Authors Guild, Inc. v. HathiTrust
By Natalie Kim – Edited by Laura Fishwick

Authors Guild, Inc. v. HathiTrust, 11-CV-06351-HB (S.D.N.Y. Oct. 10, 2012)
Slip opinion

On Wednesday the U.S. District Court for the Southern District of New York granted HathiTrust’s motion for summary judgment on the copyright infringement claims, dismissing the claims brought by the Authors Guild. The HathiTrust Digital Library (“HDL”) is a massive, Google-affiliated book-digitization project led by academic institutions such as the University of California and Indiana University; it had scanned and placed books in the HDL without consulting rights holders. The Authors Guild claimed this violated § 106 and § 108, and sought an injunction against further distribution of the works and impoundment of already scanned works.

The district court held that HathiTrust’s digitization constituted fair use. HDL provides full-text search for copyrighted works for which the rights holder has granted permission and for works in the public domain; 73 percent of the trust’s 10 million books are copyrighted. The affiliated universities have been using HDL for full-text searches, preservation, and access for people with certified print disabilities. Four universities also created full-text access for “orphan works,” which are in-copyright works for which the rights holders are unavailable or otherwise unidentifiable. Google has scanned the books for HDL as part of its Google Books project; a separate litigation between the Authors Guild and Google is stalled on appeal.

Publishers Weekly provides an overview of the case. At Laboratorium, James Grimmelmann predicts the Authors Guild has little chance of a successful appeal due to what he views as the clear victory awarded to HathiTrust and print-disabled codefendants.

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By Evelyn Chang

Presidential Commission Calls for Privacy Protections in Genome Sequencing

Science Insider reports that the Presidential Commission on Bioethics has issued a new report on privacy issues associated with whole genome sequencing of patients.  The cost to sequence the entire genome of an individual is dropping rapidly, and genome sequencing is predicted to one day become common practice in medical treatment and research.  However, current guidelines and policies vary by state and do not provide consistent protection against misuse of genomic data.  The report outlines several steps to protect individuals’ private genetic information while encouraging data sharing and research access.

Supreme Court Grants Certiorari in Seed Patent Case

The Supreme Court has granted certiorari in the case of Bowman v. Monsanto Co., reports Wired. The case was originally brought as a patent infringement suit by Monsanto against Bowman, a farmer in Indiana. Bowman had purchased commodity soybeans from a grain elevator for planting, which contained Monsanto’s patented Roundup Ready soybeans. The District Court of the Southern District Indiana granted summary judgment for Monsanto, and the Federal Circuit affirmed. In their petition for certiorari (hosted by SCOTUSblog), Bowman argues that the doctrine of patent exhaustion should apply, or that there should be an exception for self-replicating technologies, such as seeds.

Federal Circuit Ends Injunction Against Samsung Galaxy Nexus

On October 11, the Federal Circuit reversed a preliminary sales injunction on Samsung’s Galaxy Nexus, reports Reuters. In February 2012, Apple brought suit against Samsung in the Northern District of California, alleging that the Galaxy Nexus infringes eight Apple patents. The preliminary injunction was granted based on one of those eight patents, U.S. Patent No. 8,086,604, which is directed towards an apparatus for unified search. Earlier this month, the San Jose Mercury News reported that U.S. District Judge Koh also dissolved an injunction against Samsung’s Galaxy Tab 10.1 tablet.

Patentability of Software to be Reconsidered En Banc by Federal Circuit

The Federal Circuit has ordered an en banc rehearing to consider the patentability of software in CLS Bank Int’l. v. Alice Corp., App. No. 2011-1301 (Fed. Cir. 2012). PatentlyO reports that the Federal Circuit has reformulated the questions presented to consider how to determine when a computer-implemented invention is an unpatentable abstract idea, and whether method, systems, and storage medium claims for software should be considered equivalent.  The court has also invited the USPTO to file an amicus curiae brief. In the original decision (previously covered by the Digest), now vacated, the court held two to one that computer programs are patentable post-Prometheus.

The Digest will be taking a short break from our regular coverage over the next two weeks as JOLT kicks off its 1L and transfer recruiting season.

While we take our hiatus from regular coverage, we hope you enjoy reading the Digest Comments we posted over the last three weeks. Comments are longer opinion pieces on especially significant issues in law and technology. These pieces are written entirely by members of our staff, on topics they believe warrant closer examination and study. We have great pieces this year, and we hope you will let us know with your comments if you enjoy them!

We’ll be back at the end of the month with our usual coverage. Thank you for reading!

- The Digest Staff

Written By: Sounghun Lee
Edited By: Esther Mulder
Editorial Policy

Introduction

Traditionally, a U.S. patent could only be infringed by activities performed wholly within the United States. In 1972, the Supreme Court held in Deepsouth Packing Co. v. Laitram Corp. that exporting domestically made components of a patented product for assembly abroad was not a direct infringement under U.S. patent law.[i] In an effort to account for the growing global marketplace, Congress has revised and expanded the definition of  “infringing activities” to include extraterritorial activities. This is reflected in 35 U.S.C. § 271, which generally outlines circumstances in which patents are infringed. In particular, § 271(g) provides the authority to enforce a U.S. process patent by prohibiting the importation of products made outside the U.S. that would otherwise violate the patent.[ii] It is important to note that § 271(g) only covers a patent over processes and not the products themselves.[iii]

In Bayer AG v. Housey Pharmaceuticals, Inc., the defining case for § 271(g) jurisprudence, the Federal Circuit held that to have a claim under § 271(g), an imported product must be physical and tangible,[iv] without clearly defining which products are “physical and tangible”. This uncertainty is especially problematic with reference to new technologies. For example, it is unclear whether information contained in electronic signals is considered a physical and tangible product, and this leaves opportunities for infringers to take advantage of the gaps in case law. In light of these ambiguities, understanding the boundaries of § 271(g) is crucial in the age of advancing technologies and the burgeoning global economy. This Comment discusses the extraterritorial reach of § 271(g) and the shortcomings of the two decisions made by the Federal Circuit on this issue. Additionally, this Comment analyzes recent district court cases regarding the question of whether data or information contained in electric signals embedded in physical articles should be considered physical tangible products under § 271(g). (more…)

Jury Delivers $1.05B Verdict for Apple in Patent Case
By Jeffery Habenicht – Edited by Jennifer Wong

Apple Inc. v. Samsung Electronics Co., LTD., 11-CV-1846-LHK (N.D.Cal Aug. 24, 2012)
Jury Verdict Form hosted by SB Nation

After two-and-a-half days of deliberation, a nine-person jury returned a $1.05 billion verdict against Samsung for infringing six of seven Apple patents.  The jury found that, in 24 of its phones and tablets, Samsung had infringed on all three utility patents and three of four design patents that Apple had asserted.  The jury rejected Samsung’s defense that the patents were invalid. Furthermore, the jury found that five of the patents had been infringed willfully by Samsung.  Finally, the jury denied all of Samsung’s infringement counterclaims.  United States District Judge Lucy Koh presided over the trial and has scheduled a hearing for post-trial motions on September 20.

Bloomberg describes the case and explores the broader market context of the dispute.  Ars Technica analyzes the jury verdict.  Wired discusses what the effect the verdict will have on consumers.  Patently-O addresses the likely next steps for the case.  Groklaw takes the position that the jury verdict will likely be overturned, at least in part.

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