Welcome to Skilled in the Art. I'm Law.com IP reporter Scott Graham, and I regularly forecast doom for fair use protections. This week it's a Second Circuit ruling that blows up “the search engine for broadcast.” I've also got news of some IP litigator moves and upcoming arguments at the Federal Circuit. As always, email me tips on anything IP and find me on Twitter @scottkgraham.

 

The TVEyes Don't Have It at Second Circuit

I've said it before. I think we're past peak fair use in the United States. Another signpost came from the Second Circuit on Tuesday, when it rejected the fair use defense of TVEyes, a company that bills itself as “the search engine for broadcast.”

Second Circuit Judge Dennis Jacobs described TVEyes as television's version of Google Books, which the Second Circuit found to be a fair use in 2015. “However, we cautioned that the case 'test[ed] the boundaries of fair use,'” Jacobs wrote Tuesday. “We conclude that defendant TVEyes has exceeded those bounds.”

As my ALM colleague Colby Hamilton explained, TVEyes records more than 1,400 channels 24/7, then uses close-captioning and speech-to-text software to make all of it searchable by the words spoken in video. Journalists, marketers, law enforcement and even the White House pay $500 a month for access to the index—which is fine so far, according to the Second Circuit.

But once a subscriber finds content it wants to view, TVEyes provides a 10-minute clip, which can be shared with non-subscribers (including potentially millions of social media users). Fox News Networks said that infringes its copyright, and the Second Circuit agreed. Although the search function is “at least somewhat transformative,” Jacobs wrote, TVEyes' commercial success proves there is “a plausibly exploitable market” for searchable TV content. TVEyes must pay Fox a license, or “Fox itself might wish to exploit the market for such a service rather than license it to others.”

The decision is a win for Kirkland & Ellis partner Dale Cendali (and not her only win that day). Quinn Emanuel partner Kathleen Sullivan represented TVEyes on appeal.

TVEyes is a privately held company based in Connecticut. But it feels as if the case was about Google as much as anyone. One of Google's primary IP counsel represented TV Eyes and Google submitted an amicus briefarguing that “search technology is a paradigmatic example of non-infringing use.”

Not only did the Second Circuit rule otherwise, it seemed to downgrade the transformative use factor in the fair use analysis. This might be a warmup for the Federal Circuit's upcoming ruling in Oracle v. Google.

The issue seemed to be top-of-mind for Federal Circuit Judge Richard Taranto during arguments last December. “How does your theory of transformative preserve in a robust way the exclusive right to derivative works?” is how he put it to Google's attorneys.

Cooley's Tom Friel Joins King & Spalding

Some big comings and goings in the Silicon Valley IP community this week.

First, Tom Friel, the head of Cooley's IP litigation practice from 2007 to 2016, has joined King & Spalding. “Tom has a great reputation in Silicon Valley and beyond,” King & Spalding's Andy Bayman said in a news release. “Major clients from software to semiconductors to the automotive industry regularly turn to him to fight for their patents and protect their other intellectual property.”

Friel was a name partner at Skjerven Morrill MacPherson Franklin & Frielbefore joining Cooley in 2000. “I look forward to working with my new colleagues in the ever-evolving IP litigation landscape,” he said in the news release.

Meanwhile, my ALM colleage Xiumei Dong reports that Clayton Thompsonand Jake Zolotorev are returning to DLA Piper after leaving that firm in 2011 to help co-found IP boutique Feinberg Day Alberti & Thompson.

“Clayton and Jake are highly respected patent litigators who bring decades of experience serving clients across the technology sector,” DLA's Mark Fowlersaid in a news release.

DLA alums Elizabeth Day, David Alberti, Sal Lim and Marc Belloli still like things just fine at Feinberg Day. The firm has been re-christened Feinberg Day Alberti Lim & Belloli.

 

Who's Arguing?

As I mentioned Tuesday, next week is a calendar week at the Federal Circuit. Here are a few more cases and advocates that caught my eye:

➤ Chestnut Hill Sound v. Apple. Remember the George? It was an iPod-friendly boombox type of device that was once a best of show winner at Macworld. Now the developer of the George, Chestnut Hill, has turned on Apple, suing it for infringing its patent on a device that plays both locally stored and remotely accessed content. Apple petitioned to the Patent Trial and Appeal Board, which invalidated the patent as obvious. Caldwell Cassidy & Curryassociate Alexis Mosser will argue Chestnut Hill's appeal, while Fish & Richardson partner Juanita Brooks will defend Apple's judgment.

➤ PPC Broadband v. Corning Optical Communications: Kimball Anderson, a partner at Winston & Strawn, will try to bail Corning out from a $50 million judgment (tried by a different law firm) that included double damages for willful infringement. Anderson will argue that the Court of International Trade previously cleared Corning of infringing PPC's patent on flexible coaxial cable connectors. Finnegan, Henderson, Farabow, Garrett & Dunner partner Mike Jakes will argue that the verdict properly compensates PPC for “serial copying” by its primary competitor.

➤ EveryMD.com v. Facebook. Frank Weyer of L.A.'s TECHCOASTLAW will have extra on the line when he asks the Federal Circuit to revive two invalidated EveryMD.com patents. He's not just the lawyer, he's one of the co-inventors. When Facebook is hauled before the Federal Circuit, you can count on Cooley's Heidi Keefe to be alongside. She'll be defending U.S. District Judge Andre Birotte's decision finding the patents ineligible under Section 101.

What's the Deadline for Serving Podcast Contentions?

IP litigation can be awfully complex, what with local rules, Markman hearings, PTAB challenges and so on. My ALM colleague Jenna Greene explains how Versata Software Inc. has added yet another wrinkle: the podcast. As part of a long-running IP dispute with Ford Motor Co., Versata has hired former presidential counselor Lanny Davis to host “To Catch a Thief: The Story of Ford Motor Company Stealing $1 Billion in Trade Secrets From Versata.”

Davis explains in the most recent episode that Ford had the gall to challenge Versata patents as obvious and unoriginal before the Patent Trial and Appeal Board. The PTAB denied the claims. “Yet Versata could not sue Ford for defamation because its lies were submitted in legal documents,” Davis says. Hence, the podcast.

Expecting Ford's antitrust counter-podcast in 3, 2, 1 …

And a Shout Out to Gibson Dunn

Biogen was looking for billions in damages from Pfizer and Merck's EMD Serono for infringing Biogen's patent on multiple sclerosis treatment Avonex. It turns out, after a four-week trial in New Jersey federal court, that Biogen's patent is invalid and Biogen won't recover anything.

That's a nice win for a Gibson, Dunn & Crutcher team led by partner Wayne Barsky, along with local counsel at Gibbons PC.

That's all from me this week. Remember, you can email or tweet me your feedback. Or what the heck, make me a podcast.