Home Famous Cases

Famous Cases

Rogers v. Koons

UMG v. MP3.com

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.

Blonder Tongue v. University of Illinois

Blonder Tongue v. University of Illinois

 

In Blonder-Tongue v. University of Illinois from 1971, the court ruled that a plaintiff who loses a civil trial because their patent was ruled invalid cannot continue to bring the same charges against a different defendant even if the defendants are in no way associated. The court made this ruling despite the Triplett v. Lowell case in which the plaintiff continued to name new defendants after losing battles in court.

Case Description

Dwight Isbell from the University of Illinois Foundation created and patented Frequency Independent Unidirectional Antennas. Other entities would go on to create and use similar antennas. In court proceedings, it was ruled that the Foundation's patent on the antennas was invalid because any entity that was familiar with antennas was bound to discover the same antennas as the Foundation, the plaintiff. The plaintiff continued to file claims against defendants despite losing.

Triplett v. Lowell allowed for a plaintiff to name new defendants that were not related to each other. Blonder-Tongue, a defendant, claimed the case should not go to trial because it was already decided that the patent held by the plaintiff was invalid. The defendant believed since there was no patent ownership the case was already decided and more cases on the same topic were a waste of time.

Ruling

The court ruled to go against the Triplett decision and accept collateral estoppel as a defense. The court agreed that continuing to name defendants in hopes of finally winning a case was a waste of the court’s and defendant’s time. Since the matter had already been adjudged there would be no need to go on with another case, which is referred to as res judicata. If the defendant chose to go on with the court proceedings, that would have been permitted.

All parties are permitted to "have their day in court". If a plaintiff can prove they were not given a fair chance in the first trial to present evidence which led to the losing the case, they may present an argument to go on with a future case regarding the same issue but against a different defendant.

This case put an end to patent ownership trials that have already been decided, yet the plaintiff has decided to keep filing the same hopeless charges against different defendants. United States courts are extremely busy and cannot be subjected to frustrated plaintiffs who continue to name new defendants in patent cases. If a plaintiff has their patent ruled invalid, that decision will carry over to the next case unless they can prove their patent was unjustly ruled invalid.

If you need legal advice and assistance, contact Illinois lawyers.

Cuno Engineering v. Automatic Devices Corp

Cuno Engineering v. Automatic Devices Corp

Cuno Engineering v. Automatic Devices Corp was brought before the Supreme Court in 1941 after conflicting decisions from the District and Circuit Courts. The District Court ruled the defendant, Mead, did not infringe on the plaintiff Morris’ patent by adding a timer and thermostat to an automobile lighter nor did he infringe on a wireless lighter created by the second plaintiff, Metzger. 
The Circuit Court ruled Mead’s addition did infringe on the original designs. The Supreme Court agreed to hear the case and ruled that the Circuit Court was correct in ruling that Mead did in fact infringe on previous patents because the addition did not involve a flash of genius and merely applied an art.
Case Description
Before a patent was attempted to be obtained by Mead, patents for cigarette lighters in automobiles already existed. The first patent was owned by Morris, who invented the lighter and its functions in automobiles. Metzger then patented the wireless automobile lighter. Mead looked to patent his wireless lighter which automatically ejected once it was hot enough. His use of a thermostat made the automobile lighter easier and safer to use.
The question in the case was whether or not applying technology that already exists to a patented product is means for a patent. The court requires patents to have the elements of a “flash of genius”. The thermostat technology had existed for years in things like furnaces. The question for the Supreme Court was whether or not Mead’s invention was a flash of genius or was he merely applying an art to an already patented item.

Ruling
The Supreme Court agreed with the Circuit Court and ruled Mead was guilty of patent infringement.

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.

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.

Viacom vs. Youtube, Google Inc

Viacom vs. Youtube, Google Inc

Viacom, one
of the largest media conglomerates in the world, filed a lawsuit against
YouTube and its parent company, Google, on March 13, 2007. The basis of the
lawsuit was
 copyright infringement in which Viacom was seeking
over $1 billion in damages.

YouTube, one
of the largest video websites on the internet, was threatened with several
major lawsuits in the past before Viacom followed through with a complaint at
the U.S. District Court for the Southern District of New York. YouTube
established itself as a major internet website by allowing users to upload any
videos they wished for the viewing pleasure of millions of other internet
users. Eventually, millions of copyrighted material entered YouTube’s servers
and Viacom, along with other major copyright holders, began to remove their
copyrighted content.

According to Viacom, YouTube created a
“massive intentional copyright infringement” when over 160,000
copyrighted video clips owned by Viacom were uploaded to YouTube, totaling
approximately 1.5 billion views. When YouTube did not respond to video
copyright infringement by limiting uploads sent by its users and incorporating
video copyright detection, Viacom chose to take legal action. In a statement
issued by Viacom, they claimed that YouTube continued to take advantage of the
fruits of their efforts, while destroying the value of the work as well.

Google’s lawyers relied heavily on the terms found in the 1998
Digital Millennium Copyright Act
 to protect them from all allegations aimed at them by
Viacom. On March 11, 2008, Google won a victory in court when a judge ruled
that YouTube was not responsible for any punitive damages to Viacom. In
addition, Viacom demanded requests for YouTube’s search code, though these
requests were denied. Viacom, however, was granted access to YouTube user
histories. This decision has led to many concerns about privacy rights of
internet users. Personal data of YouTube users were made confidential following
an agreement between both companies.

Statutory damages against YouTube are still
pending as of April 29, 2010. Viacom’s lawsuit against YouTube is alongside
several other class action lawsuits by the Premier League and major record
publishers. These cases have yet to go to trial.

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.