Welcome to Skilled in the Art. I'm Law.com IP reporter Scott Graham. Let's face it: Good lawyering is extremely important, but sometimes the luck of the draw can be a factor too. I think both have been in play in the copyright litigation over CBS Radio's digitally remastered recordings. I'll explain below. I've also got a useful fee litigation practice tip, and – stop me if you've heard this before – some big lateral news in the IP space. As always you can email me your thoughts and feedback and follow me on Twitter.

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I Left My Luck in the Central District

CBS Radio and Irell & Manella partner Bobby Schwartz had some luck on their side a few years ago when they knocked out potentially all of the California copyright litigation involving pre-1972 sound recordings. Plaintiff ABS Entertainment had tried to steer the case to U.S. District Judge Philip Gutierrez in 2015, after he granted summary judgment of infringement to another plaintiff.

But Gutierrez didn't want ABS Entertainment v. CBS, so it was assigned to U.S. District Judge Percy Anderson. And he couldn't have been more eager to test CBS' creative theory that the newer, digitally remastered recordings of those pre-1972 works should be governed by the federal copyright system. “We could be in a position in a couple of months to have a summary judgment motion just on that issue?” Anderson asked at a conference just a few months into the litigation. “Because if they're right … the case is over.”

Five months later, Anderson had ruled and the case was indeed over. Schwartz and the CBS team appeared to have dealt a body blow not only to plaintiff ABS, but potentially all other artists suing to enforce pre-1972 rights.

Then at the Ninth Circuit, lady luck turned her back. Instead of a West Coast, infringer-friendly style panel, CBS drew a visiting judge—and not just any visiting judge. Richard Linn is an experienced IP lawyer from the content-owner-centric Federal Circuit. He dominated the argument—or at least he shared domination with Ninth Circuit Judge Marsha Berzon—and on Monday he authored a unanimous opinion reversing Anderson and putting the litigation back at square one.

Linn relied in large part on a 1997 Ninth Circuit opinion involving inflatable breakfast cereal characters that had been mentioned in passing in ABS' briefing. He also drew from outside the Ninth Circuit, highlighting an un-briefed Tenth Circuit decisionwritten by now-Justice Neil Gorsuch.

The Ninth Circuit arguments were held in Pasadena, but Linn's mind seemed on the court's home base 400 miles north. He wrote that even if Tony Bennett's 1962 hit “I Left My Heart in San Francisco” were remastered decades later to reduce noise or clicking, it “retains the same essential character and identity as the underlying original sound recording.” So the pre-1972 rules apply.

It's a win for Robert Allen of McKool Smith, who argued the appeal for ABS. “Now that that roadblock has been removed,” Allen said Tuesday, “we can proceed and hopefully show they are liable for infringing our clients' copyrights.”

Unless, of course, Schwartz and CBS get the case before the U.S. Supreme Court. But that would take an extraordinary amount of luck.

Maybe someone on the high court can't stand Tony Bennett?

 

PTAB Fees Might Be 'Exceptional' After All

If it had been me, I would have settled. If the Federal Circuit told me “there's no legal authority” to award $737,000 in attorneys fees, that they “just can't” award the fees, and then leaned on me to work out a settlement, I'd have caved.

But this is just one of many ways in which I am not like Justin Timberlake, Britney Spears and their production companies. They spurned the Federal Circuit's advice—and were rewarded with an opinion Monday granting all of their requested feesin a patent dispute over panoramic video displays.

U.S. District Judge Manuel Real awarded fees to the pop stars in 2015, saying NPE Large Audience Display Systems' case had been frivolous. LADS appealed and the Federal Circuit sent it back, saying Real had erred and telling him to reconsider the bills submitted by Timberlake's and Spears' Pryor Cashman counsel.

But Real stuck to his guns, explaining his reasoning and the amount awarded with more precision.

On the latest trip to the Federal Circuit, the judges pointed to another problem: Most of the $737,000 had been incurred during reexamination proceedings at the Patent Trial and Appeal Board. “That's legal error,” Judge Todd Hughes told Pryor Cashman partner Andrew Langsam. “The PTAB is not a wing of the district court. It is a separate administrative proceeding, and the amounts expended there are not included in the attorney fee statute.”

The parties agreed to hold a settlement conference to see if they could agree on how much PTAB fees to exclude. But the effort failed, and Langsam submitted a brief pointing to a 1988 Federal Circuit case where reexamination fees were in fact awarded as “useful and of a type ordinarily necessary” in district court patent litigation.

As I wrote Monday, the Federal Circuit punted on the PTAB fee issue, saying LADS had waived it by failing to raise it in its original briefing.

It's a nice win for Langsam, not to mention Judge Real. “The defendants and their attorneys are pleased with the decision of the U.S. Court of Appeals affirming the award of substantially all attorneys' fees expended in defending this patent case,” Langsam said.

The decision also teed up a practice tip from Fish & Richardson partner John Dragseth, who's not involved in the case. “The court's decision shows that the availability of fees for pursuing a post-grant proceeding is an open issue,” he said, “so parties should seek those fees under Section 285 until the Federal Circuit says they aren't available.”

 

104 IP Lawyers in One Fell Swoop

There's been a lot of lateral news in the IP market all year long. Maybe the biggest of all broke earlier today when Venable announced it's acquiring 104-lawyer IP boutique Fitzpatrick, Cella, Harper & Scinto. My Law.com colleagues Ryan Lovelace and Christine Simmons have the write-up.

The merged firm will total 800 attorneys and double the size of Venable's N.Y. office to more than 170.

“We've got a longstanding commitment both to New York and to the IP practice,” Venable chairman Stu Ingis said, calling the merger “a home run for us.”

It's also the latest step toward extinction for large IP-only firms in New York, the article notes. Fitzpatrick joins Kenyon & Kenyon; Pennie & Edmonds; Fish & Neave; Morgan & Finnegan; Darby & Darby; and Brumbaugh, Graves, Donohue & Raymond in the great IP beyond.

 

Texas IP Boutique Adds Partners

Meanwhile, Houston IP boutique Patterson + Sheridan showed this week that partners can still move in the opposite direction. Patterson brought over John Barr Jr. from King & Spalding and Jay Yates from Hogan Lovells.

Todd Patterson told my Law.com colleague Brenda Sapino Jeffreys that the hires will help his firm add capabilities beyond IP litigation. Yates has concentrated on IP litigation and patent prosecution for a variety of industries, but Barr, in addition to patent litigation, handles business and energy litigation.

 

If We Can't Have Sovereign Immunity, Nobody Can

The Saint Regis Mohawk Tribe has asked the Federal Circuit to reconsider en banc its decision last month that the Patent Trial and Appeal Board need not recognize tribal sovereign immunity.

“This case presents the question whether a federally recognized Indian tribe—and, in fact, whether any sovereign—may assert sovereign immunity in an inter partes review (“IPR”) before the Patent Trial and Appeal Board,” the tribe states in a petition signed by Jonathan Massey of Massey & Gail and Marsha Schmidt.

I'm guessing that the University of Minnesota and the 14 state attorneys general supporting its effort to salvage state sovereign immunity at the PTAB aren't super-thrilled to see the tribe kick off its petition that way.

The university, which is represented by Wolf, Greenfield & Sacks, is scheduled to brief the impact of the St. Regis decision to the Federal Circuit this fall.

That's all from Skilled in the Art for this week. I'll see you all again on Friday.