Author: Calvin K. May

District Court Issues Opinion on “Fair Use” of Viral Videos

In Equals Three, LLC v. Jukin Media, Inc., the United States District Court for the Central District of California presented an informative “fair use” analysis in a dispute between two media companies over viral videos. The Court’s decision highlights the fact-sensitive nature of the doctrine of fair use. It also clarifies the extent to which a use must be transformative in order to be deemed fair use.

Federal Circuit Considering En Banc Rehearing in Ariosa Diagnostics, Inc. v. Sequenom, Inc.

The United States Court of Appeals for the Federal Circuit is deciding whether to reconsider en banc its panel decision in Ariosa Diagnostics, Inc. v. Sequenom, Inc. Numerous amici have lined up in support of rehearing. At stake is what room recent U.S. Supreme Court jurisprudence leaves for obtaining patent claims involving diagnostic innovations that use established processes.

Federal Circuit Expands Liability for Direct Infringement Under § 271(a)

Last week, en banc, the United States Court of Appeals for the Federal Circuit in Akamai Technologies Inc. v. Limelight Networks, Inc. “unanimously set forth the law of divided infringement under 35 U.S.C. § 271(a),” and expanded direct infringement liability to include instances where, “an alleged infringer conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance.”

101 Gaining Importance in Local Patent Rule Submissions After Alice

A recent district court decision has held that patent eligibility arguments not raised in invalidity contentions served pursuant to local patent rules are waived. In Good Technology Corporation v. MobileIron, Inc., No. 5:12-cv-5826, the United States District Court for the Northern District of California denied Defendant MobileIron, Inc.’s motion for judgment on the pleadings based on patent eligibility arguments that were not disclosed in either original or amended invalidity contentions.

The Hurdles to Register a Scent as a Mark

Registrations of non-traditional trademarks are uncommon, and often discussed only among legal scholars and in academic papers. A recent Wall Street Journal article, however, called attention to a growing trend in trademark law: registration of scents and fragrances. The article describes the efforts of CESI Chemical, Inc., a producer of solvents for the fracking industry, which filed an application to register the orange scent imbued in its chemical additives for its hydraulic fracturing fluid.

Case Update: CryoLife Appeals Preliminary Injunction to Declaratory Judgment Defendant in Patent Case

CryoLife, Inc. has appealed the preliminary injunction recently issued against it in the United States District Court for the District of Delaware barring sales of its PerClot Topical blood-clotting powder product. CryoLife Inc. v. C.R. Bard Inc. et al., Dkt. Entry No. 121, Notice of Appeal. CryoLife has asked United States Court of Appeals for the Federal Circuit to review the district court’s grant of a preliminary injunction based on CryoLife’s failure to present (1) an alternative non-infringement argument based on Medafor, Inc.’s proposed claim construction and (2) expert analysis to support its invalidity contentions. As security, Medafor has agreed to pay CryoLife $100,000 if the injunction is overturned.

Appellate Division Rules Arbitrator Exceeds Powers by Modifying Award to Add Unaddressed Claims

In a recent unpublished opinion, the Appellate Division ruled that, although an arbitrator may modify an award to fix technical errors, he cannot include relief for claims not addressed in the original award, even if the failure to address those claims was due to an oversight by the arbitrator. In Merion Construction Management, LLC v. Kemron Environmental Services, Inc., subcontractor Kemron commenced arbitration alleging that although Kemron had substantially performed its obligations, contractor Merion had not paid its invoices. The arbitrator agreed with Kemron and awarded $873,758.56.

New York Court of Appeals Reconsiders and Holds That an Insurer May Invoke Policy Exclusions Despite Wrongful Refusal to Defend

The New York Court of Appeals has vacated its recent decision in K2 Investment Group, LLC v. American Guarantee & Liability Insurance Co., reverting to the majority position that an insurer breaching its duty to defend an insured is not barred from relying on policy exclusions to defend a later claim for indemnification. The case originated from a related lawsuit where K2 Investment Group, LLC and ATAS Management Group, LLC (collectively, the “LLCs”) sued an attorney for legal malpractice.

New York Appellate Division Reminds New York Practitioners That They Ignore CPLR 3212(a)’s Filing Deadlines at Their Peril

In Kershaw v. Hospital for Special Surgery, the First Department of New York’s Appellate Division affirmed the denial of a summary judgment motion for being untimely filed, notwithstanding that the tardy motion clearly had merit, as emphasized by the dissent. In so doing, the Kershaw Court reinforced the notion that attorneys who disregard the filing deadlines set forth by the New York courts under the New York Civil Practice Law and Rules (“CPLR”) do so at their own peril.

Prolonged Litigation Can Constitute Implicit Waiver of Right to Arbitrate

The New Jersey Supreme Court has ruled that a party’s active participation in a lawsuit for 21 months, up to the eve of trial, constitutes an implicit waiver of its right to invoke an arbitration clause. The plaintiff in Cole v. Jersey City Medical Center was a certified registered nurse anesthetist providing anesthesiology services on behalf of third-party defendant Liberty Anesthesia Associates, LLC (“Liberty”) at the defendant medical center. The plaintiff’s employment with Liberty was governed by a contract containing an arbitration clause. Liberty terminated the plaintiff when the medical center detected that controlled substances had gone unaccounted for and plaintiff refused to submit to a drug test.