Month: September 2023

by Dennis Crouch

The Copyright Act has a seemingly simple three year statute of limitations:

No civil action shall be maintained under the provisions of this title unless it is commenced within three years after the claim accrued.

17 U.S.C. 507(b). It is somewhat surprising then that the Supreme Court has just granted certiorari in a case asking whether the statute “precludes retrospective relief for acts that occurred more than three years before the filing of a lawsuit.” Warner Chappell Music, Inc. v. Nealy, 22-1078 (Supreme Court 2023). At first glance the answer appears to be clearly “no,” but in the case, the Eleventh Circuit sided with the copyright holder by concluding that the rule permits plaintiffs to recover damagers for earlier acts.

The particular dispute focuses on when the “claim accrued” — with the appellate court holding that the three year timeline does not begin until the owner “knows or has reason to know she was injured.”  This so called “discovery rule” has been implied into many statutes of limitation, has been rejected for some doctrines.  When it decided the important laches case of Petrella v. MGM, the Supreme Court highlighted that “[t]he overwhelming majority of courts use discovery accrual in copyright cases.” 572 U.S.

Continue reading Discovering the Limit: Calculating the Copyright Damages Timeline at Patently-O.

by Dennis Crouch

The Copyright Act has a seemingly simple three year statute of limitations:

No civil action shall be maintained under the provisions of this title unless it is commenced within three years after the claim accrued.

17 U.S.C. 507(b). It is somewhat surprising then that the Supreme Court has just granted certiorari in a case asking whether the statute “precludes retrospective relief for acts that occurred more than three years before the filing of a lawsuit.” Warner Chappell Music, Inc. v. Nealy, 22-1078 (Supreme Court 2023). At first glance the answer appears to be clearly “no,” but in the case, the Eleventh Circuit sided with the copyright holder by concluding that the rule permits plaintiffs to recover damagers for earlier acts.

The particular dispute focuses on when the “claim accrued” — with the appellate court holding that the three year timeline does not begin until the owner “knows or has reason to know she was injured.”  This so called “discovery rule” has been implied into many statutes of limitation, has been rejected for some doctrines.  When it decided the important laches case of Petrella v. MGM, the Supreme Court highlighted that “[t]he overwhelming majority of courts use discovery accrual in copyright cases.” 572 U.S.

Continue reading Discovering the Limit: Calculating the Copyright Damages Timeline at Patently-O.

by Dennis Crouch

The Federal Circuit recently affirmed a PTAB IPR decision invalidating claims of Masimo U.S. Patent RE47,218 (“the ’218 patent”) as obvious under 35 U.S.C. § 103. Masimo Corp. v. Sotera Wireless, Inc., 2022-1415 (Fed. Cir. Sept. 28, 2023) (nonprecedential). The Federal Circuit panel of Judges Prost, Wallach, and Chen determined (1) the Board correctly construed the disputed claim terms and (2) its obviousness ruling was supported by substantial evidence.  Id. (authored by Judge Wallach).

The case is yet another example of a patentee’s broad claim language and attempts to avoid limitations coming back to bite during IPR proceedings.  Unlike a decade ago, patent prosecutors are operating in today’s AIA world where IPR challenges have become commonplace.  The old model of broad-as-possible clearly has deficiencies.  To withstand post-issuance validity challenges, prosecutors should carefully craft claims early on with an eye toward narrower scope and avoiding abstraction even if you are doing enough to satisfy the USPTO on 112 and 101. Prosecutors can take full advantage of the 20 ‘free’ claims to pursue both broad and narrow protection. In the case here, the patent owner may have benefited from prosecuting more specific claims early on, as the disclosure arguably supported narrower alternatives that an IPR petitioner would have struggled to knock out.

Continue reading Broad Claims Bite Back: Drafting Narrower Scope in the Age of IPR at Patently-O.

by Dennis Crouch

The Federal Circuit recently affirmed a PTAB IPR decision invalidating claims of Masimo U.S. Patent RE47,218 (“the ’218 patent”) as obvious under 35 U.S.C. § 103. Masimo Corp. v. Sotera Wireless, Inc., 2022-1415 (Fed. Cir. Sept. 28, 2023) (nonprecedential). The Federal Circuit panel of Judges Prost, Wallach, and Chen determined (1) the Board correctly construed the disputed claim terms and (2) its obviousness ruling was supported by substantial evidence.  Id. (authored by Judge Wallach).

The case is yet another example of a patentee’s broad claim language and attempts to avoid limitations coming back to bite during IPR proceedings.  Unlike a decade ago, patent prosecutors are operating in today’s AIA world where IPR challenges have become commonplace.  The old model of broad-as-possible clearly has deficiencies.  To withstand post-issuance validity challenges, prosecutors should carefully craft claims early on with an eye toward narrower scope and avoiding abstraction even if you are doing enough to satisfy the USPTO on 112 and 101. Prosecutors can take full advantage of the 20 ‘free’ claims to pursue both broad and narrow protection. In the case here, the patent owner may have benefited from prosecuting more specific claims early on, as the disclosure arguably supported narrower alternatives that an IPR petitioner would have struggled to knock out.

Continue reading Broad Claims Bite Back: Drafting Narrower Scope in the Age of IPR at Patently-O.