IP Law Daily, WORTH NOTING—Other IP law developments, (Oct 21, 2022)

By WK Editorial Staff

A periodic roundup of other items of interest to the Intellectual Property community.

COPYRIGHT—9th Cir.: The federal district court in San Francisco correctly ruled that the safe harbor provided by Section 512 of the Digital Millennium Copyright Act as a matter of law precluded a computer programming educator from pursuing claims against a technology company that allegedly infringed two of the educator’s programs, the U.S. Court of Appeals for the Ninth Circuit has decided. The defending company had the requisite policy in place to ban "repeat infringers" and had in fact cancelled the accounts of the users who had uploaded the educator’s course materials and videos. The company removed the content expeditiously after the educator informed the company as to its infringing nature. No admissible evidence in the record showed that the educator had actual or “red flag” knowledge of the infringing material. In addition, the educator had no “right and ability to control” the infringing activity, and its implementation of a non-substantive quality review process did not constitute the exercise of “substantial influence on the activities of users” (Kinsley v. Udemy, Inc., October 19, 2022, Owens, J.).

COPYRIGHT—D. Del.: The federal district court in Wilmington, Delaware, has ordered Live Face on the Web (LFOW) to pay $397,906 in attorney fees and costs under Section 505 of the Copyright Act to counsel for the owners of two websites that used a third-party virtual greeter software that allegedly infringed LFOW’s computer code. In September 2020, the court dismissed LFOW’s infringement claims, finding that it waited too long to file suit—and as a sophisticated litigator that had filed more than a hundred infringement cases—LFOW should have known better. An award of fees was warranted because LFOW’s “damage claims during the case were very suspect and Plaintiff’s motivations in bringing the case did not appear to support the purposes of the Copyright Act.” The court concluded that “an award of fees under these circumstances advance the purposes of compensating the prevailing party and will help deter misuse of the Copyright Act.” The court, however, reduced the original amount of attorney fees requested by one-third (Live Face on Web, LLC v. Rockford Map Gallery, LLC, October 19, 2022, Robreno, E.).

PATENT—Fed. Cir.: the U.S. Court of Appeals for the Federal Circuit has modified and reissued its opinion dated January 27, 2022, holding that a district court erred in finding that claims of two patents directed at methods of packaging computer-aided data for three-dimensional objects were invalid as indefinite. The revised opinion did not change the conclusions reached by the majority or the dissent on the panel, but merely clarified its discussion after the appellant filed a petition for rehearing (Nature Simulation Systems Inc. v. Autodesk, Inc., October 17, 2022, Newman, P.).

USPTO PATENT NEWS: A new report released this week by the USPTO Office of Chief Economist examined geographical trends in patenting of U.S. inventions by women from 1990 through 2019. The report, titled, “Where are U.S. women patentees? Assessing three decades of growth,” found the number of counties with women inventor-patentees grew by 32% over the 30-year study period, an expansion of 411 new counties from 1990 through 2019. The report also found that in counties where women were already patenting in the early 1990s, tgrowth of women inventors was more robust. For example, the average number of women inventors in the top 10% of counties was 34 in 1990. By 2019, the average was 209, a 515% increase. The report also found a correlation between educational attainment and inventorship. Women with a bachelor’s degree or higher was 52% greater in counties with women inventor-patentees. USPTO Director Kathi Vidal indicated that the study will be used to assist with bringing more women into the innovation and patenting ecosystem. “We must increase the number of women inventors on patents from the 12-13% it is at today to full representation. This is critical for job growth and economic prosperity, Vidal said.

Attorneys: Steven Howard Kuhn (The Law Firm of Steven H. Kuhn) for Harrison Snow Kinsley. Jeffrey G. Landis (ZwillGen PLLC) for Udemy, Inc. George Pazuniak (O'Kelly & O'Rourke, LLC) for Live Face On Web, LLC. Michael J. Flynn (Morris, Nichols, Arsht & Tunnell LLP) for Rockford Map Gallery, LLC. Matthew Michael Wawrzyn (Wawrzyn LLC) for Nature Simulation Systems Inc. Brian Robert Matsui (Morrison & Foerster LLP) for Autodesk, Inc.

Companies: Udemy, Inc.; Live Face On Web, LLC; Rockford Map Gallery, LLC; Nature Simulation Systems Inc.; Autodesk, Inc.

News: Copyright Patent TechnologyInternet FedCirNews USPTO