Networks Seek Supreme Court Review of 2d Cir.'s ‘Public Performance' Ruling in Aereo

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By Tamlin H. Bason and Tony Dutra  

Oct. 15 -- The U.S. Court of Appeals for the Second Circuit's determination that Aereo does not “publicly perform” a broadcast when it transmits a copyrighted television program to thousands of individual Internet subscribers constitutes “nonsensical reasoning [that] cannot be reconciled with the plain text of the Copyright Act or Congress' manifest intent to include retransmission services within the scope of the public-performance right,” a group of television networks argued in an Oct. 11 Supreme Court petition for writ of certiorari, American Broadcasting Companies, Inc. v. Aereo, Inc. ( U.S., No. 13-461, review sought 10/11/13).

The petition identifies the question presented as:

Whether a company “publicly performs” a copyrighted television program when it retransmits a broadcast of that program to thousands of paid subscribers over the Internet.  


In July, the Second Circuit denied a petition for rehearing en banc that challenged a panel determination that Aereo did not publicly perform the networks' content. That holding in turn rested on the Second Circuit's 2008 decision in Cartoon Network LP v. CSC Holdings Inc., 536 F.3d 121, 87 U.S.P.Q.2d 1641 (2d Cir. 2008) , which is commonly known as Cablevision.

In the petition, the networks urge the court to overturn Cablevision's interpretation of Section 101's transmit clause. 17 U.S.C. §101. Although there is not yet a circuit split, the petition noted that services similar to Aereo's have been found infringing by district courts that are not bound by Cablevision. Those cases are Fox Television Stations Inc. v. BarryDriller Content Sys. PLC, 915 F. Supp. 2d 1138 (C.D. Cal. 2012), and Fox Television Stations, Inc. v. FilmOn X LLC(D.D.C. 2013), 2013 BL 243147 . However, the District of Massachusetts on Oct. 8 declined to enjoin Aereo's Boston service and hinted that it agreed with Cablevision's interpretation of a public performance. Hearst Stations Inc. v. Aereo, Inc., 2013 BL 282327 (D. Mass. 2013).

The networks are represented by Paul D. Clement of Bancroft PLLC, Washington, D.C. Aereo was represented at the Second Circuit by Yvonne W. Chan of Goodwin Procter, Boston. Aereo's response is due Nov. 12.

The petition is available at

Another New Petition: Cephalon v. Apotex

A petition for writ of certiorari was also filed on Oct. 9 in Cephalon, Inc. v. Apotex, Inc. ( U.S., No. 13-441, review sought 10/9/13), appealing the April 8 unpublished Federal Circuit opinion affirming invalidity and unenforceability of Cephalon Inc.'s patent on its sleep disorder drug Provigil (madafinil). Apotex Inc. v. Cephalon, Inc., 500 Fed. Appx. 959, 2013 BL 94946 (Fed. Cir. 2013) , rehearing denied .

The petition, filed by William F. Lee of Wilmer Cutler Pickering Hale & Dorr LLP, Boston, asks two questions related to the unenforceability judgment:

1. Whether the mere act of omitting purportedly material information during a patent prosecution, without separate proof of intent to deceive the Patent and Trademark Office, can constitute clear and convincing evidence sufficient to support a finding of inequitable conduct.  


2. Whether a corporation can be found liable for inequitable conduct in the absence of a finding of inequitable conduct by any of its officers, employees, or agents.  


The response is due Nov. 8. Apotex Inc. was represented by Robert B. Breisblatt of Katten Muchin Rosenman, Chicago, before the Federal Circuit.

The petition is available at

Three Cert Denials

The Supreme Court on Oct. 15 denied petitions for writ of certiorari in three cases on intellectual property topics:

• Fox Grp., Inc. v. Cree, Inc. ( U.S., No. 12-1378, review denied 10/15/13). The petition challenged the decision by the U.S. Court of Appeals for the Federal Circuit that commercialization is not necessary to show prior invention of a product to defeat a patent infringement charge. 700 F.3d 1300, 2012 BL 310538, 105 U.S.P.Q.2d 1097 (Fed. Cir. 2012) .

• Nokia Inc. v. Int'l Trade Comm'n ( U.S., No. 12-1352, review denied 10/15/13). The petition appealed the Federal Circuit's ruling that an act of licensing patents to foreign manufacturers may be sufficient to establish that a “domestic industry” exists for the purposes of obtaining an order from the International Trade Commission to exclude allegedly infringing imports. Interdigital Commc'ns LLC v. Int'l Trade Comm'n, 690 F.3d 1318, 2012 BL 193309, 103 U.S.P.Q. 2d 1610 (Fed. Cir. 2012) , rehearing denied, 707 F.3d 1295, 2013 BL 6807, 105 U.S.P.Q.2d 1581 (Fed. Cir. 2013) .

• Sony Computer Entm't Am. LLC v. 1st Media, LLC ( U.S., No. 12-1086, review denied 10/15/13). The petition appealed the Federal Circuit's standards on inequitable conduct as a defense in a patent infringement case, as set forth in Therasense Inc. v. Becton Dickinson & Co., 649 F.3d 1276, 2011 BL 137835, 99 U.S.P.Q.2d 1065 (Fed. Cir. 2011) (en banc) .

The Solicitor General recommended against cert grant on Sept. 5 . The instant case only questions the intent side of the test, the government said, and the court should wait for a case that challenges materiality as well. And in any event, the brief said, “it is too soon to assess the practical impact of the two-year old Therasense standards.”

The high court will have another chance to consider the matter almost immediately, given the petition described next.

Government in MedtronicHearing

The court on Oct. 15 also granted leave to the solicitor general to participate in the Nov. 5 oral argument in Medtronic Inc. v. Boston Scientific Corp., No. 12-1128 (U.S., review granted May 20, 2013) .

The case will consider the question presented:

whether, in such a declaratory judgment action brought by a licensee under MedImmune [Inc. v. Genentech Inc., 549 U.S. 118, 2007 BL 119118, 81 U.S.P.Q.2d 1225 (2007) ], the licensee has the burden to prove that its products do not infringe the patent, or whether (as is the case in all other patent litigation, including other declaratory judgment actions), the patentee must prove infringement.  


The government's brief at the petition stage supported petitioner Medtronic Inc. and the view that “the patent owner bears the burden of proving infringement of its patent in an action for a declaratory judgment of noninfringement brought by a patent licensee.”

“Several federal agencies are extensively engaged in the licensing of patented inventions to private entities, and the United States is also a licensee of various patents,” according to the brief, justifying the government's interest in the outcome of the case.

Martin R. Lueck of Robins Kaplan Miller & Ciresi, Minneapolis, represents Medtronic. Arthur I. Neustadt of Oblon, Spivak, McClelland, Maier & Neustadt, Alexandria, Va., represents the patent owners, Mirowski Family Ventures LLC.


To contact the reporter on this story: Tamlin Bason in Washington at

To contact the editor responsible for this story: Naresh Sritharan at