the use
of a particular software in a computer. The decision was reversed and the
defendant’s business methods contained in software were ruled patentable.

Case Description

The Plaintiff, State Street Bank, entered an
agreement with the defendant, Signature Financial, to use a software program
that applied algorithms and business methods to create a tangible result. When
the deal fell through, the plaintiff filed a claim against the defendant
stating that there was no way the defendant should be able to hold a valid
patent regarding abstract ideas and business methods.

Previous
court decisions helped the plaintiff win summary judgment against the defendant
because business methods could not be patented. The defense believed their
patent contained more than just business methods and abstract ideas. The
defense was able to invent a machine that took business methods and enabled the
software to understand different variables that affected the result the
software would reach. 

The machine and software were what the defense was really
looking to obtain a patent for. The business methods were already known but
applying them into another resource that was capable of almost thinking as a
human would think is patentable according to the argument presented by the
defense.

Ruling

The Federal Circuit Court determined in 1998 that
there were certain ways business methods could be patentable. The Circuit Court
ruled in favor of the defense, affirming the eligibility of their patent. The
court expressed that if a new, useful and practical product was created that
produced an actual tangible result it could be patentable and it is more than
simply a non-patentable business method.

Quick Guide to Famous Patent Cases

Quick Guide to Famous Patent Cases

Patent cases from the past have implications on future patent infringement cases. The arguments presented in past cases allow for statutes to be created or examples of how statutes are followed help plaintiffs and defendants determine if they have a shot at winning a civil suit over patent infringement. While some cases may be simple resulting in summary judgment to one side, other cases have to closely examine details of the case as well as past cases to apply precedents to help form a decision.
Most patent infringement cases are based on statutes or phrases, such as sovereign immunity, public use, flash of genius and obviousness, among others. When the law is not clear and two sides both believe the other is in the wrong, past cases will give each side a good idea as to how the court will rule an infringement case.
Some famous patent cases include:
Pennock v. Dialogue
Grant v. Raymond
Electric Storage Battery v. Shimadzu
Cuno Engineering v. Automatic Devices Corp
Hotchkiss v. Greenwood
 
Blonder-Tongue v. University of Illinois
State Street Bank v. Signature Financial 
Florida Prepaid Post-Secondary Education Expense Board v. College Savings Bank
KSR v. Teleflex. 

Florida Prepaid Post Secondary Education Expense Board v. College Savings Bank

Florida Prepaid Post Secondary Education Expense Board v. College Savings Bank

The issue of
sovereign immunity was raised in the Florida Prepaid Post-Secondary Education
Expense Board v. College Savings Bank case from 1999. The plaintiff, College
Savings Banks, filed a patent infringement suit against the defendant, Florida
Prepaid. The defendant was a State entity. The Court ruled in a 5-4 vote that State
sovereignty could not be taken away even though the Patent and Plant Variety
Protection Remedy Clarification Act says differently.

Case Description

The plaintiff filed a suit against the defendant
which happened to be a State entity. The plaintiff claimed the Patent and Plant
Variety Protection Remedy Clarification Act takes away sovereign immunity — or
immunity from liability — from states. The defendant claimed the Seminole
Tribe v. Florida outcome declared sovereign immunity could not be taken from
the State.

The
plaintiff relied on the 14th Amendment which gave the State no power to take
away property without due process, which included patent properties. The defense
claimed no law passed by Congress shall be able to curtail the protection held
by the states from patent infringement suits.

Ruling

In a 5-4 vote, the Supreme Court ruled the Patent
and Plant Variety Protection Remedy Clarification Act could not take away
sovereign immunity from the State of Florida. The Court said only a consistent
disregard for the property rights and patent rights of citizens could permit Congress
to take away sovereign immunity from a State. Since the plaintiff could not
prove the defendant demonstrated consistent patent violations, the State’s
protection in the form of sovereign immunity would remain.

Grant v. Raymond

Grant v. Raymond

Grant v. Raymond from 1832, heard by the Southern District Court of New York, involved an issue of renewing a patent that had not yet expired. The court originally ruled in favor of the defendants, but it was then ruled that a new jury needed to be selected once the decision was reversed. This showed that an error in patent description could be grounds for a patent infringement defense.  
Case Description
The plaintiffs had been issued a patent for their invention. Before their patent had expired, they realized there was an error within their patent and they sent in corrections. Since corrections were made, they requested and were granted an additional 14 years onto their exclusive patent rights. The defendants did not believe the Secretary of State had the power to extend a patent that had not yet expired an additional 14 years.
Essentially what had happened was the Secretary of State granted the same patent to the same inventors twice. The plaintiff and Secretary of State believed a second patent was valid because the description and design of the original patent was changed and it included new patent information. The defense believed they had waited the appropriate amount of time to produce their product so that they would not be committing patent infringement. They claimed new patent information was not a valid reason for a new patent and that was the reason for a patent infringement action being claimed against them. 
Ruling
The court originally ruled in favor of the plaintiff, stating that the patent renewal was valid and the defense had indeed committed patent infringement. The court ruled that the plaintiffs were in no way trying to deceive the public into the way their original patented invention functioned. The court would then overrule the decision and demand a new jury. 
This was due to the fact that the original invention which would later be altered was already on sale and a part of the public domain. Once an item is a part of the public domain, additional changes can be made but the duration of its patent cannot be extended. 
The issue of extending patents for items already used by the public was decided in this case. The same item cannot be patented twice because of an error committed by the inventors. While the plaintiffs argued that if the mistake was made by the Patent Office the patent renewal would be valid, the same was not true for mistakes made by the inventors. 
Public domain means an item can be rightfully used by the public and new inventions can be based on that item if the patent term is up. If the new patent was given to the plaintiff, more and more inventors would keep creating additions and improvements to their items to extend patents and hold onto their monopolies. There would also be of influx in patent infringement lawsuits if patents were continually being renewed just because new patent information was added to a patent description.

Hotchkiss v. Greenwood

Hotchkiss v. Greenwood

 

Hotchkiss, along with other inventors, claimed to own a valid patent for an improvement to doors and doorknobs. The plaintiff claimed their clay and porcelain door knobs and the way they were installed improved doors and the idea was original and inventive. They were attempting to sue the defendant for using their patent without permission. The Supreme Court in 1850 ruled that replacing one material for another was not inventive or a new discovery and the patent application by the plaintiffs was invalid.

Case Description

The plaintiffs replaced metal and wood doorknobs with porcelain and clay knobs made from pottery. They used similar methods of installation of other knobs as described by their patent application. The Secretary of State originally granted the patenting of the new doorknobs. The defendants in the case showed examples of doorknobs made from pottery and the process by which they are installed took place many years before the plaintiffs filed their patent application. Many different cities in New York, New Jersey and Pennsylvania had practiced the method of applying clay knobs to doors. This showed the plaintiff’s patent was not original, inventive nor non-obvious.

Ruling

The Supreme Court ruled the patent application requested by the plaintiffs was not valid. The practice of using clay and porcelain for doorknobs had been practiced many years prior to the plaintiff’s discovery. This showed the plaintiffs had not discovered or invented anything new. Also, replacing one material with another is an obvious adjustment that can be made to an item. The Court ruled the defendant did not infringe on the plaintiff’s patent because they did not own a valid patent.

This Supreme Court ruling was the first case to apply the concept of non-obviousness to the patentability of something. This case established that if something was obvious and non-inventive there was no point in patenting it because it has probably already been invented and used by the public. Once the public has already been using something there is no point in patenting it and neither ownership nor exclusive rights will be granted to a hopeful patent applicant.

 

KSR v. Teleflex

KSR v. Teleflex

Teleflex
acted as the plaintiff and KSR as the defendant in the 2007 case involving
patent infringement. Teleflex believed KSR’s use of a vehicle control pedal
connected to an electronic throttle control was an infringement on a patent
held by the plaintiff. The District Court ruled in favor of the defendant
claiming the use was obvious, but the Federal Court reversed the decision. The
case went to the Supreme Court, which in turn reversed the decision back to the
District Court’s decision and ruled in favor of the defendant.

Case Description

The defendant combined an adjustable control pedal
to an electronic throttle control in automobiles. The plaintiff claimed this
was infringing on a patent claim they owned. The defense’s argument was a
simple argument that is used in many patent infringement cases. They argued the
combining of the two elements in the case was an obvious adjustment made to the
existing patent. The obviousness of the combination would have been realized by
anyone familiar with the art. The plaintiff did not feel there was a level of
obviousness attached to the combination performed by the defendant.

Ruling

The Supreme Court was clear in its ruling that the
combining of the two elements in the automobile was obvious. The Supreme Court
noted that the Federal Court was incorrect in determining that combining the
two elements discussed in the case were not obvious and someone familiar and
skilled in the art would not naturally combine the pedal and the electronic
throttle. The Supreme Court went as far as to say the combination was common
sense. The KSR decision is now used in almost 60% of similar cases. Many feel
there are too many instances that are declared obvious but obviousness will
only apply to those who are familiar with the art discussed in each individual
case.