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The Federal Circuit’s recent decision in Google LLC v. Sonos, Inc. (24-1097) offers a compelling look at the evolving doctrine of prosecution laches, the written description requirement, and the practical realities of patent enforcement in the tech sector where technology typically evolves much faster than other industries. The case, which pitted two giants of the smart speaker and media playback industry against each other, involved a lengthy prosecution resulting in claims that covered technology adopted by Google before issuance that, according to the appellate panel, did not rise to the level of egregious misuse required for a patent to be rendered unenforceable under the doctrine of prosecution laches.

Background: The Zone Scene and Direct Control Patents

Sonos’ asserted patents, the so-called “Zone Scene” patents (U.S. Patent Nos. 10,469,966 and 10,848,885) and the “Direct Control” patent (U.S. Patent No. 10,779,033), are directed to the orchestration of media playback across multiple devices. The Zone Scene patents describe and claim the ability to create and save overlapping groups of speakers — “zone scenes” — to play synchronized audio, while the Direct Control patent covers the use of a control device (like a smartphone) to transfer playback responsibility to a speaker.

The litigation began with Google seeking a declaratory judgment of noninfringement in the Northern District of California, followed by Sonos’ infringement suit in the Western District of Texas. After a different panel of the Federal Circuit chastised the Western District of Texas for trying to hang on to the dispute, the cases were consolidated in the Northern District of California.

A series of summary judgment motions and a jury trial set the stage for the second appellate review.  In this aspect, before trial, the district court found that the Direct Control patent was invalid as obvious over Google’s YouTube Remote system in combination with Google’s U.S. Patent No. U.S. Patent 9,490,998. As a result, only the Zone Scene patents were at issue at trial and factored into the more than $32.5 million damages verdict awarded to Sonos by the jury.

On appeal, Sonos’ attempts to persuade the Federal Circuit that the district court was wrong about the invalidity of the Direct Control patent were unsuccessful. In fact, this was the only issue on appeal in which the Federal Circuit agreed with the district court. The other two challenges on appeal are discussed in a bit more detail below.

Written Description: Sounds Clear Enough

A central issue on appeal was whether Sonos’ Zone Scene patents were supported by adequate written description, particularly regarding the “overlapping” nature of zone scenes — where a single speaker could belong to multiple groups. The district court initially sided with Sonos on this issue but reversed course post-trial holding that the Zone Scene patents lacked written description for this feature and were thus invalid under 35 U.S.C. § 102. Wait, why § 102 you might ask? Well, the district court reasoned that, because Sonos’ 2019 amendment to the specification — which “clarified” the overlapping functionality — was a new matter not supported by the original 2006 and 2007 applications, the earliest filing date afforded the claims was after Google’s accused products were introduced and the claims were anticipated under § 102 by Google’s accused products.

The Federal Circuit disagreed with this approach by the district court procedurally and substantively. It thus treated the lower court’s invalidity ruling as arising under 35 U.S.C. § 112 —not 35 U.S.C. § 102 — and found that the original disclosure, particularly the descriptions accompanying Figures 3A and 3B, adequately conveyed to a person of ordinary skill that the inventors possessed the concept of overlapping zone scenes as early as 2007. The court emphasized that the written description requirement under 35 U.S.C. § 112 is satisfied if the disclosure, as a whole, reasonably conveys possession of the claimed invention. Here, the specification discussed multiple groups and scenes with overlapping room assignments, which was considered sufficiently descriptive of the overlapping nature of zone scenes. As such, the appellate panel reversed the district court’s invalidity judgment on this “ground.”

Prosecution Laches: Delay Does Not Make a Modern Submarine!

The other key issue on appeal was whether the Zone Scene patents were unenforceable under the doctrine of prosecution laches. After trial, the district court held the Zone Scene patents to be unenforceable under the doctrine of prosecution laches, finding that Sonos’ 13-year delay in claiming overlapping zone scenes was an “egregious misuse” of the patent system. In its reversal of the lower court’s ruling, the appellate panel drew heavily from the guidance in Hyatt v. Hirshfield where it is explained that prosecution laches may render a patent unenforceable where a patentee’s conduct constitutes an egregious misuse of the statutory patent system and set forth the two required elements:

  1. The patentee’s delay in prosecution must be unreasonable and inexcusable under the totality of circumstances; and 
  1. The accused infringer must have suffered prejudice attributable to the delay.

The panel found that Google had not suffered the requisite prejudice under the second prong and reversed the district court’s laches ruling. While the delay in claiming overlapping zone scenes by Sonos is certainly lengthy, the fact that the disclosure supporting the technology was published in 2013 — well before any purported investment by Google into the technology — weighed against any argument by Google that it had been caught unaware or that it invested in the technology in reliance on the absence of such claims. In this vein, the opinion includes a reminder that a patentee is free to pursue claims in a continuation application that encompass a competitor’s products as long as there is supporting disclosure. In fact, while “subject matter disclosed but not claimed is generally dedicated to the public, there is an exception for subject matter ‘claimed in a continuation or other application.’”

This fact pattern is easily distinguishable from the fact pattern in PMC v. Apple where PMC had filed hundreds of continuation applications, delayed prosecution for decades, and only surfaced its claims once the technology was widely adopted — classic submarine tactics. PMC’s calculated approach to keeping its claims underwater until after the technology was widely adopted was viewed by the Federal Circuit to be highly prejudicial to Apple because Apple had begun developing its technology in early 2000 and started to offer it commercially in 2003 — a decade before the asserted patent was issued. Indeed, there was no publication of the patent application prior to issuance as was the case here with the Zone Scene patents.

The “long con” strategies that once defined the era of submarine patents — strategies that were at the heart of the PMC v. Apple saga — simply did not exist here. This case demonstrates that mere delay, without concrete prejudice to competitors, is insufficient to trigger prosecution laches. The Federal Circuit’s insistence on actual prejudice, not just theoretical harm, marks a significant check on the reach of the prosecution laches doctrine.

Takeaways for Patent Prosecution and Enforcement

The opinion underscores several key lessons:

  • Written Description Still Matters – Even in complex, evolving technologies, the original disclosure must support later-claimed features. However, courts will read the specification as a whole and give credit where the invention is reasonably described.
  • Prosecution Laches Requires Prejudice – The doctrine is alive but slightly more cabined than before. Without evidence that a competitor invested in the technology before the claimed technology was disclosed, laches will not bar enforcement.
  • Strategic Prosecution Must Be Balanced – While continuation practice and claim amendments are legitimate, unreasonable and unexplained delays that prejudice others remain risky.

This decision puts serious limits on defendants who may want to invoke laches based on continuation applications – especially where they argue that the patent owner could have filed the claims earlier. While the failure to assert a claim in a timely manner can result in that claim being barred by laches under certain facts, prosecution delay alone is not enough to prevent a claim from being enforceable: It is up to the defendant to prove why that delay makes it unfair for the court to give relief, including a showing of prejudice by the accused infringer. In this aspect, this decision is helpful for patent owners to rely on when arguing a lack of prejudice to the accused infringer (providing that the later claimed technology was publicly available before the accused infringer started to develop and/or commercialize the technology).

In addition, this decision is a valuable reminder to companies and their respective patent counsel when performing clearance analyses to not just review issued claims in a patent family, but also consider the specification and other non-claimed technology if the family remains open.

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The Federal Circuit’s recent precedential decision in In re Erik Brunetti has surely raised some eyebrows in the trademark community (and beyond), not just for its subject matter (the attempted registration of a certain provocative word, which we will refer to here as the “F-bomb” for sensitive eyes and ears, for various goods and services) but also for its pointed critique of the Trademark Trial and Appeal Board’s (TTAB) reasoning and its implications for the “failure to function” doctrine. Let’s break down what happened, why it matters, and what practitioners should watch for as the case heads back to the TTAB.

Background: The Battle Over the Trademark at the USPTO

Erik Brunetti is no stranger to controversy or using the court system to his advantage. In 2019, the U.S. Supreme Court sent shockwaves through the trademark community in Iancu v. Brunetti when it held that the Lanham Act’s prohibition on registration of immoral or scandalous trademarks violates the First Amendment. That decision centered on Brunetti’s attempt to register the trademark “FUCT” in 2011, the TTAB’s refusal to register the mark based on the finding that the mark constituted “immoral or scandalous matter” under Section 1052(a) of the Lanham Act, and the ultimate reversal of the TTAB by the Supreme Court. Brunetti now has nine FUCT registrations in a variety of classes. As an aside, it will be interesting to see whether these marks are renewed because it looks as if the clothing brand has made some changes that might limit Brunetti’s choices for acceptable specimens of use (view here at your own risk).

After this huge win, Brunetti filed four intent-to-use applications to register the F-bomb for a range of goods (from sunglasses to jewelry to backpacks) and retail services.  The TTAB affirmed the examining attorney’s refusal to register the marks — not on the grounds of scandalousness since that avenue was unavailable to it — but because the mark allegedly “failed to function” as a trademark. In other words, the TTAB took the position that consumers would not perceive the F-bomb as indicating the source of the goods or services. It further explained that the word is a “commonplace term, message, or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment.” The TTAB concluded that the word is so ubiquitous and expressive that it cannot serve as a source identifier.

The Federal Circuit’s Take: Choose Your Words Wisely TTAB

On appeal, a panel of the Federal Circuit vacated the TTAB decision and remanded for further proceedings, finding the TTAB’s reasoning lacking in clarity and precision.  While the court rejected most of Brunetti’s constitutional arguments (including claims of viewpoint discrimination and retaliation), it zeroed in on the need for “reasoned decision-making” under the Administrative Procedure Act (APA).

The panel acknowledged that the Lanham Act requires a mark to function as a source identifier, and that “failure to function” is a valid ground for refusal. However, the panel found the board’s analysis lacking in several respects:

  • Lack of Clear Standards – The panel criticized the TTAB’s decision for “sound[ing] in fact very much as though it has taken an ‘I know it when I see it’ approach to failure-to-function refusals.” The panel found that the TTAB failed to articulate what evidence or circumstances would allow a widely used word like the F-bomb to be registered, or what would distinguish it from other registered marks consisting of common words (like “LOVE”). Further, the TTAB “determined that Mr. Brunetti failed to meet a standard, but it did not articulate what that standard would be.”
  • Inconsistent Treatment – The panel noted that the USPTO has, in fact, registered the F-bomb for other goods such as snow globes and gummy candies and has registered other all-purpose words. The TTAB’s refusal to grapple with these inconsistencies or explain what “contextual information” would make a difference was a key factor in the panel’s remand.
  • Third-Party Use and Source Identification – While the panel recognized the TTAB’s proper consideration of third-party use of the F-bomb on similar goods, it found that this alone does not establish a coherent standard for when a mark fails to function.

What’s Next at the TTAB?

To be clear for all you F-bomb lovers out there, the Federal Circuit’s remand is not a green light for Brunetti’s registration. But it is a clear directive to the TTAB to develop and articulate a rational, consistent standard for “failure to function” refusals, especially when dealing with so-called “all-purpose word marks.” The TTAB must explain what evidence would suffice to show that a term — even one as ubiquitous and expressive as the F-bomb — can or cannot serve as a source identifier.

This decision is likely to have ripple effects beyond this case. The “failure to function” doctrine has been invoked with increasing frequency in recent years, and the Federal Circuit’s demand for clarity and consistency will force the TTAB to sharpen its analysis and provide more guidance to applicants and practitioners.

Key Takeaways for Trademark Practitioners

  • Expect More Rigorous TTAB Analysis – Going forward, the USPTO will need to provide clearer explanations and standards in “failure to function” cases, especially for marks consisting of common or expressive words.
  • Past Registrations Matter — at Least for Consistency – While the USPTO is not bound by prior examining attorney decisions, the Federal Circuit has signaled that it cannot simply ignore inconsistencies or refuse to explain them.
  • Evidence of Source Identification Is Critical – Applicants should be prepared to submit evidence that consumers perceive their mark — even if it is a common or expressive word — as a source identifier for their goods or services.
  • The “I Know It When I See It” Era Is Over – The days of opaque, subjective refusals are likely numbered. The TTAB must now provide reasoned, transparent decision-making that can withstand appellate scrutiny.

The Federal Circuit’s remand in In re Brunetti is a wake-up call for the TTAB and a potential turning point in the application of the “failure to function” doctrine. As the TTAB revisits this issue, trademark owners and practitioners should watch closely for new guidance on what it takes for a mark — no matter how provocative or commonplace — to function as a trademark in the eyes of the law. 

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The Federal Circuit recently issued a significant decision in the ongoing patent litigation between Laboratory Corporation of America Holdings (Labcorp) and Qiagen Sciences, LLC, reversing a Delaware district court’s judgment that had found Qiagen liable for infringement of Labcorp’s patents-at-issue. In doing so, it vacated the $4.7 million damages award against Qiagen and ordered the district court to grant judgment as a matter of law (JMOL) of non-infringement.

Background

The patents-at-issue — U.S. Patent No. 10,017,810 and U.S. Patent No. 10,450,597 — cover methods for preparing DNA samples for sequencing, with a focus on “enrichment” techniques that allow researchers to selectively amplify regions of interest in a DNA sample.  Labcorp (as successor to ArcherDX and Massachusetts General Hospital) alleged that Qiagen’s DNA preparation kits infringed claims of both patents.

With respect to the ʼ810 patent, representative claim 16 reads as follows:

16. A method for preparing a nucleic acid for sequencing, the method comprising:

(i) ligating a universal oligonucleotide tail adaptor that comprises a first ligatable duplex end and a second unpaired end to a nucleic acid comprising a known target nucleotide sequence to produce a ligation product, the universal oligonucleotide tail adaptor comprising an amplification strand and a blocking strand, wherein a 3′ duplex portion of the amplification strand and a 5′ duplex portion of the blocking strand are substantially complementary and form the first ligatable duplex end;

(ii) amplifying the ligation product using a first target-specific primer that specifically anneals to the known target nucleotide sequence and a first adaptor primer having a nucleotide sequence identical to a first portion of the amplification strand; and

(iii) amplifying an amplification product of (ii) using a second target-specific primer that specifically anneals to the amplification product of (ii) and a second adaptor primer having a nucleotide sequence identical to a second portion of the amplification strand, wherein ligating in step (i) comprises performing an overhang ligation reaction, and wherein the universal oligonucleotide tail adaptor further comprises a barcode portion.

The district court construed the term “second target-specific primer” to mean “a single-stranded oligonucleotide comprising a 3′ portion comprising a nucleic acid sequence that can specifically anneal to a portion of the known target nucleotide sequence comprised by the amplicon resulting from step (b), and a 5′ portion comprising a nucleic acid sequence that is identical to a second sequencing primer.” The term “second adaptor primer” was construed to mean “a nucleic acid molecule comprising a nucleic acid sequence identical to a portion of the first sequencing primer and is nested with respect to the first adaptor primer.”

With respect to the ʼ597 patent, claim 1 was considered representative and reads as follows:

1. A method of preparing nucleic acids for analysis, the method comprising:

(a) contacting a first nucleic acid template comprising a sequence of a first strand of a double-stranded target nucleic acid with a complementary target-specific primer that comprises a target-specific hybridization sequence, under conditions to promote template-specific hybridization and extension of the target-specific primer;

(b) contacting a second nucleic acid template comprising a sequence of a second strand that is complementary to the sequence of the first strand of the double-stranded target nucleic acid with a plurality of different primers that share a common sequence that is 5′ to different hybridization sequences, under conditions to promote template-specific hybridization and extension of at least one of the plurality of different primers, wherein the different hybridization sequences have different 3′ ends, and wherein each primer of the plurality of different primers does not anneal to the same sequence of the double-stranded target nucleic acid as any other primer of the plurality of different primers,

wherein, following (a) and (b), an extension product is generated to contain both a sequence that is characteristic of the target-specific primer and a sequence that is characteristic of the at least one of the plurality of different primers; and

(c) subjecting the extension product to an amplification reaction comprising successive rounds of polymerase extension of i) a tail primer that comprises a 3′ sequence that specifically anneals to the complement of the common sequence and that comprises a 5′ tail sequence, and ii) a primer that specifically anneals to the complement of the target-specific hybridization sequence.

The term “target-specific primer” was construed to mean “a primer that has a level of complementarity between the primer and the target such that . . . the primer will anneal to and mediate amplification of the tar-get nucleic acid and will not anneal to or mediate amplification of non-target sequences present in a sample.” 

After a five-day trial, a Delaware jury found that Qiagen willfully infringed the asserted claims of both patents and awarded Labcorp $4.7 million in damages. The district court denied Qiagen’s post-trial motions for JMOL and for a new trial, prompting Qiagen’s appeal.

The Appeal

The Federal Circuit’s opinion focused on whether there was sufficient evidence to support the jury’s findings of infringement under the proper claim constructions. To cut to the chase, the panel found that there was insufficient evidence from which a reasonable jury could have found liability. The court’s analysis addressed both patents separately.

The ’810 Patent: “Identical” Does Not Mean “Identical to a Portion” and No Substantial Similarity

A central issue for the ’810 patent was the construction of the term “identical” in the context of a “second target-specific primer.” The district court had allowed the jury to decide whether a primer that was “identical to a portion” of another sequence could satisfy the claim requirement of being “identical.” The Federal Circuit panel found this was error, emphasizing that claim construction is a matter of law for the court, not a factual issue for the jury:

When the parties raise an actual dispute regarding the proper scope of these claims, the court, not the jury, must resolve that dispute.

The panel explained that “identical” means “the same,” not “identical to a portion,” and that, because the patent’s specification and claim language distinguished between “identical” and “identical to a portion,” conflating the two would render the claim language superfluous. Because Qiagen’s accused product only matched a portion of the claimed sequence, the court found that no reasonable jury could have found infringement under the correct construction.

Moreover, the Federal Circuit rejected the jury’s finding of infringement under the doctrine of equivalents, finding that Labcorp failed to provide the required “particularized testimony and linking argument” to show that Qiagen’s product performed substantially the same function, in the same way, to achieve the same result as the claimed invention. The court found that the accused primer in Qiagen’s kit did not enrich the target sequence or provide specificity as required by the claims of the ʼ810 patent, and thus could not be considered equivalent.

The ’597 Patent: “Target-Specific Primer” Requirement Not Met

For the ’597 patent, the court examined whether Qiagen’s “FP” primer met the claim requirement of a “target-specific primer.” The court found that the FP primer annealed to an artificial adaptor sequence common to all DNA fragments, not to the “nucleic acid to be analyzed” as required by the claims of the ʼ597 patent. The court also rejected Labcorp’s argument that the FP primer could satisfy the claim in combination with another primer, holding that the claim language required the “target-specific primer” to perform the function independently.

Takeaways

On remand, the district court is instructed to enter judgment of non-infringement in favor of Qiagen. The Federal Circuit’s opinion provides a clear reminder of the importance of careful claim drafting, rigorous claim construction, and the high evidentiary bar for proving infringement — especially under the doctrine of equivalents:

  • Claim Construction Is for the Court – Disputes over the meaning of claim terms must be resolved by the court as a matter of law, not left to the jury as factual questions.
  • Precision in Claim Language Matters – The Federal Circuit will generally enforce distinctions in claim language, such as “identical” versus “identical to a portion,” and broader interpretations that render claim terms superfluous will not be viewed favorably.
  • Doctrine of Equivalents Requires Specific Evidence – To prove infringement under the doctrine of equivalents, patentees must provide detailed, limitation-specific evidence showing substantial similarity in function, way, and result.
  • Independent Functionality Requirements – Where claims require a specific element to perform a function, patentees cannot rely on the combined action of multiple elements to satisfy that requirement.

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In a significant blow to Apple, the Federal Circuit recently vacated a summary judgment of noninfringement in the case of Taction Technology, Inc. v. Apple Inc. The dispute centers on Taction’s U.S. Patent Nos. 10,659,885 and 10,820,117, which Taction alleged that the Taptic Engine in Apple’s iPhone and Apple Watch products infringed the ʼ885 and ʼ117 patents.

Background

The ʼ885 and ʼ117 patents cover tactile transducers — devices that produce bass frequency vibrations for perception by touch, such as those used in haptic feedback systems in smartphones and smartwatches. Claim 1 of the ʼ885 patent was considered representative:

1. An apparatus for imparting motion to the skin of a user, the apparatus comprising:

a housing;

a plurality of coils capable of carrying electrical current;

a plurality of magnets arranged in operative proximity to the plurality of coils;

a moving portion comprising an inertial mass and the plurality of magnets;

a suspension comprising a plurality of flexures that guides the moving portion in a planar motion with respect to the housing and the plurality of conductive coils;

wherein movement of the moving portion is damped by a ferrofluid in physical contact with at least the moving portion; and

wherein the ferrofluid reduces at least a mechanical resonance within the frequency range of 40-200 Hz in response to electrical signals applied to the plurality of conductive coils.

Each asserted claim requires damping the moving portion. During claim construction, the district court concluded the asserted claims are limited to “transducers with highly damped output” based on the following statement made during prosecution of the parent of both the ’885 and ’117 patents: “Applicant’s invention, in contrast, is directed to transducers with highly damped output.” The district court had granted summary judgment of non-infringement in favor of Apple on two main grounds:

  1. Missing Element – The court adopted a construction of the claim term “highly damped output” that required the transducer to have 1) an output that is highly damped (i.e., substantially uniform or flat over the normal operating frequency range), 2) achieved by mechanical damping, and 3) a Q-factor of less than 1.5.  Based on this construction, the court found that Apple’s accused products, which have a Q-factor greater than 1.5, did not infringe the ʼ885 and ʼ117 patents.
  1. Stricken Expert Testimony –  The court struck the infringement opinions of Taction’s expert, Dr. James Oliver, finding that his opinions introduced a new theory not disclosed in Taction’s infringement contentions and that he improperly argued claim construction to the jury. Without this expert testimony, the court concluded that Taction lacked a viable claim of infringement against Apple.

The Appeal

The Federal Circuit found multiple errors in the district court’s approach, leading to a reversal and remand for further proceedings. With respect to the district court’s claim construction, the Federal Circuit addressed a few key aspects:

  • “Highly Damped Output” – The court agreed that the claims are limited to “transducers with highly damped output” based on a clear and unmistakable disclaimer made during prosecution of the parent of the patents-in-suit. Indeed, the disclaimer applies to patents in the same family when the disclaimer relates to the same subject matter as the claim language at issue. However, it rejected the district court’s further limitations. In this vein, the Federal Circuit found no basis in the intrinsic record to limit the claims to mechanical damping since the specification was broad enough to encompass other types of damping, and there was nothing in the intrinsic evidence that justified such a limitation.
  • Q-Factor Limitation – The district court had limited the claims to transducers with a Q-factor of less than 1.5 based on statements in the specification disparaging higher Q-factors. The Federal Circuit found that these statements were not sufficiently specific about the numeric value that would constitute a drawback and, thus, did not rise to the level of a clear and unmistakable disavowal. Moreover, related patents in the family included explicit Q-factor limitations, and reading such a limitation into the claims at issue would render those limitations superfluous.

With respect to the stricken expert testimony, the Federal Circuit held that the district court abused its discretion by striking Dr. Oliver’s infringement opinions. The district court had interpreted the local patent rules to require Taction to explain in its infringement contentions not just where but how each claim limitation is found in the accused Apple products. The Federal Circuit panel found no support for this requirement in the plain language of the local rules or in binding precedent and concluded that, as such, requiring adherence to such an unwritten requirement was arbitrary and an abuse of discretion by the district court. In addition, the panel found that, even if some paragraphs of Dr. Oliver’s report improperly argued claim construction, this did not justify striking his entire analysis regarding the “highly damped output” limitation, especially since his understanding of the term was consistent with the court’s own construction.

Takeaways

The Federal Circuit’s decision provides a valuable reminder on claim construction and guidance on the treatment of expert testimony and the proper application of local patent rules. 

  • Claim Construction Must Be Anchored in the Record – Limitations should not be read into claims absent clear lexicography or disavowal. The Federal Circuit remains vigilant against importing limitations from the specification into the claims without a strong basis.
  • Prosecution History Disclaimer – While clear and unmistakable disclaimers during prosecution can limit claim scope, such disclaimers must be closely tied to the claim language and subject matter at issue.
  • Expert Testimony – Courts should be cautious in striking expert opinions wholesale, especially where the expert’s understanding of claim terms aligns with the court’s own construction.
  • Strict Adherence to Local Rules – Courts should not impose unwritten requirements in local patent rules without clear notice to the parties. Striking expert testimony based on such requirements is likely to be reversed on appeal.

Now that the case returns to the district court, Taction gets an extra bite at Apple. As compared to Optis Cellular Technology, LLC v. Apple Inc. (22-1925), where the Federal Circuit vacated both the infringement and damages judgments against Apple in a patent case involving standard-essential patents (SEPs) related to Long-Term Evolution (LTE) technology, Apple’s outcome here was rotten.

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In a significant decision for patent law and the fitness equipment industry, a panel of the Federal Circuit reversed a partial dismissal of PowerBlock Holdings, Inc.’s patent infringement claims brought against iFit, Inc. in the U.S. District Court for the District of Utah. The infringement allegations against iFit were based on PowerBlock’s U.S. Patent No. 7,578,771, which includes claims to a weight selection and adjustment system for a selectorized dumbbell. The opinion further clarifies the application of 35 U.S.C. § 101 to mechanical inventions and underscores the importance of claim specificity and inventive concept in patent eligibility determinations.

The Claimed Invention

PowerBlock’s patent claims to address long-standing problems (back in 2007 when the ʼ771 patent was filed) with traditional selectorized dumbbells, which require users to manually adjust mechanical selectors to change the weight.  This manual process can lead to improper engagement, posing safety risks and inconvenience for the user. The system described and claimed in the ʼ771 patent automates weight selection using an electric motor that moves a selector to couple the desired number of weight plates to each end of the dumbbell handle, based on user input. The claims asserted against iFit describe a system including stacks of nested weight plates, a handle, a movable selector with multiple adjustment positions, and an electric motor operatively connected to the selector.

The District Court’s Ruling

After the complaint was filed by PowerBlock, iFit flexed with a motion to dismiss under Rule 12(b)(6) arguing that the asserted claims were invalid as patent ineligible under 35 U.S.C. § 101. The district court, applying the Supreme Court’s two-step Alice/Mayo framework for patent eligibility under § 101, found that all but one claim of the ʼ771 patent were ineligible under § 101. At step one of the Alice/Mayo framework, the court concluded that the claims were directed to the abstract idea of automated weight stacking, implemented with generic components. At step two, the court determined that the claims did not add significantly more than the abstract idea itself, thus failing the test for patent eligibility. Only one claim (claim 19), which recited means for adjusting the dumbbell weight without user contact, survived the motion to dismiss.

The Federal Circuit’s Analysis and Reversal

The Federal Circuit panel, comprised of the Hon. Richard G. Taranto and Hon. Kara F. Stoll, circuit judges, and the Hon. Mark C. Scarsi, district judge, for the United States District Court for the Central District of California, sitting by designation, disagreed with the district court’s analysis and conclusion and emphasized the need to consider the claims “in their entirety” to avoid oversimplifying the scope. The court found that claim 1, representative of the asserted claims, was not directed to an abstract idea but rather to a specific mechanical improvement in selectorized dumbbells:

1. A weight selection and adjustment system for a selectorized dumbbell, which comprises:

(a) a selectorized dumbbell, which comprises:

(i) a stack of nested left weight plates and a stack of nested right weight plates;

(ii) a handle having a left end and a right end; and

(iii) a movable selector having a plurality of different adjustment positions in which the selector may be disposed, wherein the selector is configured to couple selected numbers of left weight plates to the left end of the handle and selected numbers of right weight plates to the right end of the handle with the selected numbers of coupled weight plates differing depending upon the adjustment position in which the selector is disposed, thereby allowing a user to select for use a desired exercise weight to be provided by the selectorized dumbbell; and

(b) an electric motor that is operatively connected to the selector at least whenever a weight adjustment operation takes place, wherein the electric motor when energized from a source of electric power physically moves the selector into the adjustment position corresponding to the desired exercise weight that was selected for use by the user.

The panel explained that the claim’s limitations — including the configuration of weight plates, the handle, the movable selector, and the electric motor — provided sufficient specificity and structure to conclude that it “is not directed to an abstract idea” and to avoid preemption of all automated weight selection systems.

The panel distinguished this case from prior decisions where claims merely recited abstract results or generalized steps without concrete implementation. Here the claims required a particular arrangement of mechanical components and a defined method for automating weight adjustment, making them “‘a concrete thing, consisting of parts, or of certain devices and combination of devices…,” similar to a GPS satellite patent that the Federal Circuit upheld under § 101 over a decade ago.

The Key Takeaways

The Federal Circuit’s reversal means that the case will return to the district court for additional proceedings. This decision reinforces several important principles for patent eligibility:

  • Specificity Matters – Claims that recite specific mechanical structures and their interactions are less likely to be deemed abstract.
  • Avoiding Overgeneralization – Claims must be considered in their entirety, and conventional components should not be disregarded simply because they appear in the prior art.
  • Mechanical Inventions Are Not Excluded – This opinion confirms that mechanical improvements, even if broad, can be patent-eligible if they provide a concrete technological solution. In other words, not all automation or mechanical improvements are abstract ideas, and well-drafted claims directed to concrete technological solutions remain protectable under U.S. patent law.

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In Sunkist Growers, Inc. v. Interstate Distributors, Inc. (No. 24-1212), the Federal Circuit reversed the Trademark Trial and Appeal Board’s decision dismissing Sunkist’s opposition to Interstate Distributor’s (IDI) attempt to register the mark KIST in standard characters and in a stylized mark for soft drinks. The Federal Circuit disagreed with the board’s finding of no likelihood of confusion between IDI’s KIST mark and Sunkist’s various registered SUNKIST marks.

Board Decision

In October 2019, IDI filed an intent-to-use application to register KIST in standard characters and a related stylized mark for use with “[s]oft drinks, namely, sodas and sparkling water; concentrates and syrups for making soft drinks.” Sunkist opposed the registration based on a likelihood of confusion between IDI’s KIST marks and various SUNKIST registered marks owned by Sunkist.

The board dismissed Sunkist’s opposition. Analyzing the DuPont factors relevant to likelihood of confusion, the board concluded that although (1) similarity of the goods, (2) similarity of trade channels, (3) conditions of sale, and (4) strength of opposer’s mark all favored likelihood of confusion, the similarity of marks and the lack of evidence of actual confusion were determinative in finding no likelihood of confusion. With respect to similarity of the marks, the board focused on the different commercial impressions created by the marks. Specifically, the board found that the commercial impressions were different because Sunkist marketed SUNKIST marks with reference to a sun, while IDI marketed KIST marks with reference to a kiss.

Federal Circuit Decision

The Federal Circuit disagreed with the board’s conclusion regarding similarity of the marks. The court concluded that there was not substantial evidence to support the board’s underlying findings on the commercial impression of the marks. The board found that IDI marketed the KIST mark with reference to a kiss by relying on a marketing image showing the KIST mark next to a pair of lips. The Federal Circuit rejected that image as substantial evidence of a different commercial impression for several reasons: 1) the KIST mark was not a design mark that included the image of the lips; 2) not all of IDI’s marketing materials used the lips image; 3) the broader marketing presentation that the image came from had instances of the KIST mark used without the lips imagine; 4) that presentation did not emphasize the lips image, but instead emphasized different flavors; and 5) there was no evidence that marketing materials with the lips image were shown to consumers. With respect to the commercial impression of the SUNKIST mark, the Federal Circuit faulted the board for its focus on the sun design when the overwhelming majority of SUNKIST registrations submitted were standard character marks without the sun design and the record contained evidence of SUNKIST products marketed without the sun design. In light of the record, the court concluded that the board’s finding on the similarity of the marks was not supported by substantial evidence.

Having rejected the board’s conclusion on the similarity of the marks, the court then moved to the overall finding on likelihood of confusion. The only remaining factor weighing in favor of likelihood of confusion was no evidence of actual confusion. However, as the court noted, under its precedent, the failure to prove actual confusion was not dispositive. As a result, the court determined that there was a likelihood of confusion between IDI’s KIST mark and Sunkist’s SUNKIST mark and reversed the board’s decision dismissing the opposition.

Takeaways

The Federal Circuit’s decision illustrates that an applicant or mark owner should be wary of relying on unclaimed, sporadically used design elements to differentiate its mark from other pre-existing marks.

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In Realtek Semiconductor Corporation v. ITC (23-1187), the Federal Circuit concluded that it lacked jurisdiction to decide whether the International Trade Commission (ITC) correctly denied Realtek’s motion for sanctions against Future Link Systems, LLC because the ITC decision did not involve a final determination affecting the entry of articles. As a result, the panel did not address the merits of Realtek’s appeal.   

Background

In 2019, Future Link entered into a license agreement with MediaTek, Inc., which stipulated a lump sum payment if Future Link filed a lawsuit against Realtek. After filing a complaint with the ITC accusing Realtek of patent infringement, Future Link subsequently settled with a third party and told Realtek that the settlement resolved the underlying investigation. Realtek filed a motion for sanctions alleging that the agreement between Future Link and MediaTek was improper.

Despite expressing concern about the agreement between Future Link and MediaTek, the administrative law judge (ALJ) denied the sanctions motion on the basis that the agreement did not influence Future Link’s decision to file the complaint. Future Link then withdrew its complaint, and the investigation was successfully terminated. As such, there was no final determination on the merits by the Commission. 

Once the ITC adopted the ALJ’s order, Realtek appealed the denial of the sanctions motion to the Federal Circuit.

Jurisdictional Analysis

The Federal Circuit’s jurisdiction to hear appeals from the ITC is governed by 28 U.S.C. § 1295(a)(6), which allows for the review of final determinations under 19 U.S.C. § 1337. 

On appeal, Realtek was not able to persuade the panel that the ITC’s denial of the sanctions motion was a final determination within Section 1295(a)(6). Rather, the panel explained that Realtek’s position misconstrued Federal Circuit case law and that a final decision on the merits, such that it would trigger jurisdiction under 28 U.S.C. § 1295(a)(6), must be a decision that is tied to the entry of articles.  In doing so, the panel harkened back to an almost 40-year old decision in which the appellant asked the Federal Circuit to review a decision by the Commission regarding the declassification of certain materials. More specifically, in Viscofan, S.A. v. U.S. International Trade Commission, the Federal Circuit found that it did not have jurisdiction to review an ITC decision on declassification because (1) 28 U.S.C. § 1295(a)(6) only gave the Federal Circuit exclusive jurisdiction to review final determinations “relating to unfair practices in import trade” and (2) Congress specifically defined final determinations to include those set forth in the first sentence of Section 1337(c):

The Commission shall determine, with respect to each investigation conducted by it under this section, whether or not there is a violation of this section, except that the Commission may, by issuing a consent order or on the basis of an agreement between the private parties to the investigation, including an agreement to present the matter for arbitration, terminate any such investigation, in whole or in part, without making such a determination.

In other words, ITC decisions that do not affect the validity of an exclusion order are not within the Federal Circuit’s jurisdiction. Since Realtek’s appeal sought sanctions unrelated to the entry of articles, the appeal did not meet this requirement and was dismissed.

Takeaways

While the Federal Circuit did not reach the merits of Realtek’s appeal on the sanctions issue, this decision highlights the importance of understanding the specific jurisdictional boundaries of the Federal Circuit in ITC-related matters, particularly concerning sanctions and other issues that are not ancillary to a final determination. As an aside, the panel did lend some insight into what “ancillary issues” would still be deemed to fall within Federal Circuit jurisdiction under 28 U.S.C. § 1295(a)(6). In this aspect, a decision not to institute an investigation or dismissal for lack of subject matter jurisdiction would be an ancillary issue appropriate for appellate review under Section 1295(a)(6) because they have the effect of conclusively denying the complainant’s request to exclude particular items from entry. 

However, the panel recognizes that, based on the statute, it remains an open question which court can review this type of matter.  The only guidance from the panel on this question is that “in other settings, courts have held that, in the absence of an indication of where judicial review will take place, ‘the normal default rule is that persons seeking review of agency action go first to district court rather than to a court of appeals.’”

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Last week, the Federal Circuit vacated both the infringement and damages judgments against Apple in a patent case that involves standard-essential patents (SEPs) related to Long-Term Evolution (LTE) technology brought in the Eastern District of Texas by Optis Cellular Technology, LLC. In Optis Cellular Technology, LLC v. Apple Inc. (22-1925), a panel for the Federal Circuit found that a single infringement question covering multiple patents in a jury verdict form violated Apple’s right to a unanimous jury verdict and remanded the case for a new trial. In addition, the panel addressed several patent eligibility issues and procedural errors in the trial proceedings. As a result, Apple has a second bite at the apple to try to avoid damages.

Background

Optis sued Apple in the Eastern District of Texas alleging that various Apple products implementing the LTE standard infringed five of Optis’ SEPs. The jury initially found Apple infringed certain claims of the asserted patents and awarded $506.2 million in damages. Apple moved for a new trial, arguing that the jury did not have an opportunity to hear evidence regarding Optis’ obligation to license the asserted SEPs on fair, reasonable, and nondiscriminatory (FRAND) terms. The district court granted a new trial on damages, which ultimately resulted in a reduced damages award to Optis of $300 million. Once its post-judgment motions were denied, Apple appealed to the Federal Circuit.

The Appeal

There is a lot to unpack here, but the core issues on appeal are summarized below:

  • Whether the single infringement question on the verdict form covering all the asserted SEPs violated Apple’s right to jury unanimity;
  • Whether claims 6 and 7 of U.S. Patent No. 8,019,332 (ʼ332 patent) are patent ineligible under 35 U.S.C. § 101;
  • Whether the district court erred in construing claim 8 of the U.S. Patent No. 8,102,833 (ʼ833 patent);
  • Whether the district court erred in finding claim 1 of U.S. Patent No. 8,411,557 (’557 patent) not indefinite under 35 U.S.C. § 112; and
  • Whether the district court erred in admitting certain damages-related evidence.

With respect to the verdict form, the panel held that the single infringement question on the verdict form, which covered all five asserted SEPs, violated Apple’s right to a unanimous verdict.  While Optis argued that, because the $506.2 million damages award “corresponded exactly to the sum of the five numbers that Optis’s damages expert gave as the measure of damages for each patent,” it was clear that the jury was unanimous in finding all asserted claims were infringed, the panel disagreed and explained that each asserted SEP constitutes an independent cause of action requiring separate infringement questions for each patent to ensure a unanimous verdict.  

With respect to patent eligibility, the panel reversed the district court’s finding that claims 6 and 7 of the ʼ332 patent were not directed to an abstract idea under 35 U.S.C. § 101. In particular, the panel concluded that these claims were directed to a mathematical formula, an abstract idea, and remanded for further analysis under the Alice/Mayo framework. The panel also reversed the district court’s finding that the term “selecting unit” in claim 1 of the ʼ557 patent did not invoke 35 U.S.C. § 112 ¶ 6. In this aspect, the panel determined that the term “unit” does not sufficiently connote structure and is similar to other terms that held to be nonce terms similar to “means” such that they invoke § 112 ¶ 6. Since the term was found to invoke § 112 ¶ 6, on remand, the district court will need to conduct the second step of the means-plus-function analysis and determine whether the specification discloses adequate corresponding structure.  However, the Federal Circuit affirmed the district court’s construction of claim 8 of the ʼ833 patent, rejecting Apple’s argument that the claim required mapping to start from the last row of a matrix.

Finally, the Federal Circuit found that the district court abused its discretion by admitting a settlement agreement between Apple and Qualcomm, which did not involve any of the SEPs at issue in this case, and related expert testimony. Before the damages retrial before the district court, Apple had unsuccessfully argued the settlement agreement was irrelevant and should be excluded “because any alleged relevance is outweighed by the substantial risk of confusion and unfair prejudice to Apple.” While the panel did not deem the settlement to be irrelevant, it held that the probative value of the settlement agreement was substantially outweighed by the risk of unfair prejudice to Apple.

Takeaways

This decision underscores the importance of ensuring jury unanimity in patent cases involving multiple patents. While general verdict questions that apply to more than one asserted patent or patent claim may seem attractive to patent owners and, at least in this case, signed off on by the district court judge, this verdict format is going to cause problems on appeal. The decision also highlights the continued scrutiny applied to patent eligibility, as well as the admissibility of settlement agreements in determining reasonable royalties.

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Does copyright law require that a human create a work? Yesterday the D.C. Circuit in Thaler v. Perlmutter held that it does and that a machine (such as a computer operating a generative AI program) cannot be designated as the author of the work. However, the D.C. Circuit refrained from saying more for now, leaving other questions about the use of AI when creating works for another day.

Dr. Stephen Thaler, a computer scientist who works with artificial intelligence, submitted a copyright application in 2019 for the image below, which he titled “A Recent Entrance to Paradise.” On the application, Thaler identified himself as the claimant, while designating a generative AI platform that he created and called the “Creativity Machine” as the author. For explanation of how the copyright was transferred from the machine as author to himself as claimant, Thaler stated his “ownership of the machine” caused the transfer. He would later argue that some form of work-for-hire transferred ownership to himself.

The Copyright Office denied registration, holding that copyright law requires a human author. Thaler appealed the decision to the District Court for the District of Columbia, which affirmed. As part of his case before the district court, Thaler raised, for the first time, the argument that he was in fact the author based on his creation of the Creativity Machine. However, because he had claimed on the record that the machine was the author throughout the proceedings before the Copyright Office, the district court held that he had waived this argument. Thaler then appealed to the D.C. Circuit Court of Appeals.

The D.C. Circuit’s decision yesterday affirmed both the Copyright Office’s and the district court’s decisions refusing Thaler’s copyright application for registration. On the key issue of copyright authorship, the court held that the text and structure of the Copyright Act requires a human author. Section 201 of the Copyright Act states that ownership “vests initially in the author or authors” of a work. While “author” is undefined, the court looked to at least seven other provisions throughout the Copyright Act that required various acts or states of mind of the author. These included reliance on the author’s life, references to the author’s widow or widower and children, the act of signature required for copyright transfer, and the intent needed to create a joint work of authorship. However, the court deemed none of these requirements applicable to a machine “author.” The court also relied on the Copyright Office’s long-standing policy of refusing registration to nonhuman authors and other appellate court decisions by the Seventh and Ninth circuits that refused claims of copyright authorship inhering in nature, “otherworldly entities,” or animals. Finally, the court held that Thaler’s work-for-hire claim failed at least because the machine had not signed any document designating the work as being made for hire, and that he had waived any claim of personal authorship because he had failed to raise it before the Copyright Office. Therefore, the D.C. Circuit affirmed the denial of registration of the work with the Creativity Machine designated as the author.

While this case is the first to address the question of copyright authorship in the context of generative artificial intelligence, its holding is not unexpected. As briefly referenced above, other appellate courts have addressed the question of nonhuman authorship in other scenarios and come to the same conclusion. Therefore, while Thaler is important for extending the same holding to the context of AI creations, the requirement of human authorship is neither new nor unusual. As the Ninth Circuit held in Naruto v. Slater (a case involving the famous “monkey selfie” photograph), there is a strong presumption in the law that statutes are written with humans as the subjects of rights, not animals or machines. The numerous textual references to the lives, acts, and intentions of authors in the Copyright Act made it easy for the D.C. Circuit not to overturn that presumption here. The D.C. Circuit also held that it did not need to address whether the U.S. Constitution requires a human author under the current case. That issue is left for a future litigant to contend with.

Moreover, Thaler presented his case for machine authorship in the most extreme form possible — a claim that the author was solely the “Creativity Machine,” with no human input at all. As the court references late in the decision, there have now been at least four copyright applications denied registration in whole or in part by the Copyright Office because the author used AI in creating or editing a work, but also relied on human input and human claims of authorship. The D.C. Circuit wisely decided to let that issue await a future ruling. Yet, as a result of that caution, litigants should recognize the limitations of the Thaler decision.

Finally, both Thaler and the other cases coming through the Copyright Office only concern AI creation of visual works of art. They do not concern other fields of creative works, such as written works or music. While the main holding of Thaler — that copyright protection cannot be granted where a machine is the sole creator — will certainly apply in these other fields, the permissible contours of AI-human interaction and their effect on authorship in these other categories of works are even more unclear given the lack of disputes arising to date.

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Fair use — a critical defense in copyright law that allows limited use of copyrighted material without permission — has emerged as a key battleground in the wave of artificial intelligence (AI) copyright litigation. In a significant revision of his earlier position, Judge Stephanos Bibas in the United States District Court for the District of Delaware has dealt a blow to artificial intelligence companies by blocking their ability to rely on this defense in Thomson Reuters Enterprise Centre GmbH v. ROSS Intelligence Inc.

Fair use serves as a safety valve in copyright law, permitting uses of copyrighted works for purposes such as criticism, commentary, news reporting, teaching, scholarship, or research. Courts evaluate fair use through four factors, with particular emphasis on whether the use transforms the original work and how it affects the market for the copyrighted work.

The case originated when Thomson Reuters sued ROSS Intelligence for using content from Westlaw — the legal research platform’s headnotes and proprietary Key Number System — to train an AI-powered legal research competitor. ROSS had initially sought to license Westlaw content, but when Thomson Reuters refused, ROSS turned to a third-party company, LegalEase Solutions. LegalEase created approximately 25,000 legal question-and-answer pairs, allegedly derived from Westlaw’s copyrighted content, which ROSS then used to train its AI system.

In September 2023, Bibas denied Thomson Reuters’ motion for summary judgment on fair use, finding that the question was heavily fact-dependent and required jury determination. He particularly emphasized factual disputes about whether ROSS’s use was transformative and how it affected potential markets.

However, in August 2024, Bibas took the unusual step of continuing the scheduled trial and inviting renewed summary judgment briefing. His opinion represents a dramatic shift, explicitly acknowledging that his “prior opinion wrongly concluded that I had to send this factor to a jury.” While noting that fair use involves mixed questions of law and fact, Bibas recognized that the ultimate determination in this case “primarily involves legal work.”

Bibas’ unusual move to invite renewed briefing stemmed from his realization, upon deeper study of fair use doctrine, that his earlier ruling afforded too much weight to factual disputes and did not fully account for how courts should assess transformative use in AI-related cases. Rather than viewing transformation through the lens of whether ROSS created a novel product, Bibas recognized that the key question was whether ROSS’s use of Thomson Reuters’ content served substantially the same purpose as the original works.

He concluded that while fair use involves factual elements, the dispositive questions in the case were ultimately legal ones appropriate for resolution by the court. His key analytical shifts included rejecting the notion that ROSS’s use might be transformative merely because it created a “brand-new research platform.”

Critically, Bibas distinguished ROSS’s use from cases like Google v. Oracle where copying was necessary to access underlying functional elements. While Google needed to copy Java API code to enable interoperability between software programs, ROSS had no similar technical necessity to copy Westlaw’s headnotes and organizational system. ROSS could have developed its own legal summaries and classification scheme to train its AI — it simply found it more expedient to build upon Thomson Reuters’ existing work.

The concept of “transformative” use lies at the heart of the fair use analysis. This principle was recently examined by the Supreme Court in Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, where the Court significantly narrowed the scope of transformative use under the first fair use factor. The Court held that when two works serve “substantially the same purpose,” the fact that the second work may add “new expression, meaning, or message” is not enough to tip the first factor in favor of fair use.

This framework for analyzing transformative use provides important context for understanding how courts may evaluate AI companies’ fair use defenses. AI companies have consistently argued that their use of copyrighted materials for training data is transformative because the AI systems learn patterns and relationships from the works rather than reproducing their expressive content. They contend that this process fundamentally transforms the original works’ purpose and character. However, Bibas’ ruling suggests courts may be increasingly skeptical of such arguments, particularly when the resulting AI products compete in similar markets to the original works.

While this ruling represents a setback for one of the key defenses believed to be available to AI companies in copyright litigation, fair use is only one of several defenses these companies are raising in more than 30 pending lawsuits. Other defenses include arguments about copyrightability, substantial similarity, and whether training data uses constitute copying at all. A weakening of the fair use defense, while significant, does not necessarily predict the ultimate outcome of these cases.

Additionally, this case involved a particularly direct form of market competition — an AI system trained on legal content to compete with the original legal research platform. Other cases involving different types of training data or AI applications that don’t directly compete with the source materials might be distinguished. For instance, an AI trained on literary works to generate news articles might present a more compelling case for transformative use since the end product serves a fundamentally different purpose than the training data.

Nevertheless, Bibas’ ruling may alter how AI companies approach training data acquisition. If other courts follow his lead in viewing fair use primarily as a legal rather than factual determination, these companies may explore licensing agreements with copyright holders — a process that some have already undertaken.