IP Law Bulletin

Last week, a sharply divided Federal Circuit, acting en banc (6-5), decided SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC to the delight of accused infringers. Laches remains a defense to damage claims in patent infringement cases, even for damages sustained within six years before filing suit, despite the Supreme Court’s decision last year in Petrella v. Metro-Goldwyn-Mayer, Inc., which eliminated that defense for damage claims in copyright cases. The Federal Circuit also overruled prior precedent and held that laches may bar prospective injunctive relief. As a result, patent owners should put alleged infringers on notice and not wait to pursue their claims.

Pat Concannon discusses the recent decision by the U.S. Court of Appeals for the Ninth Circuit in Lenz v. Universal Music Corp. and the implications for owners of music and audiovisual works.

Recently the Federal Circuit, sitting en banc, upheld the International Trade Commission’s (ITC) interpretation of 19 U.S.C. § 1337 to allow the ITC to prevent goods from being imported into the United States when the infringement does not occur until after importation. Although the panel was split 6-4, the primary practical justification for the majority’s decision stemmed from the determination that if the decision came out the other way, it would effectively make § 1337, and thus ITC cases, inapplicable to any induced infringement claims, as well as potentially all method claims. The case involved the importation of fingerprint scanning devices by the Korean company Suprema, Inc., which were then combined with software by Suprema’s American business partner Mentalix, Inc., before the scanners were actually sold in the U.S. The sole claim of the plaintiff Cross Match Technologies, Inc. that was at issue in the en banc appeal (claim 19) was directed to a method for capturing and processing a fingerprint image.

The U.S. Court of Appeals for the Ninth Circuit this week issued a decision with implications for owners of music and audiovisual works. The court ruled that copyright owners first must assess whether a use of their content is in fact lawful “fair use” before sending a takedown notification under the Digital Millennium Copyright Act (DMCA). Considering fair use involves a balancing of subjective factors, this newly-clarified requirement may make it logistically more difficult and time consuming for content owners to evaluate whether a use of their content discovered online qualify for takedown notices.