Warner Chappell Music, Inc. v. Nealy, 601 U.S. 366 (2024).
By JOSEPH SOBERON
Sherman Nealy and Tony Butler created Music Specialist, Inc. (“MSI”) in 1983, creating several songs from the mid to late 1980s, but the company dissolved shortly thereafter, and Nealy went to prison from 1989-2008.
Warner Chappell Music, Inc. (“WCM”) is a music licensing company. While Nealy was in prison, Butler contracted with WCM, which allowed them to license several of MSI’s songs. WCM, in turn, contracted with several other parties, allowing them to use MSI’s work in their production. Subsequent works of these contracts include several songs by The Black-Eyed Peas, Kid Sister, and most notably, Flo Rida’s “In the Ayer,” which was then licensed to several television shows such as “So, You Think You Can Dance?”
After his release in 2008, Nealy remained in the dark regarding the contract with WCM and returned to prison in 2012. Nealy was re-released from prison in 2015, and in 2018, he filed this suit alleging copyright ownership for the works created by MSI and that WCM’s use of the works infringed upon his rights.
* * * * * * *
Minerva Surgical, Inc. v. Hologic, Inc, 594 U.S. 599 (2021).
By MADELINE TOLL
Petitioner, Minerva Surgical, Inc. (“Minerva”), was founded by Casba Truckai (“Truckai”) in 2008. Before founding Minerva, Truckai invented the NovaSure System. Respondent, Hologic, Inc., et al. (“Hologic”) acquired Truckai’s NovaSure System patent and later renewed the patent with a newly added claim. This is a lawsuit regarding an alleged patent infringement.
Truckai invented the NovaSure System in the late 1990s to treat abnormal uterine bleeding. This invention functioned by using a moisturepermeable applicator head to destroy targeted cells in the uterine lining. The Patent and Trademark Office issued a patent, which Truckai assigned (transferred) to his company, Novacept, Inc. (“Novacept”). Hologic subsequently acquired Novacept, including its portfolio of patents and patent applications. Truckai then founded Minerva and created a new device with the same overall function, which he claimed was an improved version of the NovaSure System. At the same time, Hologic filed a continuation application with the Patent and Trademark Office, drafting one of its claims to encompass applicator heads generally, rather than specifically addressing applicator heads that were moisture-permeable. The Patent and Trademark Office issued the altered patent to Hologic in 2015.
* * * * * * *
Salazar v. AT&T Mobility LLC, 64 F.4th 1311 (Fed. Cir. 2023).
By MARIANNA NOGUERAS
Salazar v. AT&T Mobility LLC involves a patent infringement dispute initiated by Joe A. Salazar, who holds U.S. Patent No. 5,802,467 (the ‘467 patent). Salazar brought this lawsuit against several telecommunications companies, including AT&T Mobility LLC, Sprint United Management Company, T-Mobile USA, Inc., and Verizon Wireless (operating as Cellco Partnership Inc.). The ‘467 patent relates to a microprocessor-based system that can 1) process and manage communications, 2) store and retrieve data, and 3) facilitate wired and wireless connections. AT&T’s product used standard industry protocols like Wi-Fi and Bluetooth for wireless communication, unlike Salazar’s system, which required a custom microprocessor capable of generating unique communication protocols for multiple external devices. 1
In 2016, Salazar filed a similar patent infringement lawsuit against High Tech Computer Corporation (HTC), alleging HTC products infringed on the ‘467 patent by utilizing similar technology. However, the jury in that case found that HTC’s products did not infringe on the patent, though it did not make a decision regarding the patent’s validity. This case against HTC provided a precedent, particularly regarding the types of products and technologies that Salazar claims are covered by the ‘467 patent. Salazar’s lawsuit against AT&T involves similar claims as the prior HTC case but expands to include additional telecommunications companies as defendants.
* * * * * * *
Axonics, Inc. v. Medtronic, Inc., 75 F.4th 1374 (Fed. Cir. 2023).
By EMILY PEDRO
Defendant Medtronic Inc. (“Medtronic”) has two patents, ‘758 and ‘148, that share a specification for charging implanted medical devices through the skin. The patents award the creator credit for a more efficient way to charge these medical devices, enhance device performance, and reduce the need for surgical inventions. These patents were argued unpatentable because the information was already public knowledge or too similar to existing ideas. Plaintiff Axonics Inc. (“Axonics”) is a medical device company that has filed a lawsuit challenging the validity of these patents, arguing that they are not new or unique.
Medtronic’s ‘758 and ‘148 patents were created to improve the charging efficiency by automatically dispersing the power output based on the parameters of the implanted device. The charging occurs by inductive coupling, transferring energy through the skin to the implanted device. The charging power adjusts its voltage based on the measured current source in the implanted device.
The language in the ‘758 patent at issue regards what phrase should be used to describe the process: “value associated” passing through the internal power source or “measured current” passing through the internal power source. 1 The second issue includes a discussion of the “wherein” limitations of each phrase in the new construction.
Medtronic’s claims are challenged by the two “wherein” clauses, which require the power of the external power source to be automatically controlled based on the measured voltage of the internal device.
* * * * * * *
