Chapter 8
Intellectual Property and
Internet Law
Case 8.1
41 S.Ct. 113
254 U.S. 143
COCA-COLA CO.
v.
KOKE CO. OF AMERICA et al.
No. 101.
Argued Nov. 18 & 19, 1920.
Decided Dec. 6, 1920.
Mr. Justice HOLMES delivered the opinion of the Court.
This is a bill in equity brought by the Coca-Cola Company to prevent the infringement of its trade-mark Coca-Cola and unfair
(1) Of course a man is not to be protected in the use of a device the very purpose and effect of which is to swindle the public. But
the defects of a plaintiff do not offer a very broad ground for allowing another to swindle him. The defence relied on here should be
scrutinized with a critical eye. The main point is this: Before 1900 the beginning of the good will was more or less helped by the
presence of cocaine, a drug that, like alcohol of caffein or opium, may be described as a deadly poison or as a valuable item of the
pharmacopoeia according to the rhetorical purposes in view. The amount seems to have been very small, but it may have been
(2) The decree of the District Court restrains the defendant from using the word “Dope.’ The plaintiff illustrated in a very striking
way the fact that the word is one of the most featureless known even to the language of those who are incapable of discriminating
speech. In some places it would be used to call for Coca-Cola. It equally would have been used to call for anything else having
Case 8.2
127 S.Ct. 1727, 167 L.Ed.2d 705, 75 USLW 4289, 82 U.S.P.Q.2d 1385, 07 Cal. Daily Op. Serv.
4654, 20 Fla. L. Weekly Fed. S 248
Supreme Court of the United States
KSR INTERNATIONAL CO., Petitioner,
v.
§ 103.
Seeking to resolve the question of obviousness with more uniformity and consistency, the Court of Appeals for the
Federal Circuit has employed an approach referred to by the parties as the “teaching, suggestion, or motivation” test (TSM test),
under which a patent claim is only proved obvious if “some motivation or suggestion to combine the prior art teachings” can be
found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art. See,
e.g.,
Al-Site
Corp. v. VSI Int’l, Inc.,
174 F.3d 1308, 1323-1324 (C.A.Fed.1999). KSR challenges that test, or at least its application in this case.
to electronic signals, not through force transferred from the pedal by a mechanical link. Constant, delicate adjustments of air and
fuel mixture are possible. The computer’s rapid processing of factors beyond the pedal’s position improves fuel efficiency and
engine performance.
For a computer-controlled throttle to respond to a driver’s operation of the car, the computer must know
what is happening with the pedal. A cable or mechanical link does not suffice for this purpose; at some point, an electronic sensor
is necessary to translate the mechanical operation into digital data the computer can understand.
Before discussing sensors
obtained patents involving electronic pedal sensors for computer-controlled throttles. These inventions, such as the device
disclosed in U.S. Patent No. 5,241,936 (filed Sept. 9, 1991) (‘936), taught that it was preferable to detect the pedal’s position in the
pedal assembly, not in the engine. The ‘936 patent disclosed a pedal with an electronic sensor on a pivot point in the pedal
assembly. U.S. Patent No. 5,063,811 (filed July 9, 1990) (Smith) taught that to prevent the wires connecting the sensor to the
computer from chafing and wearing out, and to avoid grime and damage from the driver’s foot, the sensor should be put on a fixed
B
KSR, a Canadian company, manufactures and supplies auto parts, including pedal systems. Ford Motor Company hired KSR in
1998 to supply an adjustable pedal system for various lines of automobiles with cable-actuated throttle controls. KSR developed an
adjustable mechanical pedal for Ford and obtained U.S. Patent No. 6,151,976 (filed July 16, 1999) (‘976) for the design. In 2000,
KSR was chosen by General Motors Corporation (GMC or GM) to supply adjustable pedal systems for Chevrolet and GMC light
trucks that used engines with computer-controlled throttles. To make the ‘976 pedal compatible with the trucks, KSR merely took
responsive to said pivot for providing a signal that corresponds to pedal arm position as said pedal arm pivots about said pivot axis
between rest and applied positions wherein the position of said pivot remains constant while said pedal arm moves in fore and aft
CHAPTER 8: INTELLECTUAL PROPERTY AND INTERNET LAW 167
directions with respect to said pivot.”
Id.,
col. 6, lines 17-36, Supplemental App. 8 (diagram numbers omitted).
We agree with
the District Court that the claim discloses “a position-adjustable pedal assembly with an electronic pedal position sensor attached
595.
In other words Redding provided an example of an adjustable pedal and Smith explained how to mount a sensor on a
pedal’s support structure, and the rejected patent claim merely put these two teachings together.
Although the broader claim
was rejected, claim 4 was later allowed because it included the limitation of a fixed pivot point, which distinguished the design from
Redding’s.
Ibid
. Engelgau had not included Asano among the prior art references, and Asano was not mentioned in the patent’s
prosecution. Thus, the PTO did not have before it an adjustable pedal with a fixed pivot point. The patent issued on May 29, 2001
282, an issued patent is presumed valid. The District Court applied
Graham’s
framework to determine whether under summary-
judgment standards KSR had overcome the presumption and demonstrated that claim 4 was obvious in light of the prior art in
existence when the claimed subject matter was invented. See § 102(a).
The District Court determined, in light of the expert
testimony and the parties’ stipulations, that the level of ordinary skill in pedal design was “ ‘an undergraduate degree in mechanical
engineering (or an equivalent amount of industry experience) [and] familiarity with pedal control systems for vehicles.’ ” 298
Court’s view, by the PTO’s rejection of the broader version of claim 4. Had Engelgau included Asano in his patent application, it
reasoned, the PTO would have found claim 4 to be an obvious combination of Asano and Smith, as it had found the broader
version an obvious combination of Redding and Smith. As a final matter, the District Court held that the secondary factor of
Teleflex’s commercial success with pedals based on Engelgau’s design did not alter its conclusion. The District Court granted
summary judgment for KSR.
With principal reliance on the TSM test, the Court of Appeals reversed. It ruled the District Court
but was not designed to solve it. In the court’s view Rixon did not teach anything helpful to Engelgau’s purpose. Smith, in turn, did
not relate to adjustable pedals and did not “necessarily go to the issue of motivation to attach the electronic control on the support
bracket of the pedal assembly.”
Ibid.
When the patents were interpreted in this way, the Court of Appeals held, they would not have
led a person of ordinary skill to put a sensor on the sort of pedal described in Asano.
That it might have been obvious to try the
combination of Asano and a sensor was likewise irrelevant, in the court’s view, because “ ‘ “[o]bvious to try” has long been held not
II
A
We begin by rejecting the rigid approach of the Court of Appeals. Throughout this Court’s engagement with the question of
obviousness, our cases have set forth an expansive and flexible approach inconsistent with the way the Court of Appeals applied
its TSM test here. To be sure,
Graham
recognized the need for “uniformity and definiteness.” 383 U.S., at 18, 86 S.Ct. 684. Yet the
principles laid down in
Graham
reaffirmed the “functional approach” of
Hotchkiss,
11 How. 248, 13 L.Ed. 683. See 383 U.S., at 12,
86 S.Ct. 684. To this end,
Graham
set forth a broad inquiry and invited courts, where appropriate, to look at any secondary
and its electrodes were magnesium and cuprous chloride, rather than zinc and silver chloride. The Court recognized that when a
patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in
the field, the combination must do more than yield a predictable result. 383 U.S., at 50-51, 86 S.Ct. 708. It nevertheless rejected
the Government’s claim that Adams’s battery was obvious. The Court relied upon the corollary principle that when the prior art
teaches away from combining certain known elements, discovery of a successful means of combining them is more likely to be
90 S.Ct. 305 (footnote omitted).
Finally, in
Sakraida v. Ag Pro, Inc.,
425 U.S. 273, 96 S.Ct. 1532, 47 L.Ed.2d 784 (1976), the
Court derived from the precedents the conclusion that when a patent “simply arranges old elements with each performing the same
function it had been known to perform” and yields no more than one would expect from such an arrangement, the combination is
obvious.
Id.,
at 282, 96 S.Ct. 1532.
[1] The principles underlying these cases are instructive when the question is whether a
patent claiming the combination of elements of prior art is obvious. When a work is available in one field of endeavor, design
to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made
explicit. See
In re Kahn,
441 F.3d 977, 988 (C.A.Fed.2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness”). As our precedents make clear, however, the analysis need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person
mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents. The obviousness analysis cannot
be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance
of published articles and the explicit content of issued patents. The diversity of inventive pursuits and of modern technology
counsels against limiting the analysis in this way. In many fields it may be that there is little discussion of obvious techniques or
combinations, and it often may be the case that market demand, rather than scientific literature, will drive design trends. Granting
be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution
encompassed by the patent’s claims.
[5] The first error of the Court of Appeals in this case was to foreclose this reasoning by
holding that courts and patent examiners should look only to the problem the patentee was trying to solve. 119 Fed.Appx., at 288.
170 CASE PRINTOUTS TO ACCOMPANY BUSINESS LAW
The Court of Appeals failed to recognize that the problem motivating the patentee may be only one of many addressed by the
sensor. The idea that a designer hoping to make an adjustable electronic pedal would ignore Asano because Asano was designed
to solve the constant ratio problem makes little sense. A person of ordinary skill is also a person of ordinary creativity, not an
automaton.
[6] The same constricted analysis led the Court of Appeals to conclude, in error, that a patent claim cannot be
proved obvious merely by showing that the combination of elements was “obvious to try.”
Id.,
at 289 (internal quotation marks
omitted). When there is a design need or market pressure to solve a problem and there are a finite number of identified,
& Co. Deutschland KG v. C.H. Patrick Co.,
464 F.3d 1356, 1367 (2006) (“Our suggestion test is in actuality quite flexible and not
only permits, but
requires,
consideration of common knowledge and common sense”);
Alza Corp. v. Mylan Labs., Inc.,
464 F.3d
1286, 1291 (2006) (“There is flexibility in our obviousness jurisprudence because a motivation may be found
implicitly
in the prior
art. We do not have a rigid test that requires an actual teaching to combine ...”). Those decisions, of course, are not now before us
and do not correct the errors of law made by the Court of Appeals in this case. The extent to which they may describe an analysis
adding a sensor to Asano was obvious, that does not establish that claim 4 encompasses obvious subject matter. This argument
was not, however, raised before the District Court. There Teleflex was content to assert only that the problem motivating the
invention claimed by the Engelgau patent would not lead to the solution of combining of Asano with a sensor. See Teleflex’s
Response to KSR’s Motion for Summary Judgment of Invalidity in No. 02-74586 (ED Mich.), pp. 18-20, App. 144a-146a. It is also
unclear whether the current argument was raised before the Court of Appeals, where Teleflex advanced the nonspecific,
208-210. The only statement in either declaration that might bear on the argument is found in the Radcliffe declaration:
“Asano
… and Rixon … are complex mechanical linkage-based devices that are expensive to produce and assemble and difficult to
package. It is exactly these difficulties with prior art designs that [Engelgau] resolves. The use of an adjustable pedal with a single
pivot reflecting pedal position combined with an electronic control mounted between the support and the adjustment assembly at
that pivot was a simple, elegant, and novel combination of features in the Engelgau ‘565 patent.”
Id.,
at 206, ¶ 16.
Read in the
achieving this advance. The Court of Appeals considered the issue too narrowly by, in effect, asking whether a pedal designer
writing on a blank slate would have chosen both Asano and a modular sensor similar to the ones used in the Chevrolet truckline
and disclosed in the ’068 patent. The District Court employed this narrow inquiry as well, though it reached the correct result
nevertheless. The proper question to have asked was whether a pedal designer of ordinary skill, facing the wide range of needs
created by developments in the field of endeavor, would have seen a benefit to upgrading Asano with a sensor.
In automotive
pedal assemblies must not precipitate any motion in the connecting wires,” Smith, col. 1, lines 35-37, Supplemental App. 274, the
designer would know to place the sensor on a nonmoving part of the pedal structure. The most obvious nonmoving point on the
structure from which a sensor can easily detect the pedal’s position is a pivot point. The designer, accordingly, would follow Smith
in mounting the sensor on a pivot, thereby designing an adjustable electronic pedal covered by claim 4.
Just as it was possible
to begin with the objective to upgrade Asano to work with a computer-controlled throttle, so too was it possible to take an
either. Teleflex may have made a plausible argument that Asano is inefficient as compared to Engelgau’s preferred embodiment,
but to judge Asano against Engelgau would be to engage in the very hindsight bias Teleflex rightly urges must be avoided.
Accordingly, Teleflex has not shown anything in the prior art that taught away from the use of Asano.
Like the District Court,
172 CASE PRINTOUTS TO ACCOMPANY BUSINESS LAW
finally, we conclude Teleflex has shown no secondary factors to dislodge the determination that claim 4 is obvious. Proper
questions of fact. That is not the end of the issue, however. The ultimate judgment of obviousness is a legal determination.
Graham,
383 U.S., at 17, 86 S.Ct. 684. Where, as here, the content of the prior art, the scope of the patent claim, and the level of
ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors, summary
judgment is appropriate. Nothing in the declarations proffered by Teleflex prevented the District Court from reaching the careful
conclusions underlying its order for summary judgment in this case.
Case 8.3
C.A.5 (Tex.),2010.
Maverick Recording Co. v. Harper
598 F.3d 193, 2009 Copr.L.Dec. P 29,896, 93 U.S.P.Q.2d 1924
Ruling on cross-motions for summary judgment, the district court found that appellant Whitney Harper infringed copyrights held by
a consortium of record companies in 37 sound recordings. It also found that whether Harper was an “innocent infringer” under 17
U.S.C. § 504(c)(2) was a question for the jury. On Plaintiffs’ motion, the court entered a final judgment against Harper in the
amount of $200 per infringed work, the minimum amount that could be awarded for innocent infringement. Harper appealed and
Plaintiffs cross-appealed. We affirm the district court’s finding of copyright infringement but reverse its conclusion that Harper could
press the “innocent infringer” defense.
FACTS AND PROCEEDINGS
In June 2004, MediaSentry, a company retained by Plaintiffs to investigate the infringement of their copyrights over the Internet,
identified an individual using a file-sharing program to share 544 digital audio files with other users of a peer-to-peer network. The
shared audio files included a number of Plaintiffs’ copyrighted sound recordings. By tracing the user’s Internet protocol address,
Plaintiffs ultimately identified Harper as the individual responsible for the file sharing.
To ensure that each of the 544 audio files was a downloadable file, MediaSentry initiated a download of the entire group. The
company captured screen shots showing all of the files that Harper was sharing. It also captured the metadata associated with
each file, which included the name of the artist and song. This information allowed Plaintiffs to identify those sound recordings on
which they held a copyright. MediaSentry fully downloaded six of the audio files from Harper’s “shared folder.” Subsequent
discovery indicated that Harper had downloaded all of the files from the Internet to the computer without paying for them, and that
she had not copied, or “ripped,” any of the songs from compact discs that she had bought legally.
During discovery, Plaintiffs examined Harper’s computer. The examination showed that its operating system had been reinstalled
in 2005. As a result, most of the files present on the computer in 2004, when MediaSentry performed its investigation, had been
overwritten. The forensic examination did show that three file-sharing programs had been installed and used on the computer,
including a program known as LimeWire, which had been used after the operating system was reinstalled. It also revealed a new
174 CASE PRINTOUTS TO ACCOMPANY BUSINESS LAW
FN1. In her brief, Harper asserts that the evidence was insufficient to show the existence of 33 out of 39 audio files. That
sum reflects a miscalculation. After the district court’s entry of judgment as to 37 audio files, six of which Harper admits
were on her computer, she must be challenging the sufficiency of the evidence on 31 audio files.
2004. MediaSentry also initiated downloads of the audio files to verify their existence and recovered metadata from which it could
identify the artist and song title of each file.
Harper submitted no evidence that calls into question Plaintiffs’ showing that she had downloaded the audio files. In her deposition,
239-47 (S.D.N.Y.2008) (collecting cases in which courts have considered but not embraced the “making available” theory of
distribution). We need not address the “making available” argument at this time, however, because Harper did not appeal the
CHAPTER 8: INTELLECTUAL PROPERTY AND INTERNET LAW 175
remain.
without authorization. The district court correctly granted summary judgment on the issue of infringement.
C. Due Process
Harper contends that the statutory scheme of damages for copyright violations outlined in § 504, as applied to her, violates due
process by imposing grossly excessive damages. She argues that, at the time of the infringement, she was young and did not
know that what she was doing was unlawful, and that fining her several hundred dollars per song for illegal downloading does not
comport with substantive due process.
[4] In her opposition to Plaintiffs’ motion for summary judgment, Harper stated that she had notified the district court of her intent to
challenge the constitutionality of the Copyright Act. She then presented the whole of her constitutional argument: “Whitney Harper
believes that the copyright law, as being applied by the plaintiff is unfair and over-reaching and exacts an unreasonable
punishment.” Harper did not cite any provision of the Constitution or explain why the punishment was so unreasonable that it
violated due process. The district court did not rule on her conclusory and unsupported assertion. It was not remiss in failing to do
The district court acknowledged that Plaintiffs provided proper notice on each of the published phonorecords from which the audio
files were taken. It found, however, that regardless of Harper’s access to the published phonorecords, such access would not
necessarily put her on notice of the copyrights: “a question remains as to whether Defendant knew the warnings on compact discs
were applicable in this [file-sharing network] setting.” The court discounted the argument “that one need only have access to some
CD and see that the recording is subject to copyright” for § 402(d) to bar the innocent infringer defense, because knowledge that
some CDs are copyrighted does “little to establish that, as a matter of law … an individual knew that she was accessing copyright
material from an entity that did not have permission to distribute such material.” In her brief opposing summary judgment and brief
on appeal, and at oral argument, rather than contest the fact of “access,” Harper contended only that she was too young and naive
to understand that the copyrights on published music applied to downloaded music.
These arguments are insufficient to defeat the interposition of the § 402(d) limitation on the innocent infringer defense. Harper’s
reliance on her own understanding of copyright law-or lack thereof-is irrelevant in the context of § 402(d). The plain language of the
statute shows that the infringer’s knowledge or intent does not affect its application.FN2 Lack of legal sophistication cannot
overcome a properly asserted § 402(d) limitation to the innocent infringer defense.