Articles Posted in U.S. 9th Circuit Court of Appeals

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Plaintiff sued Marvel for patent infringement and breach of contract, claiming that it had used his ideas in developing a Spider-Man role-playing toy called the "Web Blaster" without compensating him. The parties subsequently agreed to settle the case while appeals were pending and executed a Settlement Agreement. Thereafter, Marvel entered into a licensing agreement with Hasbro giving it the right to produce the Web Blaster. At issue was the calculation of royalties for subsequent iterations of the Web Blaster. The court joined its sister circuits in holding, pursuant to Brulotte v. Thys Co., that a so-called "hybrid" licensing agreement encompassing inseparable patent and non-patent rights was unenforceable beyond the expiration date of the underlying patent, unless the agreement provided a discounted rate for the non-patent rights or some other clear indication that the royalty at issue was in no way subject to patent leverage. Accordingly, the court affirmed the district court's grant of summary judgment in favor of Marvel, concluding that plaintiff could not recover royalties under the Settlement Agreement beyond the expiration date of the patent at issue. View "Kimble v. Marvel Enter., Inc." on Justia Law

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In this interlocutory appeal, Motorola appealed from the district court's preliminary injunction to enjoin Motorola temporarily from enforcing a patent injunction that it obtained against Microsoft in Germany. The underlying case before the district court concerned how to interpret and enforce patent-holders' commitments to industry standard-setting organizations (SSOs), which established technical specifications to ensure that products from different manufacturers were compatible with each other. Specifically, the case involved the H.264 video coding standard set by International Telecommunications Union (ITU), and the 802.11 wireless local area network standard set by the Institute of Electrical and Electronics Engineers (IEEE). The court held that, under the unique circumstances of this case, the district court's narrowly tailored preliminary injunction was not an abuse of discretion. Accordingly, the court affirmed the judgment. View "Microsoft Corp. v. Motorola, Inc., et al" on Justia Law

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Apple brought this action against Psystar for copyright infringement because Psystar was using Apple's software on Psystar computers. The district court held that Psystar was infringing Apple's federally registered copyrights in its operating software, Mac OS X, because Psystar was copying the software for use in Psystar's computers. Psystar subsequently appealed the district court's rejection of Psystar's copyright misuse defense, the district court's order enjoining Psystar's continuing infringement, and the district court's grant of Apple's motions to seal documents on grounds of maintaining confidentiality. The court held that Psystar's misuse defense failed because it was an attempt to apply the first sale doctrine to a valid licensing agreement. The court affirmed the district court's order enjoining Psystar's continuing infringement and Digital Millennium Copyright Act (DMCA), 17 U.S.C. 1203(b)(1), violations and held that the district court properly applied the Supreme Court's four eBay Inc. v MercExchange, L.L.C. factors. The court held, however, that there was no adequate basis on the record to support the sealing of any Apple records on grounds of confidentiality and applied the presumption in favor of access, vacating the district court's sealing orders. View "Apple Inc. v. Psystar Corp." on Justia Law