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Supreme Court Will Not Review Patent Cases and Copyright Fair Use Case

The Supreme Court on April 18, 2016, declined to review two Federal Circuit patent decisions—one involving divided direct infringement of a method claim and another involving state jurisdiction under consumer protection laws over allegedly false patent demand letters—and a Second Circuit decision on copyright fair use involving Google's scanning of books. Limelight Networks, Inc. v. Akamai Technologies, U.S., No. 15-993, cert. denied 4/18/2016; MPHJ Technology Investments, LLC v. Vermont, U.S., No. 15-988, 4/18/2016; and Authors Guild v. Google, Inc., U.S., No. 15-849, cert. denied 4/18/2016

Patent Cases

The Federal Circuit decisions left standing are Akamai Technologies v. Limelight Networks, Inc., 786 F. 3d 899 (Fed. Cir. 2015), and Vermont v. MPHJ Technologies, 803 F.3d 635 (Fed. Cir. 2015).

In Limelight, the Federal Circuit held last August that direct infringement of a method claim was established even though the defendant did not perform all of the method steps where its customers’ performance of the last step of the method was attributable to the defendant. The appellate court explained that attribution is permitted where the other actors are subject to the defendant’s direction or control, which is not limited solely to principal-agent relationships, contractual arrangements and joint enterprises. On the facts of this case, according to the per curiam opinion, liability under 35 U.S.C. §271(a) is shown where the 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. The Federal Circuit decision was consistent with an AIPLA amicus briefs filed in the case.

In MPHJ, the Federal Circuit held last September that a district court properly remanded back to state court the state prosecution of a patent owner for violating Vermont's consumer protection laws by sending allegedly false demand letters. The Court applied the state's general consumer protection laws and refused to find that the Vermont complaint implicates Vermont’s "Bad Faith Assertions of Patent Infringement Act." 

Copyright Fair Use 

The Second Circuit copyright decision left standing is Authors Guild v. Google, Inc., 804 F.3d 202 (2015), which held last October that Google’s scanning of published books for its Library Project and Google Books Project is a non-infringing fair use under 17 U.S.C. § 107.

Specifically, the Second Circuit concluded that Google’s copying is transformative within the meaning of Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994). A transformative use favors fair use because it communicates something new and different from the original, Judge Leval wrote, thus serving copyright’s overall objective of contributing to the public knowledge. The Court was persuaded that Google’s transformative purpose for its copying from the works of others is to provide otherwise unavailable information about the originals. According to the Court, making digital copies of the books to enable a search for a term of interest to the searcher involved a high transformative purpose that is consistent with the Campbell decision.