In addition to the one patent case (Helsinn), the Supreme Court also has one Copyright case lined-up for its October 2018 term:
Fourth Estate Public Benefit Corp. v. Wall-Street.com, No. 17-571
Section 411(a) of the Copyright Act provides that “no civil action for infringement of the copyright in any United States work shall be instituted until” either (1) “registration of the copyright claim has been made in accordance with this title,” or (2) “the deposit, application, and fee required for registration have been delivered
to the Copyright Office in proper form and registration has been refused.” 17 U.S.C. 411(a).The question presented is as follows: Whether a copyright owner may commence an infringement suit after delivering the proper deposit, application, and fee to the Copyright Office, but before the Register of Copyrights has acted on the application for registration.
This is a response for greg in the other thread which I’m apparently now unable to post on as a post cap seems to have kicked in.
“How would that have helped BU?”
It would have helped them at least get around the immediate argument and forced their opposition to narrow the argument to focus on 6 as more narrowly limited to epi growth. After the argument is so narrowed it makes it easier to argue that it isn’t reasonable to require that level of enablement as a matter of drafting as there are other methods other than epitaxy that will suffice to enable the general structure actually claimed. Remember the actual claim isn’t actually all that narrow on that last limitation, it can be broadly enabled and at some point it is unreasonable to require enablement of everything that is outlandish (as has been pointed out above). And further this is a device claim, epi growth is a method not claimed. In any event it makes the opposition have to start their argument again, this time with a weaker argument.
“If the claim reads on an epitaxial growth embodiment, then they need to have enabled that epitaxial growth embodiment.”
Not necessarily. A lot of claims “read on” a lot of things that it isn’t reasonable to require enablement for. We generally give those a pass, especially when it comes to devices that might can be made by one method but not others. He’s claiming the device/layers, not the method of making it.
“It is beside the point to say that the claim reads on other things aside from epitaxial growth embodiments.”
Nah bruh. Those other methods enable the device claim.
“If they have enabled some of those other embodiments, then they need to limit their claims to the embodiments that they have enabled. One is not permitted to claim more than one has enabled.”
He’s claiming the device, not the method bruh.
I am curious to know why Fourth Estate did not have their copyright application expedited for the $800 additional fee. Usually, the copyright office will take less than 2 weeks to register or refuse their copyright application if you pay the fee to have it expedited. The case did mention that their might have been a statute of limitations issue. Any thoughts?
First thing that came to mind was “What are the (international) treaty terms that the US has agreed to and implemented into law?”
Given that copyright protection inures at the point of time of capturing in a fixed media, and that anything else related to the mechanics of registration may be deemed as “administrative steps,” an agreed to – and implemented into law – notion reflecting this may be determinative.
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